Ex Parte Fisher et alDownload PDFPatent Trials and Appeals BoardJun 3, 201914405647 - (D) (P.T.A.B. Jun. 3, 2019) Copy Citation 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. 2 Appeal2018-006989 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 3 Appeal2018-006989 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 4 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 5 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 6 Appeal2018-006989 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 7 Appeal2018-006989 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 8 Copy with citationCopy as parenthetical citation