SAINT-GOBAIN GLASS FRANCE

Patent Trials and Appeals BoardAug 3, 2020

2019006048 (P.T.A.B. Aug. 3, 2020)

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. 15/316,284 12/05/2016 Andriy KHARCHENKO 479396US 1097 22850 7590 08/03/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER WIECZOREK, MICHAEL P ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 08/03/2020 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRIY KHARCHENKO, BERNARD NGHIEM, NICOLAS NADAUD, LORENZO CANOVA, and ARNAUD HUIGNARD Appeal 2019–006048 Application 15/316,284 Technology Center 1700 BEFORE BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and JANE E. INGLESE, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 9, 10, 12–15 and 17. 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 party in interest as Saint-Gobain Glass France. Appeal Br. 2. Appeal 2019-006048 Application 15/316,284 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. A process for obtaining a material comprising a substrate coated on at least one part of at least one of its faces with at least one functional layer, said process comprising: depositing the at least one functional layer; then depositing a sacrificial layer on the at least one functional layer; then heat treating the at least one functional layer and the sacrificial layer with radiation, which is laser radiation or radiation from at least one flash km1p, the radiation having at least one treatment wavelength between 200 and 2500 nm, the sacrificial layer being 1n contact with the air during the beat treating; and then removing the sacrificial layer by contacting with a solvent, thereby obtaining the substrate coated on at least one part of at least one of its faces with the at least one functional layer, wherein the sacrificial layer is a monolayer that, before heat treatn1ent, is capable of absorbing at least one part of the radiation at said at least one treatment wavelength, and wherein the sacrificial layer is capable of being removed after heat treatment by dissolution and/or dispersion 1n the solvent. Appeal Br. (Claims Appendix i). REFERENCES The prior art relied upon by the Examiner is: Appeal 2019-006048 Application 15/316,284 3 Name Reference Date Murphy et al. (Murphy) US 8,221,832 B2 July 17, 2012 Kharchenko US 2013/0115468 Al May 9, 2013 Bilaine et al. (Bilaine) US 9,580,807 B2 Feb. 28, 2017 REJECTIONS 1. Claims 1–4, 9, 10, 12–14 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Kharchenko in view of Murphy. 2. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Kharchenko in view of Murphy as applied to claim 1 above, and further in view of Bilaine. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). Upon review 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. Accordingly, we reverse each of the Examiner’s rejections on appeal essentially for the reasons set forth by Appellant, and add the following for emphasis. Appeal 2019-006048 Application 15/316,284 4 The Examiner’s rationale for combining Kharchenko in view of Murphy relies in part upon the theory of inherency for the property of the sacrificial protective layer of Murphy being capable of absorbing at one part of the claimed radiation wavelength range. Final Act. 5. The Examiner states Appellant’s claim 10 teaches that a layer of zinc oxide or magnesium oxide absorbs radiation at the claimed wavelength range, and based upon this, concludes that the layer in Murphy inherently absorbs radiation at the claimed wavelength. Final Act. 5. We agree with Appellant that such reliance upon the teachings of Appellant’s own Specification is improper. Appeal Br. 22. Reconstruction of the invention from the prior art is proper when the factfinder takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure. In re McLaughlin, 443 F.2d 1392 (CCPA 1971)). In addition, Appellant’s point made on pages 15–16 of the Appeal Brief that Murphy has nothing to do with heat treating permanent layers on a substrate with radiation, but instead heat treatment processes that involve heating the entire substrate to a high temperature, is well- taken. We thus agree with Appellant that absent any disclosure in Murphy that the sacrificial layer of Zn/ZnO is heat-treatable with laser radiation, a person of ordinary skill in the art would not have been motivated to modify and replace Kharchenko’s temporary coating for use with laser radiation (i.e., Kharchenko’s titanium, carbon, or niobium nitride) with Murphy’s Zn/ZnO sacrificial Appeal 2019-006048 Application 15/316,284 5 protective layer. Appeal Br. 16. On this record, the Examiner’s proposed modification of Kharchenko appears to be premised on an impermissible use of hindsight after review of Appellants’ disclosure rather than on a supported reason to modify Kharchenko available to an ordinarily skilled artisan and consistent with the teachings thereof. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning”; citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). Furthermore, as Appellant points out in the paragraph bridging pages 22–23 of the Appeal Brief, the Examiner’s reliance upon the inherency theory in an obviousness rejection is improper under the facts of the instant case. The secondary reference of Murphy does not recognize the property of the sacrificial protective layer of Murphy being able to absorb at one part of the claimed radiation wavelength range, so there is no teaching in Murphy to use the sacrificial protective layer as such an absorbing layer for such a purpose in Kharchenko. “That which may be inherent is not necessarily known. Obviousness cannot be predicated on what is unknown.” In re Spormann, 363 F.2d 444, 448 (C.C.P.A. 1966); see also Par Pharmaceutical, Inc. v. TWI Pharmaceuticals, 773 F.3d 1186, (Fed. Cir. 2014). In view of the above, we reverse each rejection. Appeal 2019-006048 Application 15/316,284 6 CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Reversed Affirmed 1–4, 9, 10, 12–14, 17 103 Kharchenko, Murphy 1–4, 9, 10, 12–14, 17 15 103 Kharchenko, Murphy, Bilaine 15 Overall Outcome 1–4, 9, 10, 12–15, 17 REVERSED