Aculon, Inc.

Patent Trials and Appeals Board

Feb 8, 2022

2021000972 (P.T.A.B. Feb. 8, 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. 15/662,377 07/28/2017 Eric Hanson Aculon-1602 4960 36787 7590 02/08/2022 BLYNN L. SHIDELER THE BLK LAW GROUP 3000 Village Run Road Suite 103-251 WEXFORD, PA 15090 EXAMINER STACHEL, KENNETH J ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 02/08/2022 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): blynn@BLKLawGroup.com cbelleci@BLKLawGroup.com patents@BLKLawGroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC HANSON1 ____________ Appeal 2021-000972 Application 15/662,377 Technology Center 1700 ____________ Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and LILAN REN, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, 5, and 7-9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to articles, such as glass articles, that are coated with barrier coatings. E.g., Spec. ¶¶ 2-5; Claim 1. Claim 1 is reproduced below from page 14 (Claims Appendix) of the Appeal Brief: 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Aculon, Inc. Appeal Br. 2. Appeal 2021-000972 Application 15/662,377 2 1. A coated article comprising: (a) a substrate; (b) a first coating layer applied to at least one surface of the substrate; wherein the first coating layer comprises at least one of chromium oxide, tantalum pentoxide, and TaO2; and (c) a second coating layer that is different from the first coating layer and is applied to at least one surface of the first coating layer; wherein the second coating layer comprises at least one of a trihalosilane, a tetrahalosilane, an organosilane, and polymers thereof. REJECTIONS ON APPEAL The claims stand rejected as follows: 1. Claim 7 under 35 U.S.C. § 112(a) for lack of written description support. 2. Claims 1, 2, 5, 7, and 9 under 35 U.S.C. § 103 as unpatentable over Carson (US 6,013,333, issued Jan. 11, 2000) and Raybould (US 2008/0193657 A1, published Aug. 14, 2008). 3. Claim 8 under 35 U.S.C. § 103 as unpatentable over Carson, Raybould, and McGary (US 3,265,234, issued Aug. 9, 1966). ANALYSIS Rejection 1 “[T]he test for [compliance with the written description requirement] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). Appeal 2021-000972 Application 15/662,377 3 Claim 7 depends from claim 1 and specifies that the structure of the generically recited “organosilane” of claim 1 is SiR4, and that each R “independently comprises H or an organic group selected from linear, branched, or cyclic alkyl; alkoxy; and polyalkoxy; and wherein at least one R comprises an organic group.” Appeal Br. 14 Focusing on ¶ 24 of the Specification, which discloses that R is “selected from linear, branched, or cyclic alkyl having 1 to 12 carbon atoms; alkoxy; and polyalkoxy” (emphasis added), the Examiner determines that claim 7 lacks written description support because the claimed alkyl is not limited to a maximum of 12 carbon atoms, and the written description does not expressly disclose an alkyl with more than 12 carbon atoms. Final Act. 3-4. That rationale is not persuasive for reasons consistent with the Appellant’s arguments. See Appeal Br. 5. Specifically, ¶ 22 of the Specification broadly discloses “organosilanes,” which encompasses the structure of claim 7. The Examiner does not dispute the Appellant’s assertion that “an organosilane by definition has the structure SiR4, wherein at least one R group comprises an organic group (which may be of any known organic structure).” Appeal Br. 5. The Examiner’s rejection does not account for the fact that a person of ordinary skill in the art, familiar with organosilanes, would have understood that a broad disclosure of organosilanes-not limited with respect to the number of carbons in the R group-shows possession of structure recited by claim 7, notwithstanding the fact that the Specification specifically discloses a maximum of 12 carbon atoms in describing a typical embodiment. See In re Lukach, 442 F.2d 967, Appeal 2021-000972 Application 15/662,377 4 969 (CCPA 1971) (“The invention claimed does not have to be described in ipsis verbis in order to satisfy the description requirement of § 112.”). We reverse the Examiner’s § 112(a) rejection of claim 7. Rejection 2 After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejection. We affirm the rejection for reasons set forth in the Final Action dated January 3, 2020, and in the Examiner’s Answer, and we adopt the Examiner’s analysis as our own. We add the following for emphasis. The Appellant presents separate arguments for claims 1 and 9. We address those claims below. The remaining claims subject to Rejection 2 fall with claim 1, from which they depend. Claim 1. The Examiner finds that Carson teaches a coated article comprising each element of claim 1 except that Carson’s first coating layer is described broadly as a metal oxide, with tin oxide and titanium oxide given as specific examples. Final Act. 4-6. The Examiner acknowledges that “Carson does not expressly disclose that the metal oxide comprises Ta2O5, tantalum pentoxide.” Id. at 6. The Examiner finds that Raybould teaches similar coated articles, and that Raybould teaches that titanium oxide (also disclosed by Carson) is known to be interchangeable with tantalum pentoxide. Id. at 6-9. The Examiner finds that it would have been obvious to add tantalum pentoxide to Carson’s titanium oxide coating, or to substitute tantalum pentoxide for Carson’s titanium oxide coating, because the two materials are known to be equivalent barrier coatings for glass substrates. Id. at 9. Appeal 2021-000972 Application 15/662,377 5 The Appellant’s argument that tantalum pentoxide “is not taught by [Raybould],” see Appeal Br. 7, is unpersuasive because Raybould explicitly teaches the use of “tantala,” and it is undisputed that tantala is the same as tantalum pentoxide, see Ans. 7 (citing American Chemical Society CAS Reg. No. 1314-61-0, which “evidences that tantalum oxide (Ta2O5) is tantala also named tantalum pentoxide.”). The Appellant’s argument that there is no reason to combine Carson and Raybould because Carson considers glass substrates whereas Raybould’s coatings “are only taught for use on superalloys,” see Appeal Br. 8-9, is unpersuasive in view of Raybould’s express disclosure that its coatings may be applied to glass, see Raybould ¶ 22. The Appellant’s argument that, if Carson and Raybould were combined, “at best” a person of ordinary skill in the art would replace Carson’s second layer (organosilane) with tantala rather than replacing Carson’s first layer (metal oxide) with tantala, Appeal Br. 9, is unpersuasive because it is unsupported by evidence or technical reasoning. Raybould’s metal oxide layer (e.g., tantala), which is taught or suggested as being applied directly to glass, see Raybould ¶¶ 22, 27, is more analogous to Carson’s first layer (metal oxide), which is applied directly to glass, see Carson 9:66-10:3, than it is to Carson’s second layer (organosilane). Thus, we agree with the Examiner that the substitution most reasonably suggested by the prior art is Raybould’s metal oxide for Carson’s metal oxide. We affirm the Examiner’s rejection of claim 1. Claim 9. Claim 9 depends from claim 1 and specifies that the “coated article is a mold.” Appeal Br. 15 (Claims Appendix). Appeal 2021-000972 Application 15/662,377 6 The Examiner finds that the glass containers of Carson are capable of functioning as a “mold” and that there is no structural difference between the glass containers of Carson and the recited “mold.” Final Act. 6. The Appellant argues that the Examiner’s statement that, “[f]or claim 9 the recitation that the coated article is a mold is synonymous with ‘the coated article for a mold,’” is incorrect. Appeal Br. 10 (quoting Final Act. 6). That argument is unpersuasive because it does not address or rebut the Examiner’s finding that Carson’s glass containers are structurally indistinguishable from the generically recited “mold” of claim 9. See Final Act. 6. That finding is repeated and elaborated upon in the Answer. Ans. 20. In the Reply Brief, the Appellant again fails to address or rebut that finding. See Reply Br. 8. We affirm the Examiner’s rejection of claim 9. Rejection 3 Claim 8 depends from claim 1 and further recites “a third coating layer” applied to the second coating layer, wherein the third coating layer comprises a polyurethane or polyepoxide. Appeal Br. 14 (Claims Appendix). The Examiner finds that neither Carson nor Raybould teaches a third coating layer. Final Act. 10. The Examiner finds that McGary discloses epoxy resin compositions suitable for laminating glass as a transparent protective member. Id. The Examiner determines that it would have been obvious to add McGary’s epoxy composition to the coated substrate of Carson as modified by Raybould to have an additional protective layer. Id. at 10-11. Appeal 2021-000972 Application 15/662,377 7 The Appellant argues that Carson concerns strengthening glass containers, whereas McGary concerns laminating resins useful in the manufacture of cathode ray tubes. Appeal Br. 12. The Appellant argues that both references offer “their own unique methods of strengthening a glass substrate,” and that one would not look to McGary “to solve the problem in Carson” since Carson already discloses a solution to its problem (strengthening glass). Id. That argument is not persuasive because, as acknowledged by the Appellant, McGary’s method is “unique” from Carson’s, and, as explained by the Examiner, a person of ordinary skill in the art reasonably would have expected the combination to yield “further improvements” to the strength of the coating. See Ans. 24. The Appellant provides no reason to believe that an epoxy composition such as that disclosed by McGary would not have provided additional beneficial properties to the coated substrate of Carson and Raybould. We affirm the Examiner’s rejection of claim 8. Appeal 2021-000972 Application 15/662,377 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 112(a) Written Description 7 1, 2, 5, 7, 9 103 Carson, Raybould 1, 2, 5, 7, 9 8 103 Carson, Raybould, McGary 8 Overall Outcome 1, 2, 5, 7-9 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED