Ex Parte ENDO et al

Patent Trials and Appeals Board

May 28, 2019

14796575 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/796,575 07/10/2015 Jun ENDO
22850 7590 05/30/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
456727US99CONT 3931
EXAMINER
BOLDEN, ELIZABETH A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN ENDO, SHUSAKU AKIBA, KAZUTAKA ONO,
and SHIGEKI SAWAMURA 1
Appeal2017-010049
Application 14/796,575
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and JEFFREY
R. SNAY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner's decision finally rejecting claims 2 and 6-9. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellants identify the real party in interest as ASAHI GLASS
COMPANY, LIMITED. App. Br. 1.
Appeal2017-010049
Application 14/796,575
STATEMENT OF THE CASE
Claim 2 is illustrative of Appellants' subject matter on appeal and is
set forth below:
Claim 2: A glass for chemical tempering, which comprises, as
represented by mole percentage based on the following oxides,
from 64 to 77% of Si 02,
from 11.5 to 18% of Ab03,
from 3 to 15% ofMgO,
from greater than Oto 0.5% of CaO,
from O to 4 % of Zr02,
from 8 to 15 % ofNa20,
from O to 1. 9% of K20 and
from O to 1 % B203:
wherein a value of R calculated by the following formula
by using contents of the respective components, is at least 0.66:
R=0.029xSi02+0.021xA1203+0.016xMg0-
0.004xCa0+0.016xZr02+0.029xNa20+0xK20-2.002.
THE REJECTIONS
1. Claims 2 and 6-9 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Dejneka et al. (US 2013/0004758 Al,
published Jan. 3, 2013) ("Dejneka '758").
2. Claims 2 and 6-9 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Dejneka et al. (US 2011/0045961 Al,
published Feb. 24, 2011) ("Dejneka '961").
3. Claims 2 and 6-9 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-8, and 31-37 of copending Application
No. 13/841,268.2
2 This application is now abandoned so the rejection is moot.
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Appeal2017-010049
Application 14/796,575
4. Claims 2 and 6-9 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 5, 9-16, 18-20, 27-32, and 36-38 of
copending Application No. 14/255,073. 3
5. Claims 2 and 6-9 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 31-35 and 37--41 of copending Application
No. 14/597,587.4
ANALYSIS
For purposes of this appeal, we address separately argued claims, and
the remaining claims stand or fall with the argued claims, consistent with 3 7
C.F.R. § 4I.37(c)(l)(iv) (2017).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner's findings and conclusion that the subject matter of
Appellants' claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner's rejections on appeal for the reasons set forth
in the Final Office Action and in the Answer, and affirm.
As an initial matter, we note that Appellants' new arguments in the
Reply Brief are not being considered. Any new arguments and new facts
relied upon in the Reply Brief which were not raised or relied upon in the
Appeal Brief will not be considered by the Board unless good cause is
3 This application is now U.S. Patent 9,656,906.
4 A Notice of Allowance has been issued for this application on March 25,
2019.
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Appeal2017-010049
Application 14/796,575
shown. 37 C.F.R. § 4I.37(c)(l)(iv) ("Except as provided for in§§ 41.41 ,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal."); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010).
Rejection 1
Rejection 1 refers to the Examiner's rejection of claims 2 and 6-9 as
obvious over Dejneka '758. We refer to pages 2--4 of the Answer and the
Response to Argument section of the Answer pertaining to Rejection 1
regarding the Examiner's position for Rejection 1, which we incorporate as
our own, and affirm for the reasons stated therein. When claimed ranges
overlap or lie inside ranges disclosed by the prior art for every component in
a claim, a prima facie case of obviousness is established. See In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70
(Fed. Cir. 1997). Indeed, the law is replete with cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims. These cases have consistently held that the
Appellants must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In
the instance case, Appellants have not made this showing.
Rejection 2
Rejection 2 refers to the Examiner's rejection of claims 2 and 6-9 as
obvious over Dejneka '961. We refer to pages 4--5 of the Answer and the
Response to Argument section of the Answer pertaining to Rejection 2
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Appeal2017-010049
Application 14/796,575
regarding the Examiner's position for Rejection 2, which we incorporate as
our own, and affirm for the reasons stated therein. We refer to the above-
cited case law in support of this determination.
Rejections 3-5
The Examiner makes a number of provisional nonstatutory
obviousness-type double patenting rejections (Rejections 3-5).
Rejection 3 is moot (see footnote 2).
With regard to Rejections 4 and 5, Appellants set forth a table on page
10 of the Appeal Brief regarding a comparison of ranges. However, as
discussed with regard to Rejections 1 and 2, cases have consistently held that
the Appellants must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In
the instance case, Appellants have not made this showing.
DECISION
Rejections 1, 2, 4, and 5 are affirmed.
Rejection 3 is moot.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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