Ex Parte Jung et al

Patent Trial and Appeal Board

Aug 18, 2017

14299972 (P.T.A.B. Aug. 18, 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.
14/299,972 06/09/2014 Youngsoo JUNG 082147-0078 1071
20277 7590 08/22/2017
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
EXAMINER
COLGAN, LAUREN ROBINSON
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
ipdocketmwe @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOUNGSOO JUNG, DONGGUN MOON, MYTJNGI SHIM,
and SANGRYOUN RYU
Appeal 2016-007674
Application 14/299,972
Technology Center 1700
Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 13, 14, and 16—20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 We cite to the Specification (“Spec.”) filed June 9, 2014; Final Office
Action (“Final Act.”) dated May 27, 2015; Appellants’ Appeal Brief (“App.
Br.”) dated January 27, 2016; Examiner’s Answer (“Ans.”) dated June 6,
2016; and Appellants’ Reply Brief (“Reply Br.”) dated August 4, 2016.
2 Appellants identify Samsung Coming Precision Materials Co., Ltd. as the
real party in interest. App. Br. 2.
Appeal 2016-007674
Application 14/299,972
BACKGROUND
The subject matter on appeal relates to the manufacture of a substrate,
such as glass, provided with a thermochromic film coating. Spec. 1—4; claim
1. Thermochromic-coated glass is useful for regulating transmitted infrared
radiation based on temperature, such that radiation may be transmitted
during colder periods and blocked during warmer periods. Id. at 3. An
auxiliary oxide or nitride layer provided above or below the thermochromic
material serves to impart desired optical characteristics as well as serving as
a diffusion barrier. Id. at 8—9. Appellants disclose providing a sacrificial
metal between the thermochromic film and an auxiliary oxide layer. Id. 5.
During heat-treatment processing, such as for forming or strengthening,
oxygen originating from the auxiliary oxide layer or air results in oxidation
of the sacrificial layer, rather than diffusing to the thermochromic material.
Id. at 8—9. Claim 13—the sole independent claim on appeal—is reproduced
from the Claims Appendix of Appellants’ Appeal Brief below:
13. A method of manufacturing a thermochromic film
coating substrate, the method comprising:
a) preparing a post-heat-treatable substrate;
the post-heat-treatable substrate comprising:
a base substrate;
a thermochromic film coating the base substrate;
at least one of an upper film part and a lower film part;
the upper film part comprising an upper auxiliary film
formed on an upper surface of the thermochromic film and an
upper sacrificial film formed between the thermochromic film
and the upper auxiliary film, wherein the upper sacrificial film
is made of metal, and the upper auxiliary film is made of oxide
or nitride of the metal which the upper sacrificial film is made
of,
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Application 14/299,972
the lower film part comprising a lower auxiliary film
formed on a lower surface of the thermochromic film and a
lower sacrificial film formed between the thermochromic film
and the lower auxiliary film, wherein the lower sacrificial film
is made of metal and the lower auxiliary film is made of oxide
or nitride of the metal which the lower sacrificial film is made
of,
b) performing post-heat treatment on the post-heat-treatable
substrate, the upper sacrificial film being completely oxidized
or nitrated during the post-heat treatment to be imparted with
the same composition as the upper auxiliary film and the lower
sacrificial film being completely oxidized or nitrated during the
post-heat treatment to be imparted with the same composition
as the lower auxiliary film.
REJECTION
The Examiner maintained the following ground of rejection:3
Claims 13, 14, and 16—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Amaud,4 Boire,5 and Richardson.6
OPINION
Appellants argue the claims as a group. See App. Br. 3—6. We limit
our discussion to representative claim 1, and decide the propriety of the
rejection based on the representative claim alone. Claims 14 and 16—20
stand or fall with claim 13.
After having considered the evidence presented in this Appeal and
each of Appellants’ contentions, we are not persuaded that Appellants
3 Final Act. 2—5; Ans. 2—5.
4 US 2004/0005472 Al, published January 8, 2004 (“Amaud”).
5 EP 0 847 965 Al, published June 17, 1998 (“Boire”), as translated.
6 US 2006/0065350 Al, published March 30, 2006 (“Richardson”).
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Application 14/299,972
identify reversible error, and we sustain the Examiner’s § 103(a) rejection
for the reasons expressed in the Final Action, the Answer, and below.
As is relevant to Appellants’ arguments on appeal, the Examiner finds
that Amaud discloses a method for manufacturing a multi-layered
thermochromic material comprising coating a glass base substrate with
alternating film layers of dielectric and silver, which the Examiner
represents as follows:
base substrate/D 1/Ag/D2/Ag/D3
where Dl, D2, and D3 represent dielectric layers. Final Act. 2. The
Examiner further finds that Amaud teaches substituting a thermochromic
VCE layer for D2, and teaches providing a thin layer having a sacrificial
function at each silver/dielectric interface. Id. The Examiner finds that
Amaud expressly refers to Boire for details regarding the nature and
thickness of the sacrificial layers. Id. at 3 (citing Amaud 136).
Appellants do not dispute the foregoing findings in the briefs.
Regarding claim 13’s recitation that the sacrificial film is a metal and
the auxiliary film is an oxide or nitride of the same metal, the Examiner
finds that Amaud identifies TiCE as a suitable dielectric and finds that Boire
identifies Ti as a suitable sacrificial layer. Id. at 2—3.
Appellants argue that the Examiner “arbitrarily selected TiCE from
among a number of metal oxides, including ZnO, TiCE, SnCE, Nb2CE, TaaCE,
AIN, SEN4, SiAIN, SiON, SiOC, and SiCE.” App. Br. 4. Appellants also
argue that the Examiner arbitrarily selected Ti as the sacrificial film from “a
number of metals disclosed by Boire.” Id. Appellants do not identify which
metals other than Ti are alleged as being taught by Boire. Nor do Appellants
cite to any portion of Boire other than Boire’s Example reported in Table 5,
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Application 14/299,972
which Appellants acknowledge provides Ti as the sacrificial material. Id.\
Boire Table 5. Regarding Amaud, the Examiner responds that,
although Amaud does teach a number of metal oxides that can
be used for their auxiliary film, as Amaud includes TiCE as part
of that listing, Amaud’s auxiliary film being that of TiCE would
have clearly been obvious to one having ordinary skill at the
time of invention with a reasonable expectation of success.
Ans. 10. We add that Amaud specifies TiCE in each of Examples 3, 3a, 3b
and 4. See Amaud 73—'77, 95. In light of these disclosures, we are not
persuaded that the Examiner erred in finding that one of ordinary skill would
have had a reason to select TiCE as dielectric and Ti as sacrificial material.
Appellants also argue that Richardson teaches heating from 600—
700 °C for at least 5 minutes, which differs from the “700 °C for 10 minutes
at atmosphere, as exemplified in the present specification.” App. Br. 5.
This argument is not persuasive; claim 13 lacks any recitation of temperature
or time associated with the heat-treatment process.
Appellants allege that the results reported in Table 1 of the
Specification demonstrate an “unexpected improvement” in surface
roughness, haze, and defects. Id. Particularly, Appellants argue that, “[a]s
illustrated by Example 5, when the auxiliary films are made of the oxide of
the metal which the sacrificial film is made of[,] superior surface roughness,
haze, and defect properties are obtained.” Id. We agree with the Examiner’s
response, Ans. 13, that the relied-upon evidence “is not commensurate in
scope with claim 13.” As the Examiner notes, Appellants’ Examples
reported in Table 1 are limited to Ti and TiCE as the sacrificial and auxiliary
layer materials, respectively, whereas claim 13 encompasses any metal and
any oxide or nitride of that metal. Moreover, Examples 3 and 4 reported in
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Table 1, which are within the scope of claim 13, are reported as exhibiting
roughness and haze properties that are inferior to what is reported for
Examples 6 and 7, which provide sacrificial and auxiliary layers having
different metals and therefore are not within the scope of claim 13. As such,
Appellants do not persuade us that the information contained in Table 1
demonstrates unexpected results associated with the invention as claimed.
For the foregoing reasons, Appellants have not persuaded us of
reversible error in the Examiner’s rejection of claim 13. Accordingly, we
sustain the Rejection as applied to each of the claims on appeal.
DECISION
The Examiner’s rejection of claims 13, 14, and 16—20 under 35 U.S.C.
§ 103(a) is 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).
AFFIRMED
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