Ex Parte Cooper et al

Patent Trial and Appeal Board

Jun 20, 2017

12929876 (P.T.A.B. Jun. 20, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/929,876 02/22/2011 David J. Cooper JAR-3691-2108 2358
23117 7590 06/22/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
06/22/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. COOPER, RYAN L. DEAR, and ROBERT A. MILLER
Appeal 2016-000655
Application 12/929,8761
Technology Center 1700
Before MARKNAGUMO, KAREN M. HASTINGS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claim 37 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement. An oral hearing was
conducted June 13, 2017.2 We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We REVERSE.
1 The real party in interest is stated to be Guardian Industries Corp. (App. Br.
3).
2 The record will include a transcript of the oral hearing when it becomes
available.
Appeal 2016-000655
Application 12/929,876
Claim 37 is the sole claim on appeal (emphasis added):
37. A method of making a vacuum insulated glass (VIG) unit
comprising an edge seal, the method comprising:
providing a subassembly for a VIG unit in an apparatus including at
least one heating area, the subassembly for the VIG unit including first and
second glass substrates with spacers, a gap and seal material comprising frit
located at least partially between the glass substrates, wherein a periphery of
the gap is defined by the seal material;
the apparatus including a plurality of infrared (IR) heating elements
which are controllable to emit IR radiation at a peak wavelength in the near
infrared (NIR) and/or short wave infrared (SWIR) band(s),
heating frit of the seal material provided proximate the periphery of
the subassembly via the plurality of IR heating elements in forming the edge
seal so as to preferentially heat the frit compared to glass substrates of the
VIG subassembly,
during said heating when a first portion of the IR heating elements in
the heating area are in an “on” state for heating the seal material
approximately the remainder of the IR heating elements in the heating area
are in an “off’ state so that only partial IR heating element density is
employed during said heating; and
wherein glass substrates of the subassembly do not reach a
temperature of 325 degrees C for longer than 1 minute during the heating of
the frit material.
ANALYSIS
The §112 First Paragraph Rejection
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must ‘“convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.’” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir.
1991)).
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Appeal 2016-000655
Application 12/929,876
After review of the respective positions provided by Appellants and
the Examiner, we find that a preponderance of the evidence supports
Appellants’ position that the original disclosure provides support for the
claimed “partial IR heating element density” usage as recited in independent
claim 37 (App. Br. 8—12; Spec. Figs. 9b—9f, Spec. 61, 84, 85, 129). As
Appellants explain, the Specification explicitly describes approximately half
bulb density, which even the Examiner agrees is a partial density (Reply
Br. 2; Ans. 3).
The Examiner’s position is that the Specification never explicitly
states anything other than an approximately half-bulb density (Ans. 3
(stating that an amendment to recite “approximately half bulb density”
instead of “partial IR heating element density” would be acceptable)). The
Examiner also states that the Appellants’ reliance on Figs. 9b—9f to
exemplify partial IR heating element density is based on a
“misunderstanding” of bulb density, which the Examiner states is limited to
the IR bulbs that are predetermined to be used which include “only the bulbs
needed for edge sealing” (Ans. 4).
The proper interpretation of the term “heating area,” recited in lines 4,
11, and 12 of claim 37, corresponds, as Appellants argue implicitly (App.
Br. 10—12; Reply Br. 4—5), to the entire array of heating elements illustrated,
for example, in Figures 9a—9f. This interpretation is well-supported by the
disclosure, which describes a general preheating of the pre-assembled VIG
assembly (Spec. 5, If 21 and 9, ]f 54, 2d sentence), followed by further
specific heating of the edge of the assembly {id. at | 54, 3d sentence and
Figures 9a—9f). The Examiner, on the other hand, interprets the “heating
area” as only those bulbs that correspond to the perimeter of the VIG unit.
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Appeal 2016-000655
Application 12/929,876
(Ans. 4,11. 7—15.) Although not impossible, this narrow interpretation is
somewhat strained, and is not, in our view, the broadest reasonable
interpretation of the claim language in light of the specification. In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (the scope of
the claims in patent applications is determined by giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art); see also, Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (the specification is always
highly relevant to the claim construction analysis, and is usually dispositive
as it is the single best guide to the meaning of any disputed terms).
Thus, a preponderance of the evidence supports Appellants’ position
that one of ordinary skill in the art would have understood that the originally
filed Specification encompasses usage of a partial IR heating element
density (Reply Br. 2-4). The claim need not use the same words as the
specification; it is enough that one of ordinary skill in the art would
recognize that the inventor invented what is claimed. Union Oil Co. of Cal.
v. Atlantic Richfield Co., 208 F.3d 989, 997 (Fed. Cir. 2000). As Appellants
state, the Examiner has not even made any allegation of unpredictability
(Reply Br. 2), and there is no dispute that an approximately half bulb density
encompasses a partial density. Indeed, the Specification describes that each
heat source (bulb) in each row and column of the array may be selectively
activated/tumed on (e.g., Spec. 84, 85). In light of all these
circumstances, one of ordinary skill would have appreciated that Appellants
were in possession of the usage of partial IR heating element density.
Accordingly, we reverse the Examiner’s § 112 rejection on appeal.
REVERSED
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