CORNING INCORPORATED

Patent Trials and Appeals Board

Mar 26, 2021

2020001026 (P.T.A.B. Mar. 26, 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.
15/886,300 02/01/2018 George Halsey Beall SP15-091FTA 1058
22928 7590 03/26/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
FIGG, TRAVIS M
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
03/26/2021 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 GEORGE HALSEY BEALL, MARIE JACQUELINE MONIQUE
COMTE, and PAULO GASPAR JORGE MARQUES
Appeal 2020-001026
Application 15/886,300
Technology Center 1700
Before ERIC B. GRIMES, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/886,300 (“the ’300 App.”); the Final Office Action dated Mar. 14, 2019
(“Final Act.”); the Appeal Brief filed Aug. 14, 2019 (“Appeal Br.”); the
Examiner’s Answer dated Sept. 20, 2019 (“Ans.”); and the Reply Brief filed
Nov. 20, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Corning
Incorporated. Appeal Br. 2.
Appeal 2020-001026
Application 15/886,300

2
CLAIMED SUBJECT MATTER
The claims are directed to a glass-based material comprising a glass
phase and a cryastalline phase dispersed within the glass phase. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A glass-based material, the glass-based material
comprising a glass phase and a crystalline phase dispersed
within the glass phase, wherein the glass-based material has a
transmittance of at least about 88%/mm over a visible spectrum
ranging from about 400 nm to about 700 nm, a thickness of less
than or equal to 1 mm, and at least a 60% survival rate when
subjected to an inverted ball on sandpaper test with a 4.2 g
stainless steel ball having a diameter of 10 mm from a drop
height of 100 cm onto a 30 grit sandpaper positioned above the
surface of the glass-based material so there is a 100 μm air gap,
wherein the survival rate is based on testing at least 5 samples.
Appeal Br. 33 (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims:
Name Reference Date
Megles US 3,313,609 Apr. 11, 1967
Amin et al. (“Amin”) US 2011/0092353 A1 Apr. 21, 2011
Goto et al. (“Goto”) US 8,043,706 B2 Oct. 25, 2011
Amin et al. (“Amin
’987”)
US 8,187,987 B2 May 29, 2012
REJECTIONS3
The Examiner maintains the following rejections: (1) claims 1–20
under 35 U.S.C. § 112(a) as lacking enablement; (2) claims 1–4, 6, 8–10,

3 Because this application was filed after the 16 March 2013, effective date
of the America Invents Act, we refer to the AIA version of the statute.
Appeal 2020-001026
Application 15/886,300

3
and 13–20 under 35 U.S.C. § 103 as obvious over Amin in view of Amin
’987; (3) claim 5 under 35 U.S.C. § 103 as obvious over Amin, Amin ’987,
and Megles; and (4) claims 7, 11, and 12 under 35 U.S.C. § 103 as obvious
over Amin, Amin ’987, and Goto. Ans. 3–16.
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.”)).
Enablement Rejection
The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as lacking
“enablement for any ‘glass-based material’ having a glass phase, composed
of any oxide mixture, and a crystalline phase, composed of any crystalline
material, dispersed in said glass phase having the claimed values.” Final
Act. 3.
Although not explicitly stated in section 112, “to be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993).
“[T]he scope of the claims must bear a reasonable correlation to the scope of
enablement provided by the specification to persons of ordinary skill in the
art.” In re Fisher, 427 F.2d 833, 839 (CCPA 1970); see also Crown
Operations Int’l v. Solutia Inc., 289 F.3d 1367, 1378–79 (Fed. Cir. 2002) (
“The purpose of the enablement requirement is to ‘ensure[] that the public
Appeal 2020-001026
Application 15/886,300

4
knowledge is enriched by the patent specification to a degree at least
commensurate with the scope of the claims.’”) (quoting Nat’l Recovery
Techs., Inc. v. Magnetic Separation Sys., 166 F.3d 1190, 1196 (Fed. Cir.
1999)).
Whether undue experimentation is required is the conclusion reached
by weighing many factual considerations. ALZA Corp. v. Andrx Pharm.,
LLC, 603 F.3d 935, 940 (Fed. Cir. 2010) (citing Wands, 858 F.2d at 737).
Factors to be considered include: (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737.
Here, Appellant complains that the Examiner intermingles various
Wands factors, rather than evaluating each factor separately. See Appeal Br.
14, 15. However, all of the Wands factors need not be reviewed in order to
find a disclosure enabling, as these factors are illustrative, not mandatory.
Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d 1269, 1288 (Fed.
Cir. 2012) (quoting Amgen, Inc. v. Chugai Pharm. Co.,927 F.2d 1200, 1213
(Fed. Cir. 1991)). Moreover, we find that the Examiner addresses each
Wands factor in concluding that the claims are not enabled.
We agree with the Examiner that undue experimentation would be
required to make and use the full scope of the claimed invention. See Ans.
31. The claims contain both structural and functional limitations, thus the
quantity of experimentation to synthesize glass-based material coverd by the
recited structure and test these glass-based materials to determine whether
Appeal 2020-001026
Application 15/886,300

5
they meet the functional requirements is extensive. The Specification
provides some examples, but fails to disclose whether most of them meet the
claimed functional requirements, thus relatively little guidance is provided to
one of ordinary skill in the art for how to make and use the invention as
claimed. Although the relative skill of those in the art is high, the art itself is
unpredictable. And the claims are very broad, as Appellant acknowledges.
See Appeal Br. 11. On the record before us, undue experimentation would
be required. See Amgen Inc. v. Sanofi, Aventisub LLC, 987 F.3d 1080, 1086
(Fed. Cir. 2021) (“[D]ue to the large number of possible candidates within
the scope of the claims and the specification's corresponding lack of
structural guidance, it would have required undue experimentation to
synthesize and screen each candidate to determine which compounds in the
claimed class exhibited the claimed functionality.”).
We sustain the enablement rejection.
Obviuosness Rejections
The Examiner rejects claims 1, 4, 6, 8–10, and 13–20 as obvious over
Amin in view of Amin ’987, claim 5 as obvious over Amin, Amin ’987, and
Megles, and claims 7, 11, and 12 as obvious over Amin, Amin ’987, and
Goto. Final Act. 7–15. Appellant relies on its arguments regarding claim 1
to establish patentabililty of claims 2–20 as well. Appeal Br. 31. Claims 2–
20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Amin teaches the limitations of claim 1
except for the thickness of the glass-based material being less than or equal
to 1 mm. Ans. 8–10. The Examiner relies on Amin ’987 for teaching the
thickness limitation. Id. at 9. The Examiner finds that Amin’s disclosure of
a material that is transparent in the visible spectrum from 400–700 nm with
Appeal 2020-001026
Application 15/886,300

6
>50% transmission through 1 mm thickness overlaps claim 1’s requirement
of a transmittance of at least about 88%/mm over a visible spectrum ranging
from about 400 nm to about 700 nm, creating a prima facie case of
obvouisness. Ans. 8 (citing Amin ¶ 21).
Appellant argues that Amin merely indicates a desire to transparency,
but not how to achieve the claimed transmittance of “at least about
88%/mm.” Appeal Br. 24–25; Reply Br. 15.
However, Appellant’s argument ignores Amin’s disclosure that at
least one of its examples “can be made transparent if heat-treated so as to
acidenve that transparency feature.” Amin ¶ 47. Amin discloses that “it is
readily apparent to one skill in the art which specific heat treatments can
achieve this transparency.” Id. In addition, Appellant ignores the fact that
Amin discloses a transparency range (>50%/mm) that overlaps the claimed
range. Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed.
Cir. 2004) (“[W]here there is a range disclosed in the prior art, and the
claimed invention falls within that range, there is a presumption of
obviousness.”). The presumption of obviousness created by the overlap can
be rebutted if Appellant successfully demonstrates that the prior art teaches
away (In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997), or that new and
unexpected results are found (In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990). Id. In this case, Appellant does neither.
Appellant argues that “Amin discloses that as the transmission
increases, strength decreases.” Appeal Br. 27; Reply Br. 17. Appellant’s
argument is based on the following sentence:
Fracture toughness in a preferred embodiment can be as
high as 1.2 MPa∙m1/2, when the glass-ceramic material utilized
Appeal 2020-001026
Application 15/886,300

7
is for a transparent enclosure and as high as 5.0 MPa∙m1/2 when
the glass-ceramic material is opaque.
Amin ¶ 13. But more is required to support a finding of “teaching away.”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (Teaching away requires
that a reference “criticize, discredit, or otherwise discourage the solution
claimed” by Appellant.). We do not find Amin’s disclosure sufficient
evidence to support Appellant’s conclusory assertion.
Appellant also argues that “the Examiner has the burden of showing
that the transmittance and survival rate recited in claim 1 [are] necessariliy
present” in the prior art. Appeal Br. 29 (citing MPEP § 2112(IV)); see also
Reply Br. 18. Appellant contends that the Examiner improperly shifted the
burden. Appeal Br. 29. We disagree.
First, we note that the Examiner identifies Amin as disclosing an
overlapping range of transmittance, therefore does not rely on inherency for
this limitation.
Second, our reviewing court recognizes “that inherency may supply a
missing claim limitation in an obviousness analysis.” PAR Pharm., Inc. v.
TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed, Cir. 2014). Inherency is a
question of fact that may not be established by probabilities or possibilities.
Id. at 1194, 1195. However, “[w]here, as here, 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.” In re Best, 562 F.2d 1252, 1255
(CCPA 1977); see also In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997) (Examiner can assume that the product produced by a process that is
substantially identical to the process used to produce the claimed product
Appeal 2020-001026
Application 15/886,300

8
inherently has the same properties as the 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.” Best, 562 F.2d at 1255.
The Examiner shows prima facie obviousness, thereby properly
shifting the burden to Appellant to show that the prior art does not have the
claimed structural feature of at least a 60% survival rate. Appellant fails to
meet this burden.
For the above reasons, we affirm the rejection of claim 1 over Amin in
view of Amin ’987. We affirm the rejections of claims 2–20 consistent with
37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejections of claims 1–20 as (1) lacking enablement,
and (2) obvious are affirmed.
Appeal 2020-001026
Application 15/886,300

9
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 112(a) Enablement 1–20
1–4, 6, 8–
10, 13–20
103 Amin, Amin ’987 1–4, 6, 8–10,
13–20

5 103 Amin, Amin ’987,
Megles
5
7, 11, 12 103 Amin, Amin ’987,
Goto
7, 11, 12
Overall
Outcome
1–20
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)(1)(iv).
AFFIRMED