GUARDIAN GLASS, LLC et al.

Patent Trials and Appeals BoardApr 2, 2021

2020002129 (P.T.A.B. Apr. 2, 2021)

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. 14/769,634 08/21/2015 Ralf GREINER JAR-3691-3658 5563 124194 7590 04/02/2021 Guardian Glass, LLC (Nixon) c/o KCPS IP Dept./Shannon Gonsalves 4111 E. 37th Street North Mail Stop T2C Wichita, KS 67220 EXAMINER MCDONALD, RODNEY GLENN ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 04/02/2021 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): koch_pair@firsttofile.com pair_nixon@firsttofile.com ptomail@nixonvan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RALF GREINER, MARIO OLBRICH, and MATTHEW S. WALP Appeal 2020-002129 Application 14/769,634 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s March 22, 2018 decision to finally reject claims 16, 17, 19–23, and 26–31 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real parties in interest as Guardian Glass, LLC and Guardian Europe S.a r.l. (Appeal Br. 3). Appeal 2020-002129 Application 14/769,634 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed in part to a method for making an intermediate article to be used in an insulated glass (IG) unit. Window units are made using a ceramic frit that dissolves physical vapor deposition (pvd) deposited coatings (Abstract). Claim 16, reproduced below from the Claims Appendix, is illustrative of the claimed subject matter: 16. A method of making an intermediate article to be used in an insulated glass (IG) unit, the method comprising: printing a frit in a desired pattern on a first glass substrate supporting a heat treatable physical vapor deposition (PVD) deposited infrared (IR) reflecting multi-layer coating, at least a portion of the frit directly contacting the coating; wherein the coating comprises at least one IR reflecting layer sandwiched between at least first and second dielectric layers; thermally tempering the first glass substrate with the coating and the frit thereon, the thermal tempering dissolving the coating in areas where the frit contacts the coating and fusing the frit directly to the first glass substrate in making an intermediate article configured to be used in the IG unit. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Degand US 2004/0086652 A1 May 6, 2004 Prete et al. US 2009/0139165 A1 June 4, 2009 Lu et al. US 2011/0176212 A1 July 21, 2011 Manabe et al. US 5,332,412 July 26, 1994 Appeal 2020-002129 Application 14/769,634 3 REJECTIONS 1. Claims 16, 19, 22, 23, 26, and 31 are rejected under 35 U.S.C. § 102(b) as anticipated by Degand.2 2. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Degand in view of Manabe.3 3. Claims 17 and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Degand in view of Prete. 4. Claims 27–30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Degand in view of Lu. OPINION “A prior art reference anticipates a patent claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). In this instance, Appellant contends that Degand does not teach: “the thermal tempering dissolving the coating in areas where the frit contacts the coating and fusing the frit directly to the first glass substrate in making an intermediate article configured to be used in the IG unit” (Appeal Br. 7). The Examiner’s findings regarding claim 16 are set forth at page 3 of the Final Action: Degand teaches a forming a frit 16 on a sputter deposited coating on a glass panel. Degand teaches that the coating layer comprise an IR layer sandwiched between two dielectric layer. 2 The rejection of claim 20 as anticipated by Degand was withdrawn the Examiner (Ans. 8). 3 The obviousness rejection of claim 20 over Degand in view of Manabe was newly presented in the Answer (Ans. 7). Appeal 2020-002129 Application 14/769,634 4 Degand teaches providing sufficient heat to cause the transformation of the coating layer below the frit causing destruction/breakdown of the layer leading to the frit being directly connected to the glass panel without the need for etching prior to deposition of the frit. Degand teaches that the panels can be used for laminated windshields, architectural panels, and others that would read on an insulated glass unit. Degand teaches that the transformation results from diffusion/migration of atoms between the coating layer and frit material. Degand further teaches that the coating layer being heated results in destruction, breakdown and disintegration of the layer. It is the [E]xaminer's position that this would read on the dissolving as claimed. (Final Act. 3). Appellant argues that Degand does not teach “dissolving the coating in areas where the frit contacts the coating and fusing the frit directly to the first glass substrate” (Appeal Br. 7). Appellant’s argument is persuasive of reversible error. Degand specifically states that the transformation of its coating layer reduces its susceptibility to corrosion and “provides an effective barrier which prevents corrosion of the rest of the coating layer” (Degand, ¶ 42). This disclosure indicates that the coating – which “provides an effective barrier” – does not dissolve and permit the frit to fuse directly to the glass substrate. Thus, Degand does not anticipate claim 16. The Examiner points to Degand’s statement that after transformation the coating “is not visually perceivable with the naked eye” (Degand, ¶ 43) as evidence that the frit is fused directly to the glass substrate (Ans. 9). However, as pointed out by Appellant (Reply Br. 2–3), merely because the layer is no longer visible to the naked eye does not mean that it is not there. In fact, as noted above, Degand explicitly states that the transformed coating Appeal 2020-002129 Application 14/769,634 5 “provides an effective barrier” (Degand, ¶ 42), which means that it must come between the frit and the glass substrate. To the extent that the Examiner finds (see, e.g. Ans. 9) that Degand’s heating step causes “destruction, break down or disintegration” of the coating layer, we note that Degand states that the heating step “may cause local destruction, break down or disintegration of the transformable portion of the coating layer” (Degand, ¶ 12, emphasis added). However, Degand is quite specific that this may and, therefore, may not happen, and thus does not inherently disclose the dissolution of the coating layer. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”). Accordingly, we determine that Appellant has demonstrated error in the anticipation rejection of independent claim 16. Therefore, we reverse the anticipation rejection over Degand. Because the obviousness rejections based on Degand and the other references do not remedy the foregoing deficiency of Degand, we also reverse those rejections. CONCLUSION The Examiner’s rejections are reversed. Appeal 2020-002129 Application 14/769,634 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 19, 22, 23, 26, 31 102(b) Degand 16, 19, 22, 23, 26, 31 20 103(a) Degand, Manabe 20 17, 21 103(a) Degand, Prete 17, 21 27–30 103(a) Degand, Lu 27–30 Overall Outcome 16, 17, 19– 23, 26–31 REVERSED