Jae Seon. Hong et al.

Patent Trials and Appeals BoardOct 24, 2019

15034085 - (D) (P.T.A.B. Oct. 24, 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. 15/034,085 05/03/2016 Jae Seon Hong CPMC 3.3F-058 6115 530 7590 10/24/2019 LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK 600 SOUTH AVENUE WEST WESTFIELD, NJ 07090 EXAMINER HOFFMANN, JOHN M ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 10/24/2019 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): eOfficeAction@ldlkm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAE SEON HONG, MYUNG HWAN KIM, BONG CHUL KIM, JONG HWA KIM, DUCK KYO SEO, and JAE MUN HWANG, ____________ Appeal 2018-008688 Application 15/034,085 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and JAMES C. HOUSEL, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1 and 3–8 under 35 U.S.C. § 102(a)(1) as being anticipated by Hough, Jr. (US 1,236,937, issued Aug. 14, 1917)2. We have jurisdiction over the appeal 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 party in interest as Corning Precision Materials Co., Ltd. (Appeal Br. 2). 2 The Examiner withdrew a rejection of these claims under 35 U.S.C. § 112 for being indefinite (Ans. 6). Appeal 2018-008688 Application 15/034,085 2 Claim 1 is illustrative of the appealed subject matter (emphasis added to identify a key disputed limitation): 1. An apparatus for shaping a glass substrate, comprising: a molding frame having a cavity, at least one vacuum hole and at least one decompression hole, wherein the cavity disposed on one surface of the molding frame, the at least one vacuum hole formed in the molding frame below the cavity, the at least one vacuum hole being connected to an external vacuum device, and the at least one decompression hole defined between the cavity and the at least one vacuum hole such that the cavity communicates with the at least one vacuum hole, wherein a width of the at least one decompression hole is greater than a width of the at least one vacuum hole such that the at least one decompression hole lessens vacuum pressure applied to the glass substrate disposed on the cavity through the at least one vacuum hole, wherein all of the at least one vacuum hole are directly connected to the at least one decompression hole. Appeal Br. 14 (Claims Appendix). PRINCIPLES OF LAW [U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Appeal 2018-008688 Application 15/034,085 3 Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent applications is not determined solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. (citations omitted)); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’” (citation omitted)). ANALYSIS The Examiner relies only upon Hough’s Figs. 3−5 in the anticipation rejection (Final Action 3; Ans. 4). Appellant argues that the Examiner has taken an unreasonably broad interpretation of the recited “wherein all of the at least one vacuum holes are directly connected to the at least one decompression hole” and thus, has not shown how Hough’s Figs. 3−5 identically disclose this feature. A preponderance of the evidence supports Appellant’s position. Appellant points out that many of the vacuum holes in Hough’s mold depicted in Figs. 4 and 5 are not connected to any decompression hole and thus cannot be encompassed by the claimed feature (Appeal Br. 6, 7; Reply Br. 4, 5). We agree with Appellant that the claim when read in its entirety and in light of the Specification, requires that all of the vacuum holes be connected to at least one decompression hole. Hough’s Figs. 5 and 6 do not show this feature. Indeed the claim itself also defines the at least one vacuum hole as hole(s) in the mold that are connected to an external vacuum device, and that the decompression hole is located between the cavity and Appeal 2018-008688 Application 15/034,085 4 the vacuum hole and configured such that it functions to lessen vacuum pressure applied to the glass substrate disposed on the mold cavity. We are also mindful that: [t]he correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e. an interpretation that is consistent with the specification. In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal quotation omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond that which was reasonable in light of the totality of the written description” in the Specification). Each of the Examiner’s alternative positions, that vacuum holes are only those holes that are connected to a decompression hole (Ans. 11) or that the material of the Hough mold directly connects all the holes with each other and/or “the nothingness which exists in all locations where there is no mold material directly connects (the nothingness of the) holes” (Ans. 12) are all unreasonably broad interpretations of the aforementioned claim limitation when considered in light of the Specification as well as in light of the entirety of the plain meaning of the claim for the reasons explained in the Briefs. In doing so, the Examiner erred in finding that Hough’s Figs. 3−5 disclose the claimed subject matter. As such, we cannot sustain the anticipation rejection. Appeal 2018-008688 Application 15/034,085 5 Accordingly, the Examiner’s 35 U.S.C. § 102 rejection of claims 1 and 3–8 is reversed. CONCLUSION The Examiner’s decision is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference/Basis Affirmed Reversed 1, 3−8 102(a)(1) Hough 1, 3−8 REVERSED