Hawtof, Daniel Warren.

Patent Trials and Appeals Board

Sep 30, 2019

14621881 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/621,881 02/13/2015 Daniel Warren Hawtof SP15-046Z 1228
22928 7590 09/30/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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 DANIEL WARREN HAWTOF1
____________

Appeal 2019-001311
Application 14/621,881
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellant identifies the real party in interest as Corning Incorporated.
Appeal 2019-001311
Application 14/621,881

2
Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 16–20 and 37–40.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 16 is illustrative of Appellant’s subject matter on appeal and is set forth
below:

16. A silica-containing sheet comprising:
a first major surface, the first major surface having a variable
surface topography;
a second major surface opposite the first major surface;
at least 50 mole % silica;
an average thickness between the first major surface and the
second major surface of less than 5 mm;
a length of at least 1 cm and a width of at least 1 cm;
wherein the variable surface topography of the first major surface
varies having at least two layers that are not coplanar with each other
such that:
a first surface profile along a first x-axis is different than a
second surface profile along a second x-axis; and
a third surface profile along a first y-axis is different than a
fourth surface profile along a second y-axis.

2 It is noted that Appellant has withdrawn the appeal with respect to the Examiner’s
rejection of claims 21 and 22. Claim 24 depends upon claim 21 and claim 25
depends upon claim 24. Reply Br. 3. As a result, claims 21, 22, 23, 24, and 25 are
not appealed by Appellant. These claims are not included here.
Appeal 2019-001311
Application 14/621,881

3
The Examiner relies on the following prior art references as evidence of
unpatentability:
Bhagavatula et al. US 4,494,968 January 22, 1985
(Bhagavatula”)
Hawtof et al. US 2010/0291346 A1 November 18, 2010
(“Hawtof”)

THE REJECTIONS3
1. Claim 40 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description requirement.
2. Claims 16–18, 20, and 37–39 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over
Hawtof.
3. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over
Hawtof as applied to claim 16 above and further in view of Bhagavatula.
4. Claim 40 is rejected under 35 U.S.C. § 103 as being unpatentable over
Hawtof in view of Applicant’s Admitted Prior Art (AAPA).

ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellant’s
position in the record. We thus reverse the Examiner’s decision for the reasons
provided by Appellant in the record, and add the following for emphasis.

3 As noted in footnote 2, supra, Appellant has withdrawn the appeal with respect to
the Examiner’s rejection of claims 21 and 22. Reply Br. 3. As a result, claims 21, 22,
23, 24, and 25 are not appealed by Appellant and therefore the rejections listed here
involve only the appealed claims.
Appeal 2019-001311
Application 14/621,881

4
Rejection 1
It is the Examiner’s position that the phrase “a coiled section turning about a
minor surface of the sheet” is unsupported by the Specification. Final Act. 2–3. It is
the Examiner’s position that while this phrase covers the intuitive coiling shown in
Figure 9 and described in paragraph [0059] of the Specification, it also covers an
alternative hypothetical scenario where the sheet somehow coils about a horizontal
axis that extends lengthwise along the center of the edge of the sheet. Ans. 3–4. We
agree with Appellant that this alternative hypothetical is not within the scope of
claim 40 for the reasons provided by Appellant on pages 4–5 of the Appeal Brief
and on pages 1–2 of the Reply Brief. Claim 40 as properly construed is supported by
the original Specification. We note that in order to satisfy the written description
requirement of § 112, the Specification – including the drawings and the originally
filed claims – must allow a person of ordinary skill in the art to recognize that the
inventor invented what is claimed. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir.
1989). The specification must reasonably convey to a person of ordinary skill in the
art that the inventor had possession as of the filing date of the claimed subject
matter. Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir.
1985); see also, Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991).
We thus reverse Rejection 1.

Rejections 2–4
Our determinations with respect to Rejection 2 are dispositive for Rejections
3–5 because each of the art rejections involve the primary reference of Hawtof
which is outcome determinative in this case.
It is the Examiner’s position that because Hawtof teaches that the soot-
receiving device can oscillate, that this oscillation would create layers that are not
coplanar with each other as required by the claim phrase “wherein the variable
Appeal 2019-001311
Application 14/621,881

5
surface topography of the first major surface varies having at least two layers that
are not coplanar with each other”. Ans. 4. However, for the reasons stated by
Appellant in the record, we agree that this position is unsupported by the record and
is speculative. Appeal Br. 6–7. Reply Br. 2–3. We thus reverse Rejections 2–4.
In view of the above, we reverse Rejections 2–4.
DECISION
Each rejection is reversed.

ORDER
REVERSED