SCHOTT AG

Patent Trials and Appeals BoardDec 9, 2019

14956138 - (D) (P.T.A.B. Dec. 9, 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. 14/956,138 12/01/2015 Matthias JOTZ 2133.296USU 5248 27623 7590 12/09/2019 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 EXAMINER FRANKLIN, JODI COHEN ART UNIT PAPER NUMBER 1741 MAIL DATE DELIVERY MODE 12/09/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHIAS JOTZ, ANDREAS HABECK, and ANDREAS NICKUT ____________ Appeal 2019-003227 Application 14/956,138 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and MONTÉ T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–20, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Dec. 1, 2015 (“Spec.”); Final Office Action dated Apr. 20, 2018 (“Final Act.”); Advisory Action dated July 25, 2018 (“Advisory Act. “); Appeal Brief filed Oct. 22, 2018 (“Appeal Br.”); Examiner’s Answer dated Jan. 16, 2019 (“Ans.”); and Reply Brief filed Mar. 15, 2019 (“Reply Brief”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Schott AG as the real party in interest. Appeal Br. 1. Appeal 2019-003227 Application 14/956,138 2 CLAIMED SUBJECT MATTER Appellant’s disclosure relates to a method for separating thin glass into small thin glass plates or for trimming borders or edges of glass films, glass ribbons, glass plates, or glass sheets, and to thin glass plates equipped with structures produced by such method. Spec. ¶ 2; Abstract. Claim 1 illustrates the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief: 1. A method for processing thin glass, comprising the steps of: providing thin glass having a flat surface and in a form selected from the group consisting of a sheet, plate, ribbon, and film; scoring a side of the flat surface using a mechanical scoring tool to produce one or more scorings that delimit the thin glass into a plurality of thin glass plates and/ or delimit one or more edges of the thin glass; applying a blasting liquid to form a moisture film on the side of the thin glass, the blasting liquid wetting the thin glass and being drawn into the one or more scorings by capillary action thereby wetting scorings; and heating the side of the thin glass having the scorings until the moisture film evaporates at least partially within the scorings, the evaporating of the moisture film within the scorings having a blasting effect so as to cleave the thin glass at the scorings and forming fresh break edges. Appeal Br. 12 (Claims Appendix) (key disputed claim language italicized and bolded). Appeal 2019-003227 Application 14/956,138 3 REFERENCES The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Name Reference Date Wesel et al. (“Wesel”) US 3,406,886 Oct. 22, 1968 Kang et al. (“Kang”) US 2003/0201261 A1 Oct. 30, 2003 Chen et al. (“Chen”) US 6,866,887 B1 Mar. 15, 2005 Luettgens et al. (“Luettgens”) US 7,104,431 B2 Sept. 12, 2006 Hoetzel et al. (“Hoetzel”) US 2006/0266195 A1 Nov. 30, 2006 REJECTIONS On appeal, the Examiner maintains (Ans. 3) the following rejections: 1. Claims 1–3, 5, 6, 8–11, and 13–18 are rejected under 35 U.S.C. § 103 as being unpatentable over Kang in view of Hoetzel (“Rejection 1”). Ans. 4. 2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over Kang and Hoetzel as applied to claim 1 above and further in view of Wesel (“Rejection 2”). Id. at 5. 3. Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Kang and Hoetzel as applied to claim 1 above and further in view of, and as evidenced by, Chen (“Rejection 3”). Id. 4. Claims 7 and 17–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Kang and Hoetzel as applied to claim 1 above and further in view of Luettgens (“Rejection 4”). Id. at 6. OPINION Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we affirm the Examiner’s Appeal 2019-003227 Application 14/956,138 4 rejections based on the fact-finding and reasoning set forth in the Answer, Final Office Action, and Advisory Action, which we adopt as our own. We add the following primarily for emphasis. Rejection 1 The Examiner rejects claims 1–3, 5, 6, 8–11, and 13–18 under § 103 as obvious over the combination of Kang and Hoetzel (Ans. 4–5). In response, Appellant presents argument for the patentability of independent claims 1 and 15, respectively, but does not present argument for the separate patentability of the remaining dependent claims subject to the Examiner’s rejection. Appeal Br. 3, 7, 8–11. We select claims 1 and 15 as representative, which we address in turn below, and the remaining claims subject to the Examiner’s rejection stand or fall with claims 1 and 15. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 The Examiner determines that the combination of Kang and Hoetzel suggests a method of processing thin glass satisfying all of the steps of claim 1 and concludes the combination would have rendered the claim obvious. Ans. 4 (citing Kang ¶¶ 36, 37, 45–49; Hoetzel ¶ 27). Appellant argues that the Examiner’s rejection of claim 1 should be reversed because Kang does not disclose or suggest the “heating the side of the thin glass having the scorings until the moisture film evaporates at least partially within the scorings” and “having a blasting effect so as to cleave the thin glass at the scorings” recitations of the claim. Appeal Br. 3–6; Reply Br. 1–4. In particular, relying on Figure 11 of Kang, Appellant contends that because the glass 11 is already completely cut when the coolant removing Appeal 2019-003227 Application 14/956,138 5 means 14’ heats any liquid coolant remaining on the glass, there are no scorings in the glass 11 to be cut, and thus, there is no heating of “the side of the thin glass having the scorings,” as recited in the claim. Appeal Br. 4. Appellant further contends that although the cutting and the coolant removal by reheating steps of Kang may occur at the same time, they do not occur at the same location of glass 11. Id. at 4. Appellant also contends that because the glass 11 has already been completely cut before means 14’ reheats the liquid coolant, the reheating cannot “cleave the thin glass at the scorings,” as required by the claim. Id. at 4–5. Relying on the testimony of Dr. Andreas Habeck,3 Appellant argues Kang does not disclose or suggest that the means 14’ cuts the glass 11 or is capable of providing the “blasting effect” of claim 1. Appeal Br. 5. Rather, Appellant contends Kang discloses a thermal shock method/process for dividing the glass, which differs from the claimed method’s “blasting effect” to cleave the thin glass. Id. at 5–6. Lastly, Appellant argues the Examiner’s rejection should be reversed because the proposed modification of Kang in view of Hoetzel would render Kang unsuitable for its intended purpose and would change its principle of operation. Appeal Br. 7. Appellant contends that because the mechanical scoring tool of Hoetzel does not provide heat to the scoring, the proposed modification would result in the coolant spray not creating thermal shock 3 Appellant refers and cites to the Declaration of Dr. Andreas Habeck under 37 C.F.R. § 1.132, dated Nov. 12, 2017 (“1st Habeck Affidavit”) and the Second Affidavit of Dr. Andreas Habeck under 37 C.F.R. § 1.132, dated June 15, 2018 (“2nd Habeck Affidavit”), which are provided in the Evidence Appendix to the Appeal Brief. Appeal 2019-003227 Application 14/956,138 6 that cuts the glass, and would therefore completely change the principle of operation of Kang. Id. at 7. We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection. Rather, on the record before us, we find a preponderance of the evidence and sound technical reasoning support the Examiner’s findings and determination that the combination of Kang and Hoetzel suggests a method satisfying all of the steps of claim 1, and conclusion that the combination would have rendered the claimed method obvious. Kang ¶¶ 36, 37, 45–49; Hoetzel ¶ 27. Contrary to what Appellant argues, a preponderance of the evidence does support the Examiner’s finding that Kang teaches or suggests the “heating the side of the thin glass having the scorings until the moisture film evaporates at least partially within the scorings” and “having a blasting effect so as to cleave the thin glass at the scorings” recitations of the claim. As the Examiner finds (Ans. 7) and correctly points out, Kang does not require that the glass 11 is already completely cut before or upon application of the coolant. Rather, as the Examiner finds (Ans. 7), Kang discloses a subsequent heating step occurring after application of the coolant to completely cut the glass. Kang ¶ 36 (disclosing “a second cutting beam generating unit 15 for irradiating a secondary laser beam onto the cooled glass 11 to completely cut the glass 11”). Thus, as the Examiner explains (Ans. 7), because Kang discloses that the glass 11 is not necessarily completely cut, it follows that any partial or incomplete cutting of the glass would still be considered a score line or scorings in the glass, and fall within the scope of the “thin glass having the scorings” recitation of the claim. Appeal 2019-003227 Application 14/956,138 7 Appellant’s arguments do not reveal reversible error in the Examiner’s factual findings or analysis in this regard. Appellant’s reliance on a line in Figure 11 of Kang to show that the glass 11 is already completely cut prior to vaporization of the liquid coolant is misplaced because, as the Examiner finds (Ans. 7–8), the line is not clearly labeled as such in Figure 11, and there is no clear indication in Figure 11 or elsewhere in Kang’s specification as to whether the line depicts a score, scratch, or partial cut or specifying what exactly the line is intended to reflect. Appellant also does not identify or direct us to evidence sufficient to establish that the line depicted in Figure 11 represents a complete cut or otherwise definitively shows that glass 11 is already completely cut prior to vaporization of the liquid coolant. Moreover, contrary to what Appellant’s argument seems to suggest, Kang’s disclosure is not limited to the embodiment described or depicted in Figure 11. See In re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure of specific working examples.”); see also In re Susi, 440 F.2d 442, 445-46 (CCPA 1971) (holding disclosure of a particular preferred embodiment does not teach away from a prior art reference’s broader disclosure). Rather, as the Examiner finds (Ans. 7) and previously discussed above, paragraph 36 of Kang suggests the glass 11 is not already completely cut before means 14’ reheats the liquid coolant and explicitly discloses the use of a second cutting beam generating unit 15 for irradiating a secondary beam onto the glass 11 to completely cut the glass. Appellant’s contentions that the cutting of the glass 11 and the coolant removal by reheating steps of Kang do not occur at the same location of the glass 11 and the reheating cannot “cleave the thin glass at the scorings” Appeal 2019-003227 Application 14/956,138 8 (Appeal Br. 4–5) are not persuasive because they are conclusory and unsupported by persuasive evidence in the record. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that mere lawyer’s arguments or conclusory statements, which are unsupported by concrete factual evidence, are entitled to little probative value). On the contrary, as the Examiner finds (Ans. 7), Kang explicitly discloses that the coolant removing means 14’ may, in fact, be arranged “to heat the liquid coolant left on the surface of the glass 11, thereby vaporizing the left liquid coolant simultaneously with the execution of the primary cutting process for the glass 11.” Kang ¶ 47. See also Kang ¶ 36 (disclosing use of “a coolant sprayer 14 for spraying a coolant onto the glass 11 to cut the heated glass”). Moreover, there is no indication or suggestion based on Kang’s disclosure in this regard that the cutting of the glass 11 and the coolant removal steps of Kang occur at different locations of the glass 11, as Appellant argues. Appellant also does not identify or direct us to any portion of Kang which discloses that the cutting of the glass 11 and the coolant removal by reheating do not occur at the same location of the cut/scored glass. Geisler, 116 F.3d at 1470. Thus, on the record before us, we find a preponderance of the evidence supports the Examiner’s finding (Ans. 4, 7–8) that Kang suggests a liquid coolant vaporization process, which results in the glass 11 being cut at the scorings and falls within the scope of the “so as to cleave the thin glass at the scorings” recitation of the claim. Appellant’s contentions regarding the Habeck Affidavits and that Kang does not disclose or suggest the “blasting effect” of claim 1 (Appeal Appeal 2019-003227 Application 14/956,138 9 Br. 5–6; Reply Br. 1–3) are entitled to little weight because they too are largely conclusory and unsupported by persuasive evidence in the record. De Blauwe, 736 F.2d at 705. The portions of the Habeck Affidavits upon which Appellant relies (see 1st Habeck Affidavit ¶ 7; 2nd Habeck Affidavit ¶¶ 6–8) lack adequate factual support and neither Appellant nor Dr. Habeck identify or direct us to persuasive evidence to support the opinion testimony. See, e.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations ... may render the testimony of little probative value in a validity determination.”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the lack of factual corroboration warrants discounting the opinions expressed in the declarations.”) (citations omitted). For example, although Dr. Habeck characterizes Kang’s method as a “thermal shock process” (2nd Habeck Affidavit ¶ 6; Appeal Br. 5), Dr. Habeck does not address Kang’s disclosures at paragraph 36 and 47, which disclose heating and vaporizing the liquid coolant left on the surface of the glass resulting in the glass 11 being cut at the scorings in the manner claimed, or adequately explain why Kang’s disclosure in this regard does not fall within the scope of the “blasting effect” as recited in the claim. Cf. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Appeal 2019-003227 Application 14/956,138 10 Rather, as the Examiner finds and explains (Ans. 8), Kang discloses the evaporation of a liquid in a scratch or score line yielding a cut in the glass (Kang ¶¶ 36, 45–49), which corresponds to the “blasting effect” as recited in the claim, and is consistent with the evaporation of the liquid in the scorings of the glass as described in both Appellant’s Specification (Spec. ¶¶ 8, 10, 15) and the Habeck Affidavits (1st Habeck Affidavit ¶ 8; 2nd Habeck Affidavit ¶ 7). Appellant’s argument that the proposed modification of Kang in view of Hoetzel would render Kang unsuitable for its intended purpose and would change its principle of operation (Appeal Br. 7) is not persuasive because it is conclusory and Appellant does not provide an adequate technical explanation to support it. De Blauwe, 736 F.2d at 705. Absent more, it is not evident how substituting Kang’s laser scoring unit 12 with a mechanical scoring tool for scoring the glass would render Kang unsuitable for its intended purpose or change its principle of operation, especially since, as the Examiner finds (Ans. 4, 8) and Appellant does not refute, Hoetzel suggests a diamond cutter as an alternative method of laser scribing/scoring (Hoetzel ¶ 27). As the Examiner correctly points out (Ans. 8), the mere substitution of one equivalent for another known in the art is likely to be obvious when it does no more than yield predictable results. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Appeal 2019-003227 Application 14/956,138 11 Claim 15 Claim 15 includes language similar to claim 1 and recites a method for processing thin glass, comprising the steps of: providing thin glass having a flat surface and in a form selected from the group consisting of a sheet, plate, ribbon, and film; scoring a side of the flat surface using a mechanical scoring tool to produce one or more scorings that delimit the thin glass into a plurality of thin glass plates and/ or delimit one or more edges of the thin glass; wetting the one or more scorings with alcohol, the alcohol being drawn into the one or more scorings as a result of capillary action; and locally heating the side of the thin glass having the one or more scorings so that the thin glass remains below a transition temperature of the glass and so that the alcohol evaporates in a manner that provides disruptive power in the scorings sufficient to divide the thin glass sheet along the scorings. Appeal Br. 13–14 (Claims Appendix) (key disputed claim language italicized and bolded). Appellant argues the Examiner’s rejection of claim 15 should be reversed for principally the same reasons previously presented and discussed above in response to the Examiner’s rejection of claim 1. See Appeal Br. 9 (arguing “the glass 11 is already cut by the primary cutting process when the coolant removing means 14’ heats any liquid coolant left on the glass” and “these two processes are occurring at different locations of glass 11”); see also id. at 10 (arguing “the proposed modification of Kang in view of Hoetzel would render Kang unsuitable for its intended purpose and would change its principle of operation”). Appeal 2019-003227 Application 14/956,138 12 We do not find Appellant’s arguments persuasive of reversible error in the Examiner’s rejection, based on the findings and reasoning provided by the Examiner, and for principally the same reasons discussed above for affirming the Examiner’s rejection of claim 1. Appellant’s assertion that “Kang fails to disclose or suggest that the additional beam generating unit 14’cuts the glass or is capable of providing the ‘disruptive power in the scorings’ of claim 15” (Appeal Br. 10) is not persuasive of reversible error in the Examiner’s rejection because it is conclusory and unsupported by persuasive evidence in the record. De Blauwe, 736 F.2d at 705. Moreover, the Appellant asserts that “the Office Action has failed to provide any evidence that contradicts or offers an alternate theory sufficient to sustain the rejections in view of the Habeck Affidavits” (id. at 10). For the reasons stated above, the weight of the evidence, which includes the Habeck Affidavits, weighs in favor of the Examiner’s conclusion of obviousness. Therefore, it was not necessary for the Examiner to present additional evidence or an alternate theory to support the rejection on appeal. Accordingly, we affirm the Examiner’s rejection of claims 1–3, 5, 6, 8–11, and 13–18 under 35 U.S.C. § 103 as obvious over the combination of Kang and Hoetzel. Rejections 2, 3, and 4 In response to the Examiner’s § 103 rejections of claim 4 as obvious over the combination of Kang, Hoetzel, and Wesel (Ans. 5) (Rejection 2); claim 12 as obvious of the combination of Kang, Hoetzel, and Chen (Ans. 5) (Rejection 3); and claims 7 and 17–20 as obvious over the combination of Appeal 2019-003227 Application 14/956,138 13 Kang, Hoetzel, and Luettgens (Ans. 6) (Rejection 4), Appellant does not present any new or additional substantive arguments. Rather, Appellant relies on the same arguments previously presented above in response to the Examiner’s rejections of claims 1 and 15 as obvious over the combination of Kang and Hoetzel. See Appeal Br. 3 (arguing “Claims 1-14 stand or fall together”), 7 (same); see also id. at 8 (arguing “Claims 15-20 stand or fall together”), 10 (same). Appellant’s assertions that “claim 1 and the claims that depend therefrom are patentable over the proposed combination of cited art” (Appeal Br. 7) and “claim 15 and the claims that depend therefrom are patentable over the proposed combination of cited art” (id. at 10, 11), without more, are not persuasive of reversible error in the Examiner’s rejections because they are conclusory. De Blauwe, 736 F.2d at 705. Thus, based on the fact-finding and reasoning provided by the Examiner at pages 4–9 of the Answer, and for principally the same reasons discussed above for affirming the Examiner’s rejection of claims 1 and 15 under 35 U.S.C. § 103 as obvious over the combination of Kang and Hoetzel, we affirm the Examiner’s § 103 rejections of claim 4 as obvious over the combination of Kang, Hoetzel, and Wessel; claim 12 as obvious over the combination of Kang, Hoetzel, and Chen; and claims 7 and 17–20 as obvious over the combination of Kang, Hoetzel, and Luettgens. Appeal 2019-003227 Application 14/956,138 14 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 6, 8–11, 13–18 103 Kang, Hoetzel 1–3, 5, 6, 8–11, 13–18 4 103 Kang, Hoetzel, Wesel 4 12 103 Kang, Hoetzel, Chen 12 7, 17–20 103 Kang, Hoetzel, Luettgens 7, 17–20 Overall Outcome 1–20 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). AFFIRMED