AGC Inc.

Patent Trials and Appeals Board

Jan 25, 2021

2020004744 (P.T.A.B. Jan. 25, 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.
15/370,763 12/06/2016 Jun ENDO 479348US99CONT 7740
22850 7590 01/25/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
BOLDEN, ELIZABETH A
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN ENDO, SHUSAKU AKIBA,
KAZUTAKA ONO, and SHIGEKI SAWAMURA

Appeal 2020-004744
Application 15/370,763
Technology Center 1700
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HASTINGS, 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 reject claims 2–12 and 14. See Final Act. 1. Claim

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Asahi Glass
Company, Limited. Appeal Br. 1.
Appeal 2020-004744
Application 15/370,763

2
13 was cancelled.2 An oral hearing was conducted January 8, 2021. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a glass composition. Claim 2, reproduced
below, is illustrative of the claimed subject matter:
2. A glass for chemical tempering, comprising, as represented
by mole percentage based on the following oxides:
from 66.6 to 70.0 % of SiO2:
from 10.2 to 14 % of Al2O3;
from 0 to 7% of MgO;
from 0 to 1.0% SrO,
from 0 to 1.0% BaO,
from 0 to 0.5% CaO;
from 0 to 4% of ZrO2;
from 11 to 14.6% of Na2O:
from 0 to 1.9% of K2O; and at least one component
selected from the group consisting of B2O3, SrO and BaO;
wherein
a content of the B2O3 is at most 4.2%,
and
R’ calculated by the following formula by using contents
of the respective components, is at least 0.74:
R’=0.029xSiO2+0.021xAl2O3+0.0l6xMgO-
0.004xCaO+0.0l6xZrO2+0.029xNa2O+0xK2O+0.028xB2O3+
0.012xSrO+0.026xBaO-2.002.

2 Claim 13 was cancelled and claim 2 was amended on September 6, 2019,
after the Final Office Action mailed June 13, 2019, and the Examiner
indicated this amendment was “OK TO ENTER” on October, 10, 2019.
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Application 15/370,763

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Aitken US 2011/0017297 A1 Jan. 27, 2011

REJECTIONS
Claims 2–12 and 14 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 5.
Claims 2–12 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Aitken. Final Act. 7.
The Examiner withdrew the § 112 rejection for indefiniteness. Ans.
10.

We will not address the Examiner’s objection to the Specification
made by the Examiner (Final Act. 2–4) as this objection should be decided
by the Director on petition, and is not appealable. See, e.g., MPEP §§
706.01, 1201 (9th ed. Rev.08.2017 Jan. 2018).
OPINION
The 112 rejection for lack of written description
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
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Application 15/370,763

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(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir.
1991)).
Claim 2 recites that the composition of claim 1 has 0 to 7% MgO.
The Examiner states that the portion of the range from 0 to 3% is new matter
as the Specification indicates that MgO is essential, and describes an amount
of MgO no lower than 3% (Final Act. 5)
While we appreciate the Examiner’s position that the Specification is
confusing and appears to be somewhat inconsistent on this issue, there is no
dispute that the Specification discloses numerous examples wherein the
amount of MgO is 0 (less than 3%) (Spec., Tables 8-11, Examples 41, 42,
49–54, 56–65, and 74–78). The Examiner believes that these examples are
not part of the disclosed invention, mainly because the Specification also
states that “MgO is a component to improve the melting property, and is
essential” (Spec. 14, l. 32; Ans. 26). Appellant’s position is that the
Specification statement that MgO is essential is “regarding only one
embodiment of glass of the present invention” (Appeal Br. 6) and that
Examples 49-653 are examples of the present invention containing 0% MgO
(id.).
In light of the numerous examples described in the Specification
containing 0% MgO, a preponderance of the evidence supports Appellant’s
position that one of ordinary skill in the art would have appreciated that
Appellant was in possession of glass compositions encompassing the recited
range of 0 to 7% MgO (Reply Br. 2, 3; Appeal Br. 4–7).

3 Example 55 lists an amount of MgO content of 9.1; however, Examples
49–54 and 56–65 list 0 for the amount of MgO.
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Application 15/370,763

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The § 103 Rejection
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring Appellant to identify
the alleged error in the Examiner’s rejection). We sustain the Examiner’s
rejections for the reasons expressed in the Final Office Action and the
Answer.
We add the following primarily for emphasis.
Appellant does not dispute that Aitken discloses a glass composition
with amounts of each component listed in Claim 2 that overlap those in
Aitken. Appellant contends that Aitken does not address the problem
addressed by the present invention of glass tempering, and relies upon the
Declaration of Dr. Shusaku Akiba filed Sept. 28, 2018, as evidence of
unexpected results (Appeal Br. 7–10; Reply Br. 3–4). These arguments are
not persuasive of reversible error in the Examiner’s obviousness
determination.
As pointed out by the Examiner, “for chemical tempering” is merely
an intended use of the recited composition of claim 2 (e.g., Ans. 28). Aitken
is not limited to the example discussed in the Declaration and Appellant
does not dispute that Aitken more broadly teaches all of the components of
the glass composition recited in claim 2 in amounts that overlap the claimed
amounts (as well as separately argued claim 6 that recites “at most 0.5%” of
SrO (Appeal Br. 10; Ans. 32, (pointing out that Aitken discloses examples
Appeal 2020-004744
Application 15/370,763

6
with zero SrO))). It is well established that when claimed ranges overlap or
lie inside ranges disclosed by the prior art, a prima facie case of obviousness
is established. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005); In re
Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is well settled that a
reference is not limited to its examples or preferred embodiments. See, e.g.,
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir.
1989). It is within the level of ordinary skill in the art to vary the amounts of
the components such that the relationship R as defined in the claims would
have been met/arrived at using no more than ordinary creativity. KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
With respect to the proffered evidence of unexpected results,
Appellant has not provided the required side-by-side comparison of the
claimed invention with the closest prior art which is commensurate in scope
with the claims, and has not adequately explained why the results would
have been unexpected by one of ordinary skill in the art. See In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972). The evidence must show that the unexpected
results extend throughout the claimed subject matter but do not extend into
the prior art teachings that fall outside of the claimed subject matter, i.e., that
the claimed ranges are critical for obtaining the unexpected result. See, e.g.,
In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”); In re
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Application 15/370,763

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Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a
small number of) species gives unexpected results is inadequate proof, for ‘it
is the view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.”’) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)); and In re
Hill, 284 F.2d 955, 958–59 (CCPA 1960) (To establish unexpected results
over a claimed range, an applicant should compare a sufficient number of
tests both inside and outside the claimed range to show the criticality of the
claimed range.).
As pointed out by the Examiner, the proffered evidence has not been
shown to be commensurate in scope with the claimed composition (Ans. 28).
Indeed, Example 1 of the Declaration is not even encompassed by claim 2
since the amount of SrO (an amount listed as “2”) exceeds that required in
claim 2 of “0 to 1.0% SrO”. Claim 2 also uses the open ended term
“comprising” and thus may include other components not recited. Appellant
has not met their burden to show that the results of one example (Example 2
of the Declaration) may be extrapolated throughout the breadth of the claim.
We, therefore, discern no error in the Examiner’s determination that
the applied prior art would have rendered obvious the glass composition of
claim 2.
Thus, Appellant has not persuasively argued that the facts and reasons
relied on by the Examiner are insufficient to establish a prima facie case of
obviousness. In light of these circumstances, the preponderance of the
evidence supports the Examiner’s rejection. Accordingly, we sustain the
rejection of the claims on appeal.

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CONCLUSION
The Examiner’s § 112 rejection for lack or written description is
reversed.
The Examiner’s § 103 rejection is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–12, 14 112 Lack of Written
Description
2–12, 14
2–12, 14 103 Aitken 2–12,
14

Overall
Outcome
2–12,
14

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