Schott AG

Patent Trials and Appeals Board

Jan 11, 2022

2021000923 (P.T.A.B. Jan. 11, 2022)

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. 15/283,933 10/03/2016 Clemens Ottermann AKL0066.US 2664 41863 7590 01/11/2022 TAYLOR IP, P.C. P.O. Box 560 142. S Main Street Avilla, IN 46710 EXAMINER BOLDEN, ELIZABETH A ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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 CLEMENS OTTERMANN, KURT NATTERMANN, MARCUS HEIß-CHOQUET, JÜRGEN VOGT, THOMAS ROßMEIER, and ANDREAS HABECK ____________ Appeal 2021-000923 Application 15/283,933 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s non-final rejection of claims 1-4 and 6.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies Schott AG as the real party in interest. Appeal Brief filed June 2, 2020 (“Appeal Br.”), 3. 2 Claims 7-22 have been withdrawn from consideration. Non-Final Office Action entered January 2, 2020 (“Non-Final Act.”), 1. Appeal 2021-000923 Application 15/283,933 2 CLAIMED SUBJECT MATTER The Appellant claims a long-term bendable glass material. Appeal Br. 7-8. Claim 1, the sole pending independent claim, illustrates the subject matter on appeal, and reads as follows: 1. A long-term bendable glass material, comprising: a glass material with a thickness of at least 3 μm and less than 500 μm having a bending radius in a range of 1 mm to 107 mm, said glass material being structured such that a number of breaks N of the glass material with a bending radius developing over a course of time after a storage period of at least one day displays a remaining probability of breaking of ϕ(σ) = 1 - exp{- (L/L0) · (σ/σ0)m) for a storage time period of a maximum of half a year that is less than 0.1 and σ0 is a characteristic breaking stress for a sample with a length L0 and m is a Weibull modulus measured by a destructive test and L is a sample length under the breaking stress σ, the glass material having a crack depth less than a critical crack depth ac defined by ac = ((K1c · R)/(E · d))2 , wherein K1c is a fracture toughness, R is the bending radius, E is an elasticity radius and d is the thickness of the glass material, wherein said glass material comprises the following components in weight %: SiO2 40-75; Al2O3 1-25; B2O3 0-16; alkaline earth oxide 1-30; and alkali oxide 0-20. Appeal Br. 17 (Claims Appendix) (emphasis and spacing added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered September 18, 2020 (“Ans.”): Appeal 2021-000923 Application 15/283,933 3 I. Claims 1-4 and 6 under 35 U.S.C. § 103 as unpatentable over Tomamoto, et al., US 2011/0200812 A1, published August 18, 2011 (“Tomamoto”) in view of Glass Technology, Northwest Institute of Light Industry, 89-92, August 2007 (“Northwest Institute”); and II. Claims 1-4 and 6 under 35 U.S.C. § 103 as unpatentable over Tomamoto in view of Taniguchi, et al., US 2011/0240499 A1, published October 6, 2011 (“Taniguchi”). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we affirm the Examiner’s rejections of claims 1-4 and 6 under 35 U.S.C. § 103 for reasons set forth in the Non- Final Action, the Answer, and below. We review the appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv); 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) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). The Appellant argues against the Examiner’s two rejections of claims 1-4 and 6 under 35 U.S.C. § 103 together, and in so doing, presents arguments directed to claim 1 only. Appeal Br. 10-15. We, therefore, also address the two rejections under 35 U.S.C. § 103 together, and limit our discussion to claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 requires the recited long-term bendable glass material to Appeal 2021-000923 Application 15/283,933 4 comprise a glass material having a thickness and bending radius within respective recited ranges, and to comprise recited components in amounts within recited ranges. Claim 1 further requires the glass material to have a crack depth less than a critical crack depth defined by a recited formula, and requires the glass material to be “structured such that a number of breaks N of the glass material with a bending radius developing over a course of time after a storage period of at least one day displays a remaining probability of breaking . . . for a storage time period of a maximum of half a year” of less than 0.1, where the probability of breaking is defined by a recited formula. Tomamoto discloses that very thin glass sheets or plates, referred to as “glass film,” are packaged for storage and/or transport by winding onto a roll. Tomamoto ¶ 6. Tomamoto explains that tensile stress acts continuously on rolled glass film during storage, and as the winding radius of the film decreases, the tensile stress acting on the glass film increases. Tomamoto ¶¶ 16, 17. Tomamoto further explains that when constant tensile stress acts continuously on rolled glass for long periods, the glass breaks even under relatively low tensile stress due to static fatigue. Tomamoto ¶ 17. Tomamoto discloses that its invention is based on the discovery that rolled glass film can be “reliably prevented from breaking due to static fatigue” during storage for long periods of time by adjusting the winding radius of the glass film based on the glass’ thickness, Young’s modulus, and flexural strength. Tomamoto ¶¶ 19, 20, 23, 24, 35; see also ¶¶ 78-80. Tomamoto discloses that its invention is applicable to “various glass compositions of silicate glass and the like, such as silica glass and borosilicate glass.” Tomamoto ¶ 54. The Examiner finds that Tomamoto “fails to give compositional Appeal 2021-000923 Application 15/283,933 5 ranges for the components of the glass.” Final Act. 4. The Examiner, however, finds that Northwest Institute discloses aluminosilicate glass and borosilicate glass compositions having superior properties and including SiO2, Al2O3, and alkaline earth oxide in amounts within the respective ranges recited in claim 1.3,4 Final Act. 4 (citing Northwest Institute Table 5- 1). The Examiner concludes that it would have been obvious to produce Tomamoto’s glass material from a composition as disclosed in Northwest Institute to impart “superior properties” to Tomamoto’s glass as disclosed in Northwest Institute. Final Act. 4. Similarly, in the second rejection of claim 1, the Examiner finds that Taniguchi discloses a boro-alumino-silicate glass composition having superior properties and including SiO2, Al2O3, and alkaline earth oxide in ranges of amounts encompassed within the respective ranges recited in claim 1. Final Act. 5 (citing Taniguchi ¶¶ 13, 22, 39-48). The Examiner concludes that it would have been obvious to produce Tomamoto’s glass material from a composition as disclosed in Taniguchi to impart “superior properties” to Tomamoto’s glass as disclosed in Taniguchi. Final Act. 5. The Examiner finds that Tomamoto also does not explicitly disclose a remaining probability of breaking and crack depth as recited in claim 1. Final Act. 3-4. The Examiner finds, however, that Tomamoto “teach[es] a 3 B2O3 and alkali oxide are optional components of the glass material recited in claim 1. 4 Although the Appellant argues in the Reply Brief that the Examiner takes the position in the Answer that the ‘“critical crack half length’ of glass taught by Northwest corresponds to Appellant’s claimed critical crack depth,” we find no indication in the Answer or elsewhere in the record before us that the Examiner takes this position. Reply Br. 2-3 (citing Ans. 8). Appeal 2021-000923 Application 15/283,933 6 glass that is stored in a roll for periods of a month or longer [where] the minimum winding radius is determined to effectively decrease the probability of breakage due to the winding.” Final Act. 4. The Appellant argues that “the Examiner has failed to show that Tomamoto or any of the other cited references teach, disclose, or suggest a glass material with both the composition and the specific structure that has the recited remaining probability of breaking or crack depth of claim 1.” Appeal Br. 15. The Appellant argues that “[n]one of the cited references disclose the formula for arriving at the claimed critical crack depth or that any of the disclosed glass materials have a crack depth that is less than the claimed critical crack depth,” and “[t]he Examiner has similarly failed to provide any factual support or reasoning as to how the cited references disclose or teach such a crack depth that is less than the critical crack depth.” Appeal Br. 13. The Appellant argues that “Tomamoto and the other cited references do not provide any disclosure or teaching regarding how to structure a glass material so the glass material satisfies the remaining probability of breaking recited by claim 1 and the Examiner has failed to provide factual support or reasoning as to why the cited references teach such a claim limitation.” Id. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection, for reasons that follow. Claim 1 requires the recited glass material to have a crack depth less than a critical crack depth defined by the formula ac = ((K1c · R)/(E · d))2, wherein K1c is a fracture toughness, R is the bending radius, E is an elasticity radius, and d is the thickness of the glass material. The Appellant’s Specification explains that thin glass can be wound Appeal 2021-000923 Application 15/283,933 7 into a roll for storage and transportation, but doing so subjects the glass to bending stresses or tension that can cause cracks to form in the glass material, which may progress to breaks. Spec. ¶¶ 3, 4. The Specification indicates that the depth of such cracks (“crack depth”) is a measure of the stress acting on the glass material, and the “critical” crack depth is the crack depth at which breakage of the glass occurs. Spec. ¶ 12. The Specification discloses that “[t]he critical crack depth for a glass material from which point in time breaking occurs due to tension stress is determined by the following glass parameters: fracture toughness of the glass material, the elasticity modulus of the glass material, the thickness of the glass material and the bending radius of the glass material.” Spec. ¶ 14. A crack depth less than a critical crack depth as defined in claim 1, therefore, is determined by both structural features (thickness and bending radius) and characteristics-or properties-of the glass material (fracture toughness and elasticity radius), contrary to the Appellant’s arguments asserting otherwise in the Reply Brief. Reply Br. 4 (“[a] crack in a glass material is a structural feature, so it must logically follow that a specified crack depth (which necessarily requires of crack) of a glass material must also be s structural feature”). Claim 1 also requires the recited long-term bendable glass material to be “structured such that a number of breaks N of the glass material with a bending radius developing over a course of time after a storage period of at least one day displays a remaining probability of breaking . . . for a storage time period of a maximum of half a year” of less than 0.1, where the probability of breaking is defined by ϕ(σ) = 1 - exp{-(L - L0) · (σ/σ0)m) for a storage time period of a maximum of half a year that is less than 0.1, where Appeal 2021-000923 Application 15/283,933 8 σ0 is a characteristic breaking stress for a sample with a length L0, m is a Weibull modulus measured by a destructive test, and L is a sample length under the breaking stress σ.” The Specification explains that the Appellant’s invention provides a long-term bendable glass material having a thickness of 5 to 500 μm “that is structured such that the number of breaks N(t) in a bent glass having a bending radius R in the range of 1 mm to 107 mm . . . developing over the course of time only displays a very low, or no, probability of breaking after a storage period of at least one day.” Spec. ¶ 16. The Specification discloses that “‘low probability of breaking or remaining probability of breaking’ refers to a probability of breaking ϕ of less than 0.1 . . . for a maximum storage period of at least half a year.” Id. The Specification discloses that such probabilities of breaking are attained if the depth of cracks in the glass material do not exceed the critical crack depth. Spec. ¶ 16; see also Spec. ¶ 24. The Specification thus indicates that the remaining probability of glass breakage during storage is based on the critical crack depth of the glass material. The Appellant does not dispute the Examiner’s finding that a combination of the relied-upon disclosures of each of Tomamoto and Northwest Institute and Tomamoto and Taniguchi would have suggested a glass material having all the structural features required by claim 1 (thickness, bending radius, and composition). Compare Final Act. 3-5, with Appeal Br. 10-15. The Examiner, therefore, provides sufficient factual support for determining that a glass material suggested by either combination of references would have a crack depth and a remaining probability of breaking as recited in claim 1. The burden, therefore, shifts to Appeal 2021-000923 Application 15/283,933 9 the Appellant to show otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations omitted) (“Where . . . 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. Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.”); In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its properties are inseparable). On the record before us, the Appellant does not meet this burden because the Appellant does not provide any objective evidence or technical reasoning establishing that Tomamoto’s glass film modified to have a composition as suggested by either of Northwest Institute or Taniguchi would not have a crack depth and a remaining probability of breaking as recited in claim 1. The fact that Appellant discovered or recognized new properties (crack depth and a remaining probability of breaking) of a glass material suggested by the combined teachings of Tomamoto and Northwest Institute or Taniguchi does not impart patentability to the material, even though the properties are not disclosed in any of the references. In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (reaffirming the principle that where the prior art gives reason or motivation to make the same composition recited in a claim, the burden and opportunity shifts to the applicant to rebut the prima facie case, and the mere fact that the prior art does not explicitly Appeal 2021-000923 Application 15/283,933 10 disclose the same property discovered for the composition recited in a claim does not defeat that prima facie case.); see also Endo Pharm. Sols., Inc. v. Custopharm Inc., 894 F.3d 1374, 1381 (Fed. Cir. 2018) (“An inherent characteristic of a formulation can be part of the prior art in an obviousness analysis even if the inherent characteristic was unrecognized or unappreciated by a skilled artisan.”). The Appellant argues that the Examiner’s finding (discussed above) that Tomamoto “teach[es] a glass that is stored in a roll for periods of a month or longer that the minimum winding radius is determined to effectively decrease the probability of breakage due to the winding” amounts to a contention that Tomamoto’s glass film has a structure recited in claim 1. Appeal Br. 14 (quoting Final Act. 4). The Appellant argues that “[t]his contention is without merit because it cannot be fairly imputed that the glass material structure recited by claim 1 is necessarily present because of a functional result taught by Tomamoto.” Appeal Br. 14 The Appellant appears to misapprehend the Examiner’s position. As the Examiner explains in the Answer (Ans. 9-10), and as discussed above, the glass material suggested by a combination of the relied-upon disclosures of each of Tomamoto and Northwest Institute and Tomamoto and Taniguchi has all the structural features required by claim 1 (thickness, bending radius, and composition). The Examiner, therefore, has a reasonable basis for finding that the glass material suggested by either combination of references would have a crack depth and remaining probability of breaking as recited in claim 1. The burden, therefore, shifts to the Appellant to show otherwise, which burden the Appellant does not meet on the record before us, as discussed above. Best, 562 F.2d at 1255. Appeal 2021-000923 Application 15/283,933 11 The Appellant’s arguments, therefore, do not identify reversible error in the Examiner’s rejections of claims 1-4 and 6 under 35 U.S.C. § 103, which we accordingly sustain. DECISION SUMMARY Claims 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1-4, 6 103 Tomamoto, Northwestern Institute 1-4, 6 1-4, 6 103 Tomamoto, Taniguchi 1-4, 6 Overall Outcome 1-4, 6 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