Ex Parte Nakayama et al

Patent Trial and Appeal Board

Dec 11, 2012

10812304 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MASAAKI NAKAYAMA,
DAIJI TAHARA, and MASAFUMI IGO
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Appeal 2010-006871
Application 10/812,304
Technology Center 3700
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Before STEFAN STAICOVICI, JAMES P. CALVE, and
SCOTT A. DANIELS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2010-006871
Application 10/812,304

2
STATEMENT OF THE CASE
On November 21, 2012, Appellants filed a request for rehearing
(“Request”) under 37 C.F.R. § 41.52 asking that we reconsider our decision
of September 21, 2012 (“Decision”). Requests for Rehearing are limited to
matters overlooked or misapprehended by the Panel in rendering the original
decision. See 37 C.F.R. § 41.52.
In the Decision, we affirmed the rejection of claims 10, 22, 24, and 25
under 35 U.S.C. § 103(a) as being unpatentable over Kaiser and Ohsima.
Decision 7-8. We also affirmed the rejection of claims 11 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Kaiser, Ohshima, and Asaumi
and the rejection of claim 23 under 35 U.S.C. § 103(a) as being unpatentable
over Kaiser, Ohshima, and Yoshida. Decision 8.
Appellants argue that the disc roll of Example 6B (50% clay content)
is not better than disc rolls of Examples 3B (20% clay content) to 5B (40%
clay content). Request 1. Appellants also assert that “[a]lthough the result
of ‘Glass Scratch’ in Example 6B (2 scratches/m2) might appear to be not so
different from the result in Example 3B (0 scratches/m2), this evaluation is
of laboratory-scale” so the “difference is actually quite substantial . . . when
the scale is enlarged up to industrial levels, and it is still further marked in
manufacturing in large-area glass.” Request 1-2. Appellants further argue
that the surface hardness of Example 6B is as high as 60, which is more
likely to cause scratches and increase the risk of glass breakage. Request 2.
These arguments do not persuade us that we misapprehended or
overlooked any arguments or evidence regarding the alleged criticality of the
claimed clay content range of 20% to 40%. Appellants gave Example 3B
(20% clay content) and Example 6B (50% clay content) the same Overall
Appeal 2010-006871
Application 10/812,304

3
Evaluation of “Good” even though Example 6B had 2 scratches/m2 and
Example 3B had 0 scratches/m2. Appellants have not provided any evidence
of the properties and scratches that result from discs with a clay content of
41% to 49%, which is within the prior art range of Kaiser, the prior art range
closest to the claimed range. Decision 6 n.1. Moreover, Appellants also tout
the benefits of a clay content of not higher than 30% for wear resistance,
heat resistance, scratch resistance, and flexibility. Decision 6. Weighing all
the evidence and arguments, we found that there was insufficient evidence
of unexpected results commensurate in scope with the claimed range to
establish its criticality and non-obviousness. Decision 3-7.
DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of the arguments in Appellants’ Request,
but is denied with respect to our making any modification to the Decision.
Upon reconsideration, the rejection of claims 10, 11, and 22-26 remains
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)(1)(iv).

DENIED

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