Schott AG

Patent Trials and Appeals Board

Nov 24, 2021

2021003134 (P.T.A.B. Nov. 24, 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.
13/968,044 08/15/2013 Dieter Goedeke AKL0045.US 4187
41863 7590 11/24/2021
TAYLOR IP, P.C.
P.O. Box 560
142. S Main Street
Avilla, IN 46710
EXAMINER
WEI, ZHONGQING
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
11/24/2021 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):
mbrady@taylorip.com
patent@taylorip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DIETER GOEDEKE and LINDA JOHANNA BACKNAES
____________

Appeal 2021-003134
Application 13/968,044
Technology Center 1700
____________

Before JENNIFER R. GUPTA, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, 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 finally reject claims 1–3, 5–10, 12, 13, and 15–38.
We have jurisdiction under 35 U.S.C. § 6(a).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Schott AG as the real party in
interest. Appeal Br. 3.
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The invention relates generally to “a glass and by association to a
glass composition, in particular a solder glass as well as to a feed-through
for a storage device, such as a lithium-ion battery, for example a lithium-ion
accumulator.” Spec. ¶ 2. Claim 1, reproduced from the Claims Appendix to
the Appeal Brief, illustrates the invention (formatting added):
1. A solder glass, the solder glass being for sealing at least
one of a metal, a metal alloy, or AlSiC and comprising the
following components in mole percent:

P2O5 35–50 mol-%;

Al2O3 4.2–14 mol-%;

B2O3 2–10 mol-%;

Na2O 15–30 mol-%;

M2O 12–20 mol-%, wherein M is one of
potassium, cesium and rubidium;

Li2O 0–42 mol-%;

BaO 0–20 mol-%; and

Bi2O3 1–10 mol-%,

wherein said glass has a coefficient of expansion α at a
temperature in a range of between 20° C and 300° C in a range
of between 14x10-6/K and 25x10-6/K.
Appeal Br. 36 (Claims App.).
Independent claim 24 recites a feed-through comprising the solder
glass composition that claim 1 recites. Independent claim 29 recites a device
comprising the feed-through that claim 24 recites.
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Appellant requests review of the following rejections from the
Examiner’s Final Office Action dated August 10, 2020:
I. claims 1, 2, 5, 6, 8–10, 12, 13, 15–23, and 36 rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Li (CN 101597136 A,
published December 9, 2009, and relying on an English Machine translation
dated September 14, 2018);

II. claims 1–3, 7, and 36 rejected under pre-AIA 35 U.S.C. §
103(a) as unpatentable over Zou (US 2005/0032621 A1, published February
10, 2005); and

III. claims 24–38 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lasater (US 2003/0134194 A1, published July 17, 2003)
and Li.
In addition, the Examiner maintains the following rejection from the
Examiner’s Final Office Action:
IV. Claims 1–3, 5–10, 12, 13, 15–22, and 24–33 provisionally
rejected on the ground of nonstatutory double patenting as unpatentable over
claims 1–26 of copending Application No. 15/899,137.2

For Rejections I and II, Appellant presents arguments only for claim 1
and relies on these arguments to address the rejection of the remaining
claims. See Appeal Br. 22, 23. For Rejection III, Appellant presents
arguments only for claim 24 and relies on these arguments to address the
rejection of claims 25–38. See Appeal Br. 26. Accordingly, we select
claims 1 and 24 as representative of the subject matter claimed and decide
the appeal as to the grounds presented in Rejections I–III based on the
arguments presented for claims 1 and 24. We address Rejection IV
separately.

2 We modified this rejection to reflect the cancellation of claims 4, 11, and
14 as provided in the Amendment dated June 19, 2020.
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OPINION
Rejection I (Claim 1)
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejection of claims 1, 2, 5, 6, 8–10, 12,
13, 15–23, and 36 under 35 U.S.C. § 103(a) for essentially the reasons the
Examiner presents. We add the following for emphasis.
Claim 1 recites a solder glass composition having a coefficient of
expansion α at a temperature in a range of between 20° C and 300° C in a
range of between 14x10-6/K and 25x10-6/K.
The Examiner finds Li teaches a solder glass composition comprising
the claimed components in amounts that overlap or encompass the claimed
ranges of amounts for those components. Final Act. 3; Li 4. The Examiner
reasons that, absent objective evidence to the contrary, one of ordinary skill
in the art would reasonably expect Li’s solder glass to possess the claimed
coefficient of expansion property. Final Act. 4. Therefore, the Examiner
finds that Li teaches a solder glass that is similar to the subject matter of
claim 1 and determines that a prima facie obviousness exists. Final Act. 3–
44.
Appellant argues Li, when read as a whole, teaches that the content of
the additives in the glass composition does not exceed 30 mol-% of the total
component content of this composition. Appeal Br. 12; Li 4. According to
Appellant, there is nothing in Li that suggests the 30 mol-% limit on
additives is optional or preferred when additives are included. Appeal Br.
12. Appellant further argues Li’s Tables 1 and 2 support that Li teaches
non-additive components to be at least 70% and the additive components to
be 30% or less. Appeal Br. 12–13.
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Appellant’s arguments are not persuasive of reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 19.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007); In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
See also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (holding that
a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom).
Appellant misapprehends the paragraph of Li’s disclosure relied upon
to assert that the 30 mol-% limit on additives is not optional or preferred.
By virtue of using the word “preferably” to open the paragraph, one skilled
in the art would have reasonably inferred that Li is discussing some
preferred embodiments. Given that the statement disclosing that the total
content of the additive components does not exceed 30 mol-% of the total
glass component content is associated with the discussion of these preferred
embodiments, one skilled in the art would have also reasonably inferred that
this feature is directed to those preferred embodiments. While Appellant
directs our attention to Li’s Tables 1 and 2 to assert that the reference
teaches additive components in exemplary glass compositions to be 30 mol-
% or less of the total glass composition, it is well settled that a reference
may be relied upon for all that it discloses and not merely the preferred
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embodiments. See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including
unpreferred embodiments, must be considered.”) (quoting In re Lamberti,
545 F.2d 747, 750 (CCPA 1976)); see also In re Fracalossi, 681 F.2d 792,
794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is
not limited to its examples). The disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971). Appellant fails to explain adequately why Li’s noted disclosure and
exemplary embodiments limit the broader disclosure of the reference.
Therefore, we decline to limit Li’s teachings and suggestions to Li’s
exemplary embodiments.
Appellant argues that Li’s disclosed glass compositions have a lower
coefficient of thermal expansion than what claim 1 recites. Appeal Br. 18.
According to Appellant, Li discloses glass compositions having a coefficient
of thermal expansion (CTE) between 65–130x10-7 °C. Appeal Br. 18; Li 4.
Appellant asserts that Li’s upper CTE limit of 130x x10-7 °C equates to
13x10-6/K, which is lower than the lower limit of 14x10-6/K for the claimed
CTE range. Appeal Br. 18. Thus, Appellant argues that Li fails to teach the
claimed solder glass because Li teaches a lower CTE for the disclosed glass
solder. Appeal Br. 18.
Appellant’s arguments do not identify error in the Examiner’s
determination of obviousness.
Appellant again misapprehends Li’s teaching, in this case with regard
to the disclosed CTE range. Li’s discussion of the disclosed CTE range is in
the context of specific exemplary embodiments. Li 9 (where the discussion
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of the CTE range is associated with specific examples). Li further discloses
that the properties of the glass composition can be modified by adjusting the
ratio of composition components and the softening temperature. Li 9. Thus,
given these disclosures, one skilled in the art would have reasonably inferred
that Li is discussing some non-limiting preferred embodiments resulting in
preferred CTE properties. Appellant fails to explain adequately why Li’s
noted disclosure and exemplary embodiments limit the broader disclosure of
the reference. We again decline to limit Li’s teachings and suggestions to
Li’s exemplary embodiments. See Merck, 874 F.2d at 807; see also
Fracalossi, 681 F.2d at 794; Susi, 440 F.2d at 443.
Appellant contends that the Examiner errs in stating that Li’s CTEs
cannot be compared with the claimed CTEs because Li does not disclose a
temperature range under which the CTE(s) are measured, whereas the claims
recite a temperature range of from 20 °C to 300 °C for the disclosed range of
CTEs. Appeal Br. 19; Ans. 21–22. According to Appellant, the claimed
coefficient of expansion is in a range of temperatures that includes room
temperature, which many standards define as the temperature for a
laboratory setting. Appeal Br. 19. Appellant contends that if the CTE of
Li’s disclosed glasses were measured in a laboratory kept at standard room
temperature, Li’s disclosed glass would have a CTE of up to 13x10-6 at a
minimum temperature of 20 °C or 25 °C.
Appellant’s arguments are unavailing because Appellant openly states
that the basis for the arguments is an assumption with no objective evidence
supporting the arguments. Appeal Br. 19 (“Assuming that the CTE of Li’s
disclosed glasses were measured in a laboratory kept at standard room
temperature. . .”). Thus, Appellant’s stated contentions are merely
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attorney’s arguments that cannot take the place of evidence. See In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315
(CCPA 1979).
We have considered Appellant’s arguments with respect Li as only
teaching a subgenus that incorporates no more than 30 mol-% of “additive
components” and that Li teaches away from the claimed invention. Appeal
Br. 20–22. However, the underlining basis for these arguments is Appellant
contention that Li requires the total additives amount to be no more than 30
mol-% of the total glass composition. Id. As we discuss above, Appellant’s
contention is unsupported by the record. Therefore, these arguments fail to
identify error in the Examiner’s determination of obviousness for the reason
the Examiner presents (Ans. 7, 12) and we give above.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
2, 5, 6, 8–10, 12, 13, 15–23, and 36 under 35 U.S.C. § 103(a) for the reasons
the Examiner presents and we give above.
Rejection II (Claim 1)
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejection of claims 1–3, 7, and 36 under
35 U.S.C. § 103(a) for essentially the reasons the Examiner presents. We
add the following for emphasis.
Claim 1 recites a solder glass composition having a coefficient of
expansion α at a temperature in a range of between 20° C and 300° C in a
range of between 14x10-6/K and 25x10-6/K.
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The Examiner finds Zou teaches a glass composition comprising the
claimed components in amounts that overlap or encompass the claimed
ranges of amounts for those components. Final Act. 8; Zou ¶ 6. The
Examiner explains that, even if Zou’s glass is related to an optical glass or
element, one skilled in the art would readily appreciate that it can be used as
a solder glass because the composition of Li’s glass is the same as claimed.
Appeal Br. 9. The Examiner reasons that, absent objective evidence to the
contrary, one of ordinary skill in the art would reasonably expect Li’s solder
glass to possess the claimed coefficient of expansion property. Appeal Br.
9–10. Thus, the Examiner determines that a prima facie obviousness exists.
Appeal Br. 8.
Appellant argues Zou is directed generally to an optical glass that is
designed with significantly different criteria compared to solder glasses.
Appeal Br. 23. According to Appellant, one skilled in the art would not
have arrived at the claimed invention from Zou’s teachings because Zou’s
optical glass is formulated with different properties than those needed for
solder glass. Appeal Br. 24. Thus, Appellant asserts one skilled in the art
would not believe that the optical glass of Zou is suitable as a solder glass
because there is no indication that the glass of Zou can seal a metal, a metal
alloy, and/or AlSiC as claimed because the material properties for optical
and soldering applications are completely different. Appeal Br. 24.
Appellant’s arguments do not persuade us of reversible error by the
Examiner.
Appellant does not dispute adequately that Zou teaches a composition
similar or substantially similar to the claimed invention. See generally
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Appeal Br. Instead, Appellant asserts that Zou’s glass material will have
properties that are not suitable for a glass solder material. Appeal Br. 24.
However, “[p]roducts of identical composition cannot have mutually
exclusive properties.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
It is also well settled that when the claimed and prior art products are
identical or substantially identical in structure or composition, the burden of
proof is on the applicants to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here,
the claimed and prior art products are identical or substantially identical, . . .
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.”).
The Examiner has provided a basis for one skilled in the art to
reasonably expect that the claimed composition and the prior art
composition are the same or substantially the same. Thus, the burden is
properly shifted to Appellant to prove that the prior art product does not
inherently or necessarily possess the characteristics attributed to the claimed
product. Appellant does not direct us to any objective evidence that shows
the properties of the claimed are not possessed by prior art composition.
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1–
3, 7, and 36 under 35 U.S.C. § 103(a) for the reasons the Examiner presents
and we give above.
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Rejection III (Claim 24)
After review of the respective positions of Appellant and the
Examiner, we affirm the Examiner’s rejections of claims 24–38 under 35
U.S.C. § 103(a) for essentially the reasons the Examiner presents. We add
the following for emphasis.
Claim 24 recites a feed-through comprising the solder glass
composition that claim 1 recites.
The Examiner finds Lasater teaches a feed-through that differs from
the claimed invention in that Lasater does not teach the use of a lead free
solder glass material. Final Act. 10; Lasater Abstr., Figure 1, ¶¶ 15, 17.
Appellant does not dispute the Examiner’s specific findings with respect to
Lasater. Appeal Br. 27; Final Act. 10. Instead, in addressing this reference,
Appellant asserts that Lasater only teaches modifying the disclosed glass
material by providing up to 50 mol percent MgO, as disclosed by U.S. Pat
Nos. 5,965,469 and 6,037,539. Appeal Br. 27; Lasater ¶ 26.
The Examiner turns to Li for the missing feature. The Examiner finds
Li teaches a lead free sealing glass material comprising the claimed
components in amounts that overlap or lie inside the claimed ranges of
amounts for the respective components. Final Act. 10–11; Li 4, 5, 10, 11,
claims 1 and 2. The Examiner further finds Li teaches using the disclosed
glass material as a sealing glass for a glass-to-metal seal. Final Act. 10–11;
Li 2–3. The Examiner reasons that, absent objective evidence to the
contrary, one of ordinary skill in the art would reasonably expect Li’s solder
glass to possess the claimed coefficient of expansion property. Final Act.
11. With respect to the claimed glass material, the Examiner determines that
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a prima facie case of obviousness exists for the composition in view Li’s
disclosed material. Final Act. 11. The Examiner further determines that it
would have been obvious to one of ordinary skill in the art to substitute
Lasater’s glass sealing material with Li’s glass material for the benefit of
achieving a lead-free glass-to-metal seal, as taught by Li. Final Act. 11; Li
3.
To the extent that Appellant relies on a line of arguments for this
rejection that is similar to the line of arguments presented for Rejection I
above, we find these arguments unpersuasive of reversible error in the
Examiners’ termination of obviousness for the reasons the Examiner
presents and we give in our prior discussion of Rejection I. Appeal Br. 28;
Ans. 26. We therefore focus our attention on the additional arguments
Appellant presents for this rejection.
Appellant argues Li describes a glass for use in low-temperature
packaging among different electronic components and does not teach the
disclosed glass is chemically stable against lithium-ion battery chemistry.
Appeal Br. 29. Appellant further argues the Examiner has not shown that
one skilled in the art would have reasonably believed the glass taught by Li
to be suitable for use in the feed-through of Lasater. Appeal Br. 29–33.
Appellant’s arguments do not point to reversible error in the
Examiner’s determination of obviousness for the reasons the Examiner
presents. Ans. 26–30.
Moreover, both Appellant and Lasater are concerned with using a
sealing material that seals at a temperature below the melting point of feed-
throughs made from high thermal expansion materials such as aluminum
(melting temperature of more than 550 oC). Spec. ¶¶ 7, 21; Lasater Abstr.,
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¶ 8. As Appellant recognizes, Li teaches a glass seal that seals at 420–
470 oC. Appeal Br. 14; Li 4. In addition, as the Examiner finds, Li discloses
using the glass sealing material “to seal the connection between the glass
components and the metal.” Ans. 29; Li 2–3. Further, Li expects the
temperature of this sealing material to be as low as possible to avoid
damaging the electrical components or electronics (utensils). Li 3.
In view of the above disclosures, there is a reasonable basis for one
skilled in the art to have modified Lasater’s feed-through by replacing
Lasater’s glass sealing material with Li’s sealing material and reasonably
expect that Li’s material would be suitable for Lasater’s purposes. In re
O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988) (“For obviousness under
§ 103, all that is required is a reasonable expectation of success.”); see also
KSR, 550 U.S. at 417 (explaining that patentable subject matter must
“involve more than the simple substitution of one known element for another
or the mere application of a known technique to a piece of prior art ready for
the improvement”). Thus, Appellant fails to explain why one skilled in the
art, using no more than ordinary creativity, would not have been capable of
arriving at the claimed invention from the teachings of the cited art. See
KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in
the art).
Arguments not specifically addressed are deemed not persuasive for
the reasons the Examiner presents.
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Accordingly, we affirm the Examiner’s prior art rejection of claims
24–38 under 35 U.S.C. § 103(a) for the reasons the Examiner presents and
we give above.
Rejection IV
Appellant does not present arguments for Rejections IV in the Appeal
or Reply Briefs.
Accordingly, we summarily sustain this rejection. See Manual of
Patent Examining Procedure (MPEP) § 1205.02 (2017) (“If a ground of
rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it.”); see also Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential) (“If an appellant fails to present arguments on a
particular issue—or more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection.”).

CONCLUSION
The Examiner’s prior art Rejections I–III are affirmed.
The Examiner’s uncontested Rejection IV is summarily affirmed.

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DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6,
8–10, 12,
13, 15–23,
36
103 Li 1, 2, 5, 6,
8–10, 12,
13, 15–23,
36

1–3, 7, 36 103 Zou 1–3, 7, 36
24–38 103 Lasater, Li 24–28
1–3, 5–10,
12, 13,
15–22,
24–33
Provisional
Obviousness-type
Double Patenting
1–3, 5–10,
12, 13,
15–22,
24–33

Overall
Outcome
1–3, 5–10,
12, 13,
15–38

TIME PERIOD FOR RESPONSE
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