Ex Parte Fisher et al

Patent Trials and Appeals Board

Jun 3, 2019

14405647 - (D) (P.T.A.B. Jun. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/405,647 12/04/2014
22928 7590 06/05/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
William Keith Fisher
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.
SP12-150 3529
EXAMINER
WEYDEMEYER, ETHAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/05/2019 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 WILLIAM KEITH FISHER and MARK STEPHEN FRISKE
Appeal2018-006989
Application 14/405,647
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the Examiner's Final
rejection of claims 1, 2, 4--15, and 22. We have jurisdiction under 35 U.S.C.
§ 6.
We AFFIRM.
Appeal2018-006989
Application 14/405,647
Appellant's invention is directed to a glass laminate structure and is
best illustrated by independent claim 1, reproduced below: 1
1. A glass laminate structure comprising:
a first glass sheet having a thickness of less than 2
mm;
a second glass sheet having a thickness of less than
2 mm; and
a first polymer interlayer between the first and the
second glass sheets, the first polymer interlayer adhering
to the first and second glass sheets,
wherein the glass laminate structure has a pummel
value of at least 7 and a penetration of at least 20 feet
mean break height as measured using a 2.27 kg ball drop
test, and
wherein at least one of the first or second glass
sheets is a chemically strengthened glass sheet having a
surface compressive stress (CS) of at least 600 MPa and a
depth of layer (DOL) of at least 20 µm.
Appellant requests review of the following rejections from the
Examiner's Final Office Action: 2
I. Claims 1, 2, 4, 6-10, 12-15, and 22 rejected under pre-AIA 35
U.S.C. I03(a) as unpatentable over Friedman et al. (US 6,432,522 Bl; issued
August 13, 2002, hereinafter "Friedman") and Charrue et al. (US 5,773,148;
issued June 30, 1998, hereinafter "Charrue").
1 Coming Incorporated is the Applicant/ Appellant and is identified as the
real party in interest. App. Br. 3.
2 The Examiner expressly withdrew the prior art rejection under 35 U.S.C.
§ I03(a) based on the primary reference to Moran. Ans. 8. Accordingly,
this rejection is not before us for review on appeal.
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Application 14/405,647
II. Claim 5 rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Friedman, Charrue, and Forde (ICE Manual of
Construction Materials, Vol. II (Ch. 70) Institution of Civil Engineers (Great
Britain). M. C. Forde, Mike Forde (Eds.).2009, pp. 815-820.).
III. Claim 11 rejected under pre-AIA 35 U.S.C. 103(a) as
unpatentable over Friedman, Charrue, and Van Laethem et al. (US
3,930,452; issued January 6, 1976, hereinafter "Van Laethem").
For Rejection I, Appellant does not argue any claim separate from the
other. See generally App. Br. Appellant also relies on the arguments
presented for claim 1 in addressing the separate rejections of claims 5 and 11
without substantially addressing or further distinguishing the additional cited
secondary references based on the additional limitations of the respectively
rejected claims. Id. at 17. Accordingly, we select claim 1 as representative
of the subject matter claimed and decide the appeal as to all grounds of
rejections based on Appellant's arguments made in support of the
patentability of claim 1.
OPINION
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's 35 U.S.C. § 103(a) rejections of claims 1, 2, 4--15,
and 22. Accordingly, we will sustain all of the Examiner's rejections for
essentially the reasons expressed in the Answer and we add the following for
emphasis.
Independent claim 1 is directed to a glass laminate structure
comprising two glass sheets with an intervening polymer interlayer wherein
at least one of the glass sheets is a chemically strengthened glass sheet
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Application 14/405,647
having a surface compressive stress (CS) of at least 600 MPa and a depth of
layer (DOL) of at least 20 µm.
The Examiner finds that Friedman teaches a glass laminate structure
that differs from the claimed invention in that Friedman's glass laminate
structure does not comprise at least one chemically strengthened glass sheet
as claimed. Final Act. 2-3. The Examiner finds Charrue teaches the use of
chemically strengthened glass sheets having a surface compressive stress of
greater than 700 MPa and an exchanged depth (i.e., depth of layer) greater
than 7 5 microns in windshield glass laminates, where these aforementioned
value ranges overlap the ranges for the values of the corresponding claimed
properties. Final Act. 3--4; Charrue Abstract, col. 2, 11. 54---67. According to
Charrue, the disclosed glass sheets provide resistance to dynamic loadings
(penetration resistance) and overall strength. Final Act 3--4; Charrue col. 1,
11. 27-39, col. 2, 11. 34--53. Charrue also teaches using the disclosed glass
sheets in composite panes for aircraft windscreens and automobile panes.
Charrue col. 6, 11. 35--44. The Examiner determines that it would have been
obvious to one skilled in the art to substitute Charrue' s chemically
strengthened glass sheet for either or both of glass sheets of Friedman's
glass laminate structure to provide the advantages Charrue teaches. Final
Act 3--4.
Appellant does not dispute the Examiner's specific findings with
respect to Friedman and Charrue. Instead, Appellant argues that the prior art
does not teach that a chemically strengthened glass sheet can be used to
produce a laminate that "demonstrate[ s] a combination of high adhesion and
high penetration resistance" as compared to prior art laminates not
comprising a chemically strengthened glass sheet and, thus, the combined
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Appeal2018-006989
Application 14/405,647
properties would not be inherent in the prior art laminate. App. Br. 12
( citing to Spec. ,r,r 9, 66). According to Appellant, neither Friedman nor
Charrue recognizes that glass laminates having improved adhesion strength
and penetration resistance can be obtained by using at least one chemically
strengthened glass sheet having the recited CS/DOL values. Id. at 12-13.
Citing to In re Shetty, 566 F.2d 81, 86 (CCP A 1977), Appellant asserts that
the combined properties of improved adhesion strength and penetration
resistance were not known at the time of the invention and, thus, that which
is allegedly inherent but not known in the art at the time of the invention
cannot serve as a basis for obviousness. App. Br. 12.
We are unpersuaded of reversible error in the Examiner's
determination of obviousness. "Mere recognition of latent properties in the
prior art does not render nonobvious an otherwise known invention." In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991)(citing In re
Prindle, 297 F.2d 251,254 (CCPA 1962)). See also In re Wiseman, 596
F.2d 1019, 1023 (CCPA 1979) (mere recognition of an inherent property in
the prior art does not render patentable a known structure).
The Examiner finds that Friedman teaches the basic glass laminate
structure claimed except that it does not comprise at least one chemically
strengthened glass sheets. Final Act. 2-3. Specifically, Friedman discloses
using an interlayer with good adhesion to glass that provides the mechanical
properties, such as impact and penetration resistance, needed to meet safety
standards for automotive glazing components. Friedman col. 1, 11. 24--32,
col. 2, 11. 13-20, col. 5, 11. 1-5, 61, col. 6, 1. 16-18. That is, Friedman
discloses using an interlayer to provide the desired properties. Thus, while
Friedman does not teach the use of chemically strengthened glass sheets in
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Appeal2018-006989
Application 14/405,647
the disclosed glass laminate structure, Friedman clearly suggests that the
combined properties of improved adhesion and impact resistance are
desirable for the disclosed glass laminate structures. As the Examiner
explains in the Answer, Charrue teaches the use of chemically strengthened
glass to provide improved resistance to dynamic loadings (i.e., penetration
resistance). Ans. 12; Charrue col. 1, 11. 27-39, col. 2, 11. 34--53. Charrue
also teaches using the chemical strengthened glass in composite panes for
aircraft and automobile. Charrue col. 6, 11. 35--44. Given that both
Friedman and Charrue address the need to improve penetration resistance on
glass panes, one skilled in the art would have had a reasonable expectation
that using Charrue' s chemically strengthened glass sheets in place of the
Friedman's glass sheets would result in a glass laminate structure that would
exhibit improved penetration resistance. Further, one skilled in the art
would have also reasonably expected that Charrue's glass panes would form
a suitable glass laminate structure when laminated to Friedman's polymeric
interlayer with good adhesion between the laminate components given
Friedman's previously noted disclosure. In re O'Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988) ("For obviousness under§ 103, all that is required is a
reasonable expectation of success."). Appellant has not explained
adequately why Charrue' s chemically strengthened glass sheets would be
unsuitable for making Friedman's glass laminate structure. Appellant has
also not provided a technical argument why the glass laminate structure from
the combined teachings of the cited art would not have a combination of
high adhesion and high penetration resistance.
Where the Examiner establishes a reasonable belief that the property
or characteristic recited in the claims would have been inherent to the
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Application 14/405,647
product or process, the burden of proof shifts to Appellant to show that this
characteristic or property is not possessed by the prior art. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). See also Ans. 13-14. Appellant does not direct us to objective
evidence showing that the glass laminate structure from the combined
teachings of the cited art does not possess the improved adhesion and
penetration resistance of the claimed invention. While Appellant argues that
Figure 4 of the Application demonstrates that the inventive glass laminate
structure exhibits improved adhesion and penetration resistance when
compared to conventional glass laminate structures without chemically
strengthened glass panes (App. Br. 12 (citing to Spec. ,r 66)), Appellant does
not explain adequately the relevance of this evidence with respect the cited
prior art.
We have considered Appellant's arguments with respect to Shetty, but
remain unpersuaded because Appellant's reliance on Shetty is misplaced.
App. Br. 13-16.
In Shetty, our reviewing court addressed the rejection of claims drawn
to compounds and to a method of administering compounds in appetite
curbing amounts. Shetty, 566 F.2d at 84--86. With respect to the method
claims, the Solicitor argued that the prior art disclosed using the compounds
in dosages corresponding to the disclosed appetite curbing dosage by
Shetty's appellant and, from there, concluded that those dosages would be
inherently appetite curbing. Shetty, 566 F.2d at 86. The court reversed the
rejection of the method claims because "[p]rior to appellate's disclosure,
none of the [ ] compounds in any of the references [ ] suggested a use, much
less a dosage, for curbing appetite." Id. Notably, however, the court in
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Application 14/405,647
Shetty affirmed the rejection of the compounds on grounds that there was no
evidence ofunobviousness, as by showing an actual difference in properties
between the Shetty appellant's compounds and the prior art compounds.
Shetty, 566 F.2d at 86. Cf In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In
re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Based on this, the holding of Shetty that Appellant relies upon appears
limited to specific method claims and does not necessarily extend to
compound/article claims. Moreover, Appellant does not explain why the
Court's holding in Shetty regarding the compound claims is not relevant to
Appellant's glass laminate structure claims.
Therefore, we affirm the Examiner's rejections of claims 1, 2, 4--15,
and 22 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner
and given above.
ORDER
The Examiner's rejections of claims 1, 2, 4--15, and 22 under 35
U.S.C. § 103(a) are affirmed.
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)(l).
AFFIRMED
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