Adam James. Ellison et al.

Patent Trials and Appeals Board

Oct 1, 2019

14838482 - (D) (P.T.A.B. Oct. 1, 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.
14/838,482 08/28/2015 Adam James Ellison SP14-249 7448
22928 7590 10/01/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
IVEY, ELIZABETH D
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADAM JAMES ELLISON, SINUE GOMEZ,
SHANDON DEE HART, GUANGLI HU,
JOHN CHRISTOPHER MAURO, and JAMES JOSEPH PRICE
____________________

Appeal 2019-001941
Application 14/838,482
Technology Center 1700
____________________
Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 11–13, 15, 16, 18, 20, and 21. We affirm.

1 �e appeal record includes the following: Specification, Aug. 28, 2015
(“Spec.”); Final Office Action, Jan. 5, 2018 (“Final Action”); Appeal Brief,
July 5, 2018 (“Appeal Br.”); Examiner’s Answer, Nov. 8, 2018 (“Answer”);
and Reply Brief, Jan. 4, 2019 (“Reply Br.”).
2 Appellant is Corning Incorporated, which is the applicant as defined in 37
C.F.R. § 1.42. Appellant also identifies this entity as the real party in interest.
See Appeal Br. 2.
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BACKGROUND
According to Appellant, the invention at issue “is directed to new
manners of achieving high hardness coatings on glass substrates so that
through proper consideration of characteristics of the substrate and coating,
mitigation in the reduction in flexural strength and/or strain to failure is
achieved.” Appeal Br. 6. Independent claim 11, which we reproduce below,
is representative:
11. An apparatus, comprising:
a glass substrate having a first strain to failure
characteristic, a first elastic modulus characteristic, and a
flexural strength; and
a coating applied over the glass substrate to produce a
composite structure, where the coating has a second strain to
failure characteristic and a second elastic modulus
characteristic, wherein the first strain to failure characteristic is
higher than the second strain to failure characteristic, the
coating comprises one or more of silicon nitrides, silicon
oxynitrides, silicon carbides, silicon oxy-carbides, aluminum
nitrides, aluminum oxy-nitrides (AlON), aluminum carbides,
aluminum oxy-carbides, aluminum oxides, nanocrystalline
diamond, indium tin oxide (ITO), MgAl2O4, CaAl2O4,
MgAl2O4−x, MgAl2O4−x, Mg(1−y)Al(2+y)O4−x, and/or
Ca(1−y)Al(2+y)O4−x, SiOxCy, SiOxCyNz, Al, AlN, AlNxOy, Al2O3,
Al2O3/SiO2, BC, BN, Graphene, SiCNx, SiNx, SiO2, SiC, SnO2,
SnO2/SiO2, Ta3N5, TiC, TiN, TiO2, and/or ZrO2, and wherein:
the first elastic modulus characteristic is selected such
that one of:
(i) the first elastic modulus characteristic is above a
minimum predetermined threshold such that any reduction of
the flexural strength of the glass substrate resulting from
application of the coating is mitigated; and
(ii) the first elastic modulus characteristic is below a
maximum predetermined threshold such that any reduction of
the strain to failure of the glass substrate resulting from
application of the coating is mitigated.
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Appeal Br. Claims App’x 3 (emphasis of key portion added). Claim 21 is
also independent. See id. at 5. Claims 12, 13, 15, 16, 18, 20 depend from
claim 11. Id. at 3–5.
�e Examiner rejects claims 11–13, 15, 16, 18, 20, and 21 under 35
U.S.C. § 103 as being unpatentable over Amin3 in view of Patel.4 Final
Action 3–5.
DISCUSSION
Appellant argues the claims together. See Appeal Br. 9–13. �erefore,
we focus our decision on independent claim 11. �e remaining claims fall
with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).
�e Examiner finds that Amin discloses an ion-exchanged glass5
substrate for use as a housing, enclosure, or protective cover of an electric
device, which has an elastic modulus of about 50–100 GPa. Final Action 3
(citing Amin, Abstract). �is elastic modulus range overlaps the ranges
recited in the claims at issue in this appeal. See id.; see also Appeal Br.
Claims App’x 4 (a “minimum predetermined threshold” that is “at least
about” 70, 75, 80, or 85 GPa), 5 (“higher than one of: about 75GPa, about
80GPa, and about 85GPa”).
�e Examiner notes that “Amin does not disclose a coating on the
glass and does not teach the [recited] effect on flexural strength or strain to
failure characteristics.” Id. at 4. However, the Examiner finds that Patel

3 Amin et al., US 2010/0047521 A1 (published Feb. 25, 2010) (“Amin”).
4 Patel et al., US 2008/0138631 A1 (published June 12, 2008) (“Patel”).
5 Ion exchange is a method of adding compressive stress to a glass surface
by exchanging cations on the surface with larger cations. See Spec. ¶ 51;
Amin ¶ 35.
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teaches a protective coating for a substrate material such as glass ceramic,
“that minimizes mechanical wear of the substrate material component. Id.
(citing Patel, Abstract, ¶¶ 26, 30). �e Examiner also finds that Patel teaches
that the coating may comprise some of the materials recited in claim 11. Id.
(citing Patel ¶¶ 27, 40).
�e Examiner determines that a person of ordinary skill in the art
would have had reason to apply Patel’s coating to Amin’s glass substrate, “to
provide a thin[,] hard[,] protective coating for the glass that minimizes
mechanical wear of the glass to protect it during use while maintaining
clarity of the glass for use as a protective cover glass with a reasonable
expectation of success.” Final Action 4. �e Examiner also finds that
because Amin’s substrate and Patel’s coating “are substantially identical to
the instant application glass and coating,” including the elastic modulus of
the substrate and the coating, “the combination would inherently possess the
instant claimed strain to failure and flexural strength characteristics.” Id. at
4–5.
In response, Appellant makes the following arguments: (1)
Appellant’s coating achieves unexpected results, (2) the Examiner
improperly combined Amin with Patel, and (3) Patel is non-analogous art.
We address these arguments in turn, below.
A. Whether Appellant’s coating achieves unexpected results
Appellant argues that the claimed invention achieves an unexpected
result by balancing parameters “to allow a coating to be rigidly fused to the
underlying substrate, yet that minimize the reduction in flexural strength and
strain to failure of the coated article.” Appeal Br. 10.
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According to Appellant, at the time of invention, a person of ordinary
skill in the art would have expected that adding a coating, such as Patel’s, to
a substrate, such as Amin’s, would reduce the strength of the glass. Id. at 9.
As evidence, Appellant points to Figure 5 of the Specification, which we
reproduce below:

Figure 5 plots the probability of failure (y axis) against stress to failure (x
axis) for both non-coated (304, 302) and coated (308, 306) substrates. Id.;
Fig. 5; Spec. ¶¶ 31–32. According to Appellant, this chart shows that “the
strengths of the coated substrates were lower than those of the un-coated
substrates.” Appeal Br. 9. Appellant also points to Emonts et al.,
US 4,618,538 (issued Oct. 21, 1986), 1:33–59, which “discusses how some
pigmented coatings reduce glass bending strength,” and Roemer-
Scheuermann et al., US 2005/0129959 A1 (published June 16, 2005) ¶ 41,
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indicating that “coatings that are rigidly fused to the glass (as is the case in
Patel) . . . impair the strength of the glass.” Appeal Br. 9.
However, Appellant argues that the inventors “unexpectedly found
that careful consideration of various characteristics of the glass substrate and
coating yield improvements in the resulting flexural strength and/or strain to
failure in the resulting coated substrate.” Appeal Br. 10. As evidence,
Appellant points to Figures 6 and 7 of the Specification. Id. We reproduce
Figure 6 below:

Figure 6 is a theoretical, calculated plot of failure probability (y axis) versus
flexural strength (x axis) for coated ion-exchange substrates having elastic
moduli of 37, 72, and 120 GPa (608, 606, and 604, respectively) as
compared to a non-coated ion-exchange substrate (602). Appeal Br. 10;
Spec. ¶¶ 36.
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We reproduce Figure 7 below:

Figure 7 is a theoretical, calculated plot of failure probability (y axis) versus
strain to failure (x axis) for coated ion-exchange substrates having elastic
moduli of 120, 72, and 37 GPa (706, 704, and 702, respectively). Appeal Br.
10; Spec. ¶ 38.
According to Appellant, Figure 6 shows “that as the elastic modulus
of the glass is increased, the flexural strength increases,” and Figure 7
“shows that as the elastic modulus increases, the strain to failure decreases.”
Appeal Br. 10. In other words, Appellant argues that increasing the elastic
modulus of the glass substrate improves flexural strength, but worsens strain
to failure. According to Appellant, the inventors unexpectedly found a range
for the elastic modulus that “minimize[s] the reduction in flexural strength
and strain to failure of the coated article.” Id.
In response, the Examiner states that Figures 6 and 7 contain data only
for an indium tin oxide (ITO) coating with a thickness of 30 nm and an
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elastic modulus of 140 GPa, whereas claim 11 includes a broad range of
other coatings, and contains no limit for the elastic modulus of the coating
(i.e., the “second elastic modulus characteristic”). See Answer 6. �us,
according to the Examiner, “the data relied upon to show unexpected results
is narrower than the scope of the instant claims.” Id.
Appellant has the burden of showing unexpected results. In re Geisler,
116 F.3d 1465, 1469–70 (Fed. Cir. 1997). In particular, where the difference
between the claimed invention and the prior art is some range, “the applicant
must show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.” In
re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Furthermore, an
“applicant’s showing of unexpected results must be commensurate in scope
with the claimed range.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003).
We agree with the Examiner that the scope of claim 11 is significantly
broader than the simulated data presented in Figures 6 and 7. In addition,
while Appellant’s Figure 6 shows a relationship between the elastic modulus
of the substrate and the flexural strength, Appellant has not sufficiently
explained how Figure 6 identifies a critical range for the elastic modulus
corresponding to the “minimum predetermined threshold” recited in claim
11. Similarly, Appellant has not sufficiently explained how Figure 7
identifies a critical range for the elastic modulus corresponding to the
“maximum predetermined threshold” recited in claim 11. Nor has Appellant
explained how any synthesis of Figures 6 and 7 lead to a particular critical
range for the elastic modulus corresponding to any of the claims on appeal.
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Furthermore, it does not appear that claim 11 effectively limits the
range of the substrate’s elastic modulus. Claim 11 recites an apparatus in
which one selects the elastic modulus of the substrate (i.e., the “first elastic
modulus characteristic”) based on either a minimum threshold or a
maximum threshold. See Appeal Br. Claims App’x. 3. Claim 11 does not
specify these thresholds exactly, but claims 13 and 14 (withdrawn) recite
nearly overlapping ranges for the minimum and maximum thresholds,
respectively. See Appeal Br. Claims App’x 4; see also id. at 5–6 (claims 21
and 22 (withdrawn)). Because any, or at least nearly any, choice of elastic
modulus would be either greater than the contemplated minimum thresholds,
or less than the contemplated maximum thresholds, the evidence does not
support Appellant’s contention that claim 11 reflects an unexpected critical
range.
Finally, Appellant has not pointed to evidence sufficient to show that
the simulated data in Figures 6 and 7 would have been unexpected at the
time of invention. To show unexpected results, applicant must not only show
that the invention reflects different results than those of the prior art, but also
“that the difference actually obtained would not have been expected by one
skilled in the art at the time of invention.” In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (citations omitted). Appellant presents evidence
suggesting that at the time of invention, a person of ordinary skill in the art
would have expected that adding a coating would reduce the stress to failure
and strength of the substrate. See Appeal Br. 9; Spec., Fig. 5. However,
Appellant has not shown that the claimed invention is inconsistent with that
expectation. For example, the simulated data in Figure 6 shows that non-
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coated substrate 602 exhibits higher flexural strength than all three coated
substrates 604, 606, and 608.
For the above reasons, Appellant has not presented evidence sufficient
to show unexpected results.
B. Whether the Examiner properly combined Amin with Patel
Next, Appellant argues that a person of ordinary skill in the art “would
not have looked to the field of immersion lithography to improve Amin’s
electronic-device-housing substrate.” Appeal Br. 10. According to Appellant,
Patel’s solution is “for reducing debris (due to wear) in a clean
manufacturing environment,” and this is not a relevant concern to Amin’s
glass substrate, which “is in . . . ordinary, everyday, surrounding conditions
where dirt, debris, and particles (of a much larger size, and in much larger
quantities) are readily present.” Id.; see also id. at 11. Because Patel’s
concern for wear resistance is “so that the particles generated by that wear
do not contaminate a clean room environment,” Appellant argues that “one
of ordinary skill in the art would not have looked to Patel’s teaching on wear
resistance as such a coating would be superfluous.” Appeal Br. 11.
�e Examiner responds that Amin teaches “the need to balance the
desirability of making a [glass enclosure] smaller and lighter with making it
stronger and more rigid.” Answer 6–7 (citing Amin ¶ 4). According to the
Examiner, Patel provides a solution for applying a protective coating that
improves durability and wear resistance to a substrate, without
compromising its transparency. Id. (citing Patel ¶ 40).
�e Examiner’s rationale for combining Amin with Patel is
persuasive, and Appellant has not identified reversible error. Amin teaches
that glass enclosures should be durable. See Amin ¶ 20 (glass enclosure is
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“sufficiently strong and durable so as to withstand typical consumer
use/applications”). �e Examiner is correct that Patel presents a solution for
improving the durability and wear resistance of a glass substrate that does
not impede its transparency. �us, we agree with the Examiner that a person
of ordinary skill in the art would have had reason to modify Amin’s glass
enclosure by adding Patel’s coating.
Appellant also argues that the Examiner’s combination of Amin and
Patel relies on impermissible hindsight reconstruction. Appeal Br. 11–12.
According to Appellant, the Examiner’s rejection “take[s] into account
knowledge gleaned only from Appellant’s disclosure, i.e., that a particular
coating on a particular substrate would lead to beneficial results in mitigating
reduction in flexural strength and/or in strain to failure.” Id. at 12.
We disagree with Appellant’s characterization of the Examiner’s
rejection. �e Examiner relies on the teachings of Amin and Patel as to
improving durability and wear resistance, not on mitigating reductions in
flexural strength or strain to failure. See Answer 8–9. �erefore, we do not
find this argument persuasive of reversible error.
C. Whether Patel is non-analogous art
Finally, Appellant argues that Patel is non-analogous art. Appeal Br.
12–13. According to Appellant, the field of endeavor of the claimed
invention is “cover glass for electronic devices, whereas Patel’s is the field
of immersion lithography.” Appeal Br. 13. Appellant also argues that for the
claimed invention, the inventors were faced with the problem of “resist[ing]
sharp contact, single event damage in order to reduce the likelihood of
scratching the cover glass of an electronic device.” Id. By contrast,
according to Appellant, “Patel is concerned with reducing wear (as by
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repeated sliding contact) that would produce unwanted dust in a clean room
environment.” Id.
In response, the Examiner finds that, like Appellant’s disclosure, the
relevant field of endeavor of Amin and Patel is “the field of glass that
experiences wear,” and particularly to “glass articles experiencing wear and
benefited by strength and durability in the generic field of electronics.”
Answer 7. However, according to the Examiner, the claims on appeal “are
not narrowed to any particular field of art and instead recite only an
‘apparatus’ in the preamble with no limitation placed on the use of the
apparatus.” Id. at 8.
We agree with the Examiner that Patel is within the same field of
endeavor as the claimed invention. “�e field of endeavor of a patent is not
limited to the specific point of novelty, the narrowest possible conception of
the field, or the particular focus within a given field.” Unwired Planet, LLC
v. Google Inc., 841 F.3d 995, 1001 (Fed. Cir. 2016). �e field of endeavor is
also informed by “explanations of the invention’s subject matter in the
patent application, including the embodiments, function, and structure of the
claimed invention.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citing
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)). According to Appellant’s
Specification, the invention “relates to methods and apparatus for retaining
high strength and/or strain in a coated glass substrate structure.” Spec. ¶ 2.
�us, in its most general description of the invention, the Specification does
not limit the field solely to cover glass for electronic devices. Furthermore,
as the Examiner correctly notes, the claims themselves are not directed to a
particular application for the coated glass. See Answer 7–8. Like the claimed
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invention, Patel relates to a coating that improves the mechanical properties
of a glass substrate, and it is within the same field of endeavor.
Also unpersuasive of reversible error is Appellant’s argument that
Patel is not reasonably pertinent to the problem faced by the inventors. �e
Specification recognizes the problem that there “are needs in the art for new
methods and apparatus for achieving high hardness coatings on glass
substrates.” Spec. ¶ 7; see also id. ¶ 8 (“[A] coating may be applied to a
glass substrate to address the surface hardness issue.”); ¶ 12 (noting that
increasing hardness by adding a hard coating to a glass substrate “may
degrade the strength and/or strain to failure of the glass substrate”). Patel is
reasonably pertinent to the problem of providing a suitable hard coating on a
glass substrate. See, e.g., Patel 34 (“Coatings with high hardness tend to also
be wear-resistant which is beneficial to minimize mechanical wear.”).
For the above reasons, and based on the Examiner’s findings and
conclusions as a whole, which we find persuasive, the preponderance of the
evidence supports the Examiner’s rejection, and Appellant has not shown
reversible error. �erefore, we affirm the Examiner’s decision as to all
claims.
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CONCLUSION
In summary,
Claims Rejected Basis Affirmed Reversed
11–13, 15, 16, 18,
20, 21
§ 103 Amin, Patel 11–13, 15, 16, 18,
20, 21

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. §§ 1.136(a)(1)(iv), 41.50(f)
(2018).
AFFIRMED