Ex Parte Danielson et al

Patent Trials and Appeals BoardMar 20, 2019

14270796 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/270,796 05/06/2014 22928 7590 03/22/2019 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR Paul Stephen Danielson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SP06-004AlA 2799 EXAMINER BOLDEN, ELIZABETH A ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 03/22/2019 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): usdocket@corning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PAUL STEPHEN DANIELSON, ADAM JAMES ELLISON, and NATESAN VENKATARAMAN Appeal2017-005432 Application 14/270,796 Technology Center 1700 Before TERRY J. OWENS, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. Per curiam. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant (Coming Incorporated) appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1---6. We have jurisdiction under 35 U.S.C. Â§ 6(b). The Invention The claims are to an alkali metal-free glass and a liquid crystal display substrate comprising the glass. Claim 1 is illustrative: 1. An alkali metal-free glass comprising in mo le percent on an oxide basis: Si02 64.0-72.0 Ab03 9.0-16.0 Appeal2017-005432 Application 14/270,796 B203 >0.0-5.0 MgO 2.0-7.5 CaO 2.0-7.5 BaO 1.0-6.0 wherein: (i) the glass satisfies the relationship: 1.15 :SI(MgO+CaO+SrO+BaO)/(Ah03) :S 1.50, where Ab03, MgO, CaO, SrO, and BaO represent the mole percents of the respective oxide components, (ii) when the glass comprises the optional component SrO, the glass satisfies the relationship: BaO/SrO 2: 2.0, where BaO and SrO represent the mole percents of the respective oxide components, (iii) the amount of any oxide in the glass other than Si 02, Ab03, B203, MgO, CaO, SrO, BaO, and La203 is less than or equal to 2.0 mole percent, (iv) the glass has a strain point greater than or equal to 100Â°c, (v) the glass exhibits a dimensional change of less than 30 ppm for a 5 minute heat treatment at 600Â°C, and (vi) the glass has a Young's modulus to density ratio greater than or equal to 28.0 GPaÂ·cm3/g. The Reference Danielson US 7,833,919 B2 Nov. 16, 2010 The Rejection Claims 1---6 stand rejected under 35 U.S.C. Â§ 102(b) over Danielson. OPINION We reverse the rejection. The Appellant states that "Appellant does not dispute that if the '919 patent were prior art, it would anticipate the claims in this application under 35 U.S.C. Â§ 102(b )" (App. Br. 7). 2 Appeal2017-005432 Application 14/270,796 The Appellant's application is a continuation of application no. 12/943,268, filed Nov. 10, 2010, which is a continuation of application no. 13/666, 183, filed Nov. 1, 2012, which is a continuation of application no .. 12/943,268, filed Nov. 10, 2010, which is a division of application no. 11/704,837, filed Feb. 9, 2007, which is the Danielson application. The Appellant's application and Danielson, therefore, have the same specification. The Examiner finds (Ans. 6): The instant application claims a range for B203 of >0.0-5 mole percent. However, the portion of the B203 range of >0.0-<1.0 mole percent is not supported by the original specification of the 11/704,837 application. Therefore, the filing date of the instant application is deemed to be 6 May 2014. The 7,833,919 patent has a publication date of 16 November 2010 and therefore qualifies as prior art under pre-AIA 35 U.S.C. Â§ 102(b). Thus, as stated by the Appellant, "the question comes down to: Did the inventors have possession of a B203 range of >0.0-5.0 mole percent at the time they filed the '837 application?" (App. Br. 8). The Appellant's Specification discloses four aspects of the claimed glass (Spec. ,r,r 24--28). The B203 concentration range is 1.0-5.0 mole percent in the first and second aspects (i-fi-f 25, 26), 1.5--4.0 mole percent in the third aspect (i-f 27), and 1.0--4.0 mole percent in the fourth aspect (i-f 28). The Specification includes 88 examples wherein the B203 concentration ranges from 1.25 mole% to 4.96 mole% (Table 1 ). The Specification states that "B203 is both a glass former and a flux that aids melting and lowers the melting temperature. To achieve these effects, the glass compositions described herein have B203 concentrations that are equal to or greater than 3 Appeal2017-005432 Application 14/270,796 1.0 mole percent" (i132). The Specification also states that "to achieve the above properties, in one aspect, the glasses described herein have B203 concentrations that are less than or equal to 5.0 mole percent, between 1.0 and 5.0 mole percent, between 1.0 and 4.0 mole percent, or between 2.0 and 4.0 mole percent" (i134), and "it is desirable to keep B203 concentration as low as reasonably possible" (i133). The Appellant argues, in reliance upon declarations by Timothy J. Kiczenski and Richard L. Lehman, that the melt aiding and melting temperature lowering referred to by the word "effects" in Specification paragraph 32 are manufacturer-facing attributes, whereas Specification paragraph 34 "uses the word 'properties' to describe the customer-facing attributes with which it is concerned" (App. Br. 15), and that "[a] PHOSITA [person having ordinary skill in the art] would have understood the use of these two different words in these paragraphs as an appropriate way to distinguish between B203's manufacturer-facing attributes ('effects') and its customer-facing attributes ('properties') and communicating that distinction to the reader" (id.). Thus, the Appellant argues that "the above properties" in Specification paragraph 34 refers to glass durability addressed in that paragraph and glass density, Young's modulus, and strain point addressed in paragraph 33, but not the melt aiding and melting temperature lowering addressed in paragraph 32 because, unlike paragraph 35 wherein melting is referred to as a property, melt aiding and melting temperature lowering are referred to in paragraph 32 as effects rather than properties. The Examiner finds that "[ w ]hile the term 'properties' is in discussion in paragraph [00034] about keeping B203 low, it does not lead a PHOSITA to ignore the earlier recited ranges for B203 including the ranges recited in 4 Appeal2017-005432 Application 14/270,796 paragraphs [00025]-[00028] and the lower limit of B203 as recited in paragraph [00032]" (Ans. 20), and "[t]he specification as a whole supports a written description of the range of B203 in the range of 1.0-5.0 mole percent. Reading paragraphs [00033]-[00034] without considering paragraph [00032] is reading the disclosure in a vacuum and not taking the record as a whole" (Ans. 11). It is the view of this panel of the Board that the Appellant's Specification's disclosure of a B203 concentration of "less than or equal to 5.0 mole percent" (i134) is a disclosure of an embodiment wherein the B203 concentration is between a value greater than zero and 5.0 mole percent and, therefore, shows possession of a B203 concentration within that range. Thus, because the Appellant's application has priority to Danielson's application's filing date and provides written descriptive support for the Appellant's recited ">0.0-5.0" mole percent B203 concentration, Danielson is not prior art. Accordingly, we reverse the rejection. DECISION The Examiner's decision rejecting claims 1-6 under 35 U.S.C. Â§ 102(b) over Danielson is reversed. REVERSED 5