Ex Parte Garner et al

Patent Trial and Appeal Board

Jan 31, 2017

12511167 (P.T.A.B. Jan. 31, 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.
12/511,167 07/29/2009 Sean M. Garner SP09-220 3262
22928 7590 02/02/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN M. GARNER and GARY E. MERZ
Appeal 2016-001006
Application 12/511,167
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision finally rejecting claims 1, 3—5, 7—12, 21, and 23—25
under 35 U.S.C. § 103(a). We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Coming Inc. (Appeal
Br. 2).
Appeal 2016-001006
Application 12/511,167
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the claimed subject matter (emphasis added
to highlight key limitations):
1. A substrate comprising:
a flexible glass ribbon having a thickness equal to or less
than about 0.3 mm, the flexible glass ribbon further comprising
first and second major surfaces and first and second edges;
a first flexible coating comprising a polymeric tape
disposed on the first and second major surfaces of the flexible
glass ribbon, the polymeric tape being disposed on only a portion
of the first major surface and only a portion of the second major
surface, the first flexible coating further comprising a first web
portion extending from the first edge a distance of at least 1 cm
and
wherein interior portions of the flexible glass ribbon are
not coated with the first flexible coating.
(Appeal Br. 18; Claims App.).
REFERENCES AND REJECTIONS ON APPEAL
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1, 3, 4, 9, 12, and 24—25 as unpatentable over Cheron et al.
(US 5,585,188, published Dec. 17, 1996) (hereinafter “Cheron”) in view of
Higuchi et al. (US 2007/0122631 Al, published May 31, 2007) (hereinafter
“Higuchi”);
(b) claim 5 as unpatentable over Cheron in view of Higuchi, and
further in view of Miyahara et al. (US 2005/0142321 Al, published June 30,
2005) (hereinafter “Miyahara”);
(c) claims 7 and 23 as unpatentable over Cheron in view of Higuchi,
and further in view of Leray et al. (US 5,637,363, published June 10, 1997)
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Application 12/511,167
(hereinafter “Leray”);
(d) claim 8 as unpatentable over Cheron in view of Higuchi, and
further in view of Friedman et al. (US 2005/0053768 Al, published Mar. 10,
2005) (hereinafter “Friedman”);
(e) claim 10 as unpatentable over Cheron in view of Higuchi, and
further in view of Wang, (US 7,318,958 B2, published Jan. 15, 2008)
(hereinafter “Wang”);
(f) claim 11 as unpatentable over Cheron in view of Higuchi, and
further in view of Tom et al. (US 2008/0037141 Al, published Feb. 14,
2008) (hereinafter “Tom”); and
(g) claim 21 as unpatentable over Cheron in view of Higuchi, and
further in view of Khanna (US 2006/0063880 Al, published Mar. 23, 2006)
(hereinafter “Khanna”).
For Rejection (a), Appellants make separate substantive arguments in
support of patentability of claims 3,12, and 24 (see generally Appeal Br. 5—
12; Reply Br. 2—6). Accordingly, our discussion will focus on the
obviousness rejection of independent claim 1. Claims 3, 12, and 24 will be
addressed separately. Claims 4, 9, and 25, the other dependent claims in this
rejection, stand or fall with claim 1. 37 C.F.R. § 41.37(c)( 1 )(vii).
ANALYSIS
Upon consideration of the appeal record including Appellants’
position in this appeal as set forth on pages 5—16 of the Appeal Brief and
pages 2—6 of the Reply Brief, we affirm the rejections for the reasons stated
by the Examiner (Examiner’s Answer mailed August 20, 2015, 2—21). We
add the following for emphasis.
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Application 12/511,167
Rejection (a)
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
With respect to claim 1, Appellants’ main arguments focus on the
Examiner’s alleged failure to demonstrate that the prior art suggests a
flexible glass ribbon having a thickness equal to or less than about 0.3 mm.
Appeal Br. 5—9. Specifically, Appellants argue that substituting Cheron’s
plastic material 10 with either of Higuchi’s polymeric layers 120A or 120B
would not have imparted the properties of flexibility or impact resistance to
Cheron’s rigid glass sheets. Reply Br. 2, 4. Appellants further argue that
there would have been “no motivation to provide the flexible plastic material
10 of Cheron with heat resistance as disclosed by Higuchi.” Id. at 3
(emphasis omitted). We disagree for reasons well stated by the Examiner.
Ans. 2-4; 11-15.
As aptly pointed out by the Examiner,
the motivation . . . comes directly from Higuchi itself.
Specifically, paragraph 0012 of Higuchi states “. . . by using a
polymer layer which contains polyorganosilsequioxane as a
main component as a polymer layer for imparting flexibility to
an inorganic glass layer, a flexible substrate can obtain
excellent heat resistance in addition to excellent flexibility . . .
Ans. 11, (citing Higuchi 112).
Furthermore, Appellants’ focus on Cheron’s plastics material 10,
Reply Br. 2^4; see also Appeal Br. 6, is misplaced. For example, the
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Application 12/511,167
Examiner finds that the applied prior art suggests modification of protective
strips 11 or 12, not plastics material 10. See Ans. 3; see also Ans. 2, citing
Cheron 4:63—64; Fig. 3. The Examiner’s findings make no mention of
Cheron’s plastics material 10. See generally Ans. 2-4; 11—15.
Appellants’ arguments, furthermore, have not demonstrated reversible
error in the Examiner’s findings.. As the Examiner finds, “Higuchi[] teaches
a substrate comprising a flexible glass ribbon having a thickness of 0.001 to
0.3 mm . . . , which falls within the claimed range of equal to or less than
about 0.3 mm . . . .” Id. at 2—3, (citing Higuchi || 1, 13, 59).
Appellants’ arguments are not persuasive because they do not
squarely address the Examiner’s determination that it would have been
obvious for the ordinary skilled artisan to: (i) include Higuchi’s flexible
polymer coating for Cheron’s strips 11 or 12 and (ii) to reduce the thickness
of Cheron’s glass ribbon to equal to or less than about 0.3 mm, “in order to
impart flexibility to the glass substrate as well as to impart heat resistant and
impact resistance.” Ans. 3, (citing Higuchi 112).
Therefore, we are not persuaded by Appellants’ arguments that the
combination of Cheron and Higuchi fails to teach or suggest the recitation of
a flexible glass ribbon having a thickness equal to or less than about 0.3 mm.
Appellants further argue that “[t]he prior art fails to teach or suggest
the first flexible coating further comprising a first web portion extending
from the first edge ‘a distance of at least 1 cm’” as recited in claim 1.
Appeal Br. 8 (emphasis omitted). Specifically, Appellants argue that Cheron
“teaches away from a thickness greater than 2 mm by disclosing,
‘[nevertheless, preferably, this thickness does not exceed 2 mm for reasons
of bulk.’” Id., (citing Cheron 2:54—56).
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Application 12/511,167
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). For a
reference to “teach away,” it must criticize, discredit, or otherwise
discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Appellants’ arguments are not persuasive because they fail to identify
any teaching in the applied prior art that criticizes, discredits, or discourages
a first web portion extending from the first edge a distance of at least 1 cm
as claimed. Appellants, moreover, admit that “Cheron does acknowledge
that ‘the greater the thickness, the more will the strip . . . possess improved
properties’.” Appeal Br. 8.
Furthermore, Cheron’s use of the word “preferably” suggests that
other thicknesses are permissible. See Cheron 2:50—56. Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (all disclosures of
the prior art, including unpreferred embodiments, must be considered).
Therefore, we are not persuaded that Cheron teaches away from claim
1.
Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the inferences that a person of ordinary skill in the art
would make, such as the inference that a substrate with Cheron’s “glass
sheet... as small as 3 mm,” Cheron 3:9—11, “the edge face of which
is, at least partly, covered by a protective strip,” id. at 2:11—12, could be
redesigned to reduce the glass thickness and extend the strips further from
the edge. Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc.,
555 F.3d 984, 993 (Fed. Cir. 2009). It is well settled that a reference stands
for all of the specific teachings thereof as well as the inferences one of
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Application 12/511,167
ordinary skill in this art would have reasonably been expected to draw
therefrom. See In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir. 1992).
Thus, Appellants have not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have modified the design of Cheron’s substrate
by: (i) including Higuchi’s flexible polymer coating for Cheron’s strips 11
or 12 and (ii) choosing the presently claimed thickness for Cheron’s glass
ribbon, in order to impart flexibility to the glass substrate as well as to
impart heat resistant and impact resistance. We have no doubt that such a
skilled artisan would have: 1) identified the need for providing, at the very
least, increased flexibility and impact resistance; and 2) recognized that
protective strips and a flexible glass useful in the manufacture of glass
substrates, see Cheron 1:63—66; Higuchi 11, would likely have benefits in
the manufacture of a glass substrates wound on a roll, see Spec. 12. In re
Keller, 642 F.2d 413, 425—26 (CCPA 1981) (“The test for obviousness ... is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.”); In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.”).
Thus, we affirm rejection (a) with respect to claims 1, 4, 9, and 25.
With respect to separately argued claim 3, Appellants argue that it is
improper for the Examiner to combine Higuchi with Cheron because the
“[fjeatures of an outer coating of Higuchi designed, for example, to impart
impact resistance may not apply to interior polymeric layers like the plastic
material 10 disclosed by Cheron.” Reply Br. 5; see also Appeal Br. 9.
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Application 12/511,167
Appellants’ argument is not persuasive because it misplaces focus on
plastics material 10. For the reasons set forth above, the Examiner made no
finding regarding Cheron’s plastics material 10; this component is not
modified in the Examiner’s proposed modification.
With respect to separately argued claim 12, Appellants argue that
[o]ne having ordinary skill in the art at the time of the invention
would not reasonably understand installation of a window into
an aircraft fuselage as corresponding to one or more layers of a
lamination or deposited material included on one or both of the
first and second major surface of a flexible glass ribbon, as
required by the present application.
Appeal Br. 10-11. Appellants’ argument, however, is not supported by any
legal authority nor any evidence. Appellants at most have provided mere
attorney argument, and such arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
With respect to separately argued claim 24, Appellants argue that “it
is anything but ‘clear’ that the airplane window of Cheron (even with the
alleged modifications, as best understood) would be ‘capable of being rolled
with a bend radius less than about 10 cm,’ as required by claim 24.” Appeal
Br. 11. Appellants admit, however, that “[i]t is well known in the industry
that glass layers may be flexible, largely due to the relatively thin nature of
the glass” and that Higuchi discloses a very thin glass substrate. Reply Br.
5. Appellants’ argument, furthermore, does not provide evidence to the
contrary that Cheron’s “glass sheet... as small as 3 mm,” Cheron 3:9—11,
would not be capable of being rolled with a bend radius less than about 10
cm.
Thus, we affirm rejection (a) with respect to claims 3, 12, and 24.
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Rejections (b), (d), (e), and (/)
We note that for the arguments urging reversal of rejections (b), (d),
(e), and (f) to claims 5, 8, 10, and 11, respectively, on appeal, Appellants’
Briefs do not include any particularized argument based on that claim’s
limitations. Rather, for these claims, Appellants merely: (i) note that the
particular claim recites additional limitations and (ii) imply that the
Examiner’s additional secondary reference discloses features that distinguish
it from the present invention. See, e.g., Appeal Br. 12 (discussion of claim
5). Appellants then state that the rejection of the claim should be reversed
for the reasons discussed in connection with the alleged deficiencies of
Cheron and Higuchi and that there is no reason to combine the teaching of
the additional secondary reference. Id.
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. Rather, the test focuses on what the combined teachings of the
references would have suggested to those of ordinary skill in the art. Keller,
642 F.2d at 425-26; In re Nievelt, 482 F.2d 965, 968 (CCPA 1973)
(“Combining the teachings of references does not involve an ability to
combine their specific structures.”). Therefore, Appellants’ arguments
urging reversal of rejections (b), (d), (e), and (f) are not persuasive for the
reasons set forth above and in the Examiner’s Answer. See Ans. 6, 8—10,
16-17, 18-20.
Thus, we affirm rejections (b), (d), (e), and (f) to claims 5, 8, 10, and
11.
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Rejection (c)
With respect to claim 7, Appellants argue that there is “no support for
the conclusion that it would have been obvious to duplicate the single hole
provided in the strip of Leray, nor is there support for the conclusion that,
even if duplicated, one would arrange the duplicated holes along a length of
the glass ribbon.” Appeal Br. 13.
These arguments are not persuasive of error in the Examiner’s
rejection. The Examiner’s rejection is based on the premise that the use of
multiple perforations is prima facie obvious, because a second perforation
would also have provided the ability to allow passage of a functional
element such as an electrical connector through the substrate. Ans. 7; citing
Leray 3:62—64. As the Examiner found, such duplicated holes would
necessarily have to be provided in one direction of the ribbon. See Ans. 18.
It is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). See also In
re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the
mere duplication of parts has no patentable significance unless a new and
unexpected result is produced, and we are of the opinion that such is not the
case here.”).
With respect to claim 23, Appellants argue that it is improper for the
Examiner to rely on Leray for teaching the inclusion of a metallic layer in
Cheron’s first flexible coating. Appeal Br. 13. Appellants contend that
when Leray discloses that such inclusion provides a barrier to leakage or
imparts mechanical properties suitable to correct and adapt to any alignment
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defects, Leray is merely “referring to the external strip layer, not to the
metallic layer.” Id.
Appellants’ argument, however, is not persuasive. As the Examiner
found, these benefits “can be attributed to the metal layer given that the
metallic layer is on the external strip layer and[,] therefore, would
necessarily provide a barrier and impart mechanical properties.” Ans. 18,
citing Leray 2:58—67.
Thus, we affirm rejection (c) with respect to claims 7 and 23.
Rejection (g)
With respect to claim 21, Appellants admit that Khanna “disclose[s]
that the transparent composite can be used in a variety of applications
including vehicle glass, airplane glass, and electronic display glass.” Appeal
Br. 16. However, Appellants argue that it “simply is not correct” that the
Examiner finds that Khanna teaches the limitation “‘electronic device’
deposited on a glass” as required in claim 21. Id.
The substitution of one known element for a known equivalent is
prima facie obvious. In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997).
There is no requirement of an express suggestion to substitute one equivalent
for another to render the substitution obvious. In re Font, 675 F.2d 297, 301
(CCPA 1982).
In this instance, the Examiner finds Khanna teaches that deposited
material in the form of airplane glass and electronic display glass are
interchangeable. Ans. 21, citing Khanna H 27, 32. As the Examiner
determined, it would have been obvious for the ordinary skilled artisan “to
substitute [Cheron’s] airplane glass . . . with electronic display glass as a
matter of substitution of equivalents known for the same purpose.” Ans. 21.
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Mayne, 104 F.3d at 1340. To the extent Appellants argue that an electronic
display cannot teach or suggest the claimed “electronic device,” Appellants
offer no definition of the claim term to support their position.
Thus, we affirm rejection (g) with respect to claim 21.
DECISION
All of the appealed rejections are affirmed.
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)(iv).
AFFIRMED
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