Corning Incorporated

Patent Trials and Appeals Board

Jul 29, 2021

2020004149 (P.T.A.B. Jul. 29, 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.
14/737,701 06/12/2015 Delena Lucinda Justice Duffy SP14-165 5730
22928 7590 07/29/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
ZHANG, MICHAEL N
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
07/29/2021 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DELENA LUCINDA JUSTICE DUFFY,
ROSTISLAV VATCHEV ROUSSEV,
VITOR MARINO SCHNEIDER, and KRISTY LYNN SMITH

Appeal 2020-004149
Application 14/737,701
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BRIAN D.
RANGE.

Dissenting opinion filed by Administrative Patent Judge ADRIENE
LEPIANE HANLON.

DECISION ON APPEAL

Appeal 2020-004149
Application 14/737,701
2
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 3, 5–8, 12, 15, 17, 18, 20–26, 46–53,
and 64. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to “strengthened glasses
that do not exhibit frangible behavior.” Spec. ¶ 2. The Specification explains
that non-frangible ion exchanged glass is preferred as a cover glass for
touch-screen devices in order to reduce risk of user injury from small glass
pieces. Id. ¶ 3. Claim 46 is the only independent claim on appeal and is
illustrative.3 Appeal Br. 17 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Barefoot et al.
(“Barefoot ’038”)
US 2010/0035038 A1 Feb. 11, 2010
Abramov et al.
(“Abramov”)
US 2010/0210442 A1 Aug. 19, 2010
Barefoot et al.
(“Barefoot ’490”)
US 2011/0201490 A1 Aug. 18, 2011
Gross (“Gross ’375”) US 2013/0045375 A1 Feb. 21, 2013

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Corning Incorporated. Appeal Br. 2.
2 In this Decision, we refer to the Final Office Action dated May 15, 2019
(“Final Act.”), the Appeal Brief filed January 14, 2020 (“Appeal Br.”), the
Examiner’s Answer dated March 16, 2020 (“Ans.”), and the Reply Brief
filed May 15, 2020 (“Reply Br.”).
3 Because of the math formulas included with claim 46, we do not reproduce
the claim here.
Appeal 2020-004149
Application 14/737,701
3
Gross (“Gross ’284”) US 2013/0122284 A1 May 16, 2013

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 2, 5–8, 12, 15, 17, 18, 20–26, 46–53, and 64 under 35 U.S.C.
§ 103 as obvious over Abramov. Final Act. 2.
B. Claims 2 and 3 under 35 U.S.C. § 103 as obvious over Abramov in
view of Barefoot ’038. Id. at 6.
C. Claim 21 under 35 U.S.C. § 103 as obvious over Abramov in view of
Gross ’375. Id. at 7.
D. Claim 23 under 35 U.S.C. § 103 as obvious over Abramov in view of
Gross ’284. Id. at 8.
E. Claim 24 under 35 U.S.C. § 103 as obvious over Abramov in view of
Barefoot ’490. Id.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. 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) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not, in substance, argue any dependent claims
separately. See, e.g., Appeal Br. 13 (arguing that additional rejections do not
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Application 14/737,701
4
cure error with regard to independent claim 46). We therefore limit our
discussion to claim 46. Consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2013),
all other claims stand or fall with that claim.
The Examiner finds that Abramov teaches glass with a compressive
layer and central region. Final Act. 2 (citing Abramov). The Examiner finds,
for example, that Abramov teaches a thickness of 100 microns to 3
millimeters. Id. (citing Abramov ¶ 17). The Examiner finds that Abramov
teaches a DOC (i.e., depth of compression (see Spec. ¶ 5)) of 20 microns or
greater. Final Act. 2 (citing Abramov ¶ 21). The Examiner thus reasons
“[t]his means the DOC is greater than 0.08 times the thickness.” Id. at 2–3.
Appellant argues that Abramov teaches a broad genus of thicknesses
and DOC values but does not contemplate DOC being a function of
thickness. Appeal Br. 9–12; Reply Br. 4. Appellant’s argument does not
persuade us of Examiner error. Appellant’s claim 46 is directed to glass
having DOC which is greater than or equal to 0.08 times thickness.
Abramov reasonably suggests glass having the same property. Appellant
does not persuasively dispute the Examiner’s finding (Final Act. 2–3; Ans.
3–4) that Abramov suggests a DOC of greater than 20 microns. Abramov ¶¶
17, 21. Abramov, thus, generally suggests that the DOC should be high.
Appellant does not persuasively dispute that following Abramov’s
teaching of reaching a high DOC would result in glass having a DOC greater
than or equal to 0.08 times thickness. Appellant identifies embodiments of
Abramov that do not yield claim 46’s recited DOC to thickness ratio. Reply
Br. 4. Abramov, however, is not limited to these examples. See In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of the prior art,
including unpreferred embodiments, must be considered”). As explained
above, Abramov reasonably suggests high DOC values (values greater than
Appeal 2020-004149
Application 14/737,701
5
20 microns) and sufficiently high DOC values will necessarily satisfy claim
46’s requirement that DOC be greater than or equal to 0.08 times thickness.
(Notably, claim 46 is broad in that it specifies no upper limit to DOC.)
The Examiner also explains that Appellant has not established
unexpected results. Ans. 4. We do not understand the Appeal Brief as
attempting to make an unexpected results argument. Our review is limited to
arguments Appellant made in the Appeal Brief. Ex parte Frye, 94 USPQ2d
at 1075.
While we agree with the dissent and Appellant (Reply Br. 4) that
Abramov suggests embodiments outside the scope of claim 46, Abramov’s
disclosed ranges also, as we explain above, suggest embodiments within the
scope of claim 46. Under the present circumstances (for example, where
evidence of secondary considerations is lacking), this is sufficient to satisfy
establish obviousness. In re Lamberti, 542 F.2d at 750. Because Appellant’s
argument does not identify error, we sustain the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 5–8,
12, 15,
17, 18,
20–26,
46–53,
64
103 Abramov 2, 5–8, 12,
15, 17, 18,
20–26, 46–
53, 64

2, 3 103 Abramov, Barefoot
’038
2, 3
21 103 Abramov, Gross
’375
21
23 103 Abramov, Gross
’284
23
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Application 14/737,701
6
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24 103 Abramov, Barefoot
’490
24
Overall
Outcom
e
2, 3, 5–8,
12, 15, 17,
18, 20–26,
46–53, 64

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Appeal 2020-004149
Application 14/737,701
7

HANLON, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority opinion. According to the
Appellant, “[s]trengthened glasses that have deep compressive layers and do
not exhibit frangible behavior (i.e., the glasses are non-frangible) are
provided.” Spec. ¶ 5; see also Appeal Br. 9 (contending that the disclosure
of the present application relates to strengthened glasses that do not exhibit
frangible behavior).
Claim 46 recites, in relevant part, a glass having “a thickness t in a
range from about 0.3 mm to about 1.0 mm, wherein DOC ≥ 0.08·t.” Appeal
Br. 17. Claim 46 does not recite a range of depths of compression (DOC)
but rather limits DOC by its relationship with the thickness of the glass. See
Appeal Br. 9 (contending that the depth of compression is at least about 8%
(0.08) of the total glass thickness); see also Spec. ¶ 5 (disclosing that glass
having a DOC of at least 0.08t and a compressive stress CS and physical
central tension CT, wherein CT–CS≤ 350 MPa, is non-frangible).
Abramov discloses a strengthened glass but does not disclose whether
the glass exhibits non-frangible behavior. Abramov discloses a range of
glass thicknesses (e.g., from about 100 µm up to about 3 mm or 3000 µm4)
and a range of depths of layer (DOL)5 (e.g., 20 µm or greater6). The
Examiner does not find that Abramov describes a relationship between DOC
and glass thickness. Rather, the Examiner finds that the DOC and glass

4 Abramov ¶ 17.
5 On this record, it appears that the terms DOC and DOL are
interchangeable.
6 Abramov ¶ 21; see also Abramov ¶ 20 (disclosing depths of layer ranging
from about 10 to at least 50 µm).
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8
thickness ranges disclosed in Abramov “means the DOC is greater than 0.08
times the thickness.” Final Act. 2–3.
The Appellant argues that Abramov does not provide any teaching or
suggestion (or even any specific examples of DOC/t) that would have led
one skilled in the art to the DOC/t recited in claim 46. Appeal Br. 12.
Indeed, in one example, Abramov discloses a glass having a depth of layer
of about 51–53 µm and a thickness of 1.3 mm, resulting in a DOC/t of about
0.04. Abramov ¶ 37; see also Reply Br. 4.
I recognize that a disclosure is not limited to specific examples or
preferred embodiments. See In re Lamberti, 545 F.2d 747, 750 (CCPA
1976) (“all disclosures of the prior art, including unpreferred embodiments,
must be considered”). I also recognize that DOC and glass thickness values
could be selected from the ranges disclosed in Abramov to satisfy the
claimed relationship (i.e., DOC ≥ 0.08·t). However, based on the teachings
in Abramov, it is just as likely that DOC and glass thickness values could be
selected from the disclosed ranges that do not satisfy the claimed
relationship.7 See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985)
(“[P]reponderance of the evidence is the standard that must be met by the
PTO in making rejections.”).
Thus, consistent with the Appellant’s argument, the Examiner, in my
opinion, does not direct us to any evidence establishing that Abramov’s
disclosure would have led one of ordinary skill in the art to select DOC and

7 A glass having a thickness of 300 µm and a DOC of 30 µm, for example,
satisfies the claimed relationship. On the other hand, a glass having a
thickness of 300 µm and a DOC of 20 µm, also values within the ranges
disclosed in Abramov, does not satisfy the claimed relationship. See Appeal
Br. 10.
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9
glass thickness values necessary to arrive at the claimed relationship. See
Appeal Br. 12 (arguing that an invitation to find a DOC/t as recited in claim
46 does not provide a basis for a conclusion of obviousness). For that
reason, I would reverse the Examiner’s decision.