Corning Incorporated

Patent Trials and Appeals Board

Sep 24, 2020

2019006635 (P.T.A.B. Sep. 24, 2020)

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.
15/846,778 12/19/2017 Jonas Bankaitis SP16-408 6917
22928 7590 09/24/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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 JONAS BANKAITIS and KARAN MEHROTRA
Appeal 2019-006635
Application 15/846,778
Technology Center 1700
Before TERRY J. OWENS, N. WHITNEY WILSON, and
BRIAN D. RANGE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s November 28, 2018 decision to finally reject claims 16–21. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 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. 1).
Appeal 2019-006635
Application 15/846,778

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a thin sheet of fused silica having
a major face surface area of 6π square inches (Abstract). Claim 16, which is
reproduced below from the Claims Appendix, is illustrative of the claimed
subject matter:
16. A sheet of fused silica comprising a thickness of less than
300 micrometers, a major face surface area of at least 6π square
inches, a total thickness variation of less than 10 micrometers
excluding edge roll off, a peak-to-valley waviness of less than
500 nanometers, and a root mean square roughness over a
square millimeter of major surface of less than 100 nanometers.

REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Coresix
Wafers
https://web.
archive.org/web/20151121030045/https://coresix.com/products/wafers/ November 21,
2015

REJECTION
Claims 16–21 are rejected under 35 U.S.C. § 103 as unpatentable over
Coresix Wafers.
DISCUSSION
The Examiner finds that Coresix Wafers discloses a wafer–or sheet–of
fused silica having a thickness of 50 µm to 10 mm, a diameter of 25 mm to
450 mm, which corresponds to a major face surface area which overlaps
with the amount set forth in the claims (6π square inches, or about 18.8
square inches) (Final Act. 2, citing Coresix Wafers 1). These dimensional
ranges overlap with the claimed ranges and, therefore, render them prima
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facie obvious (id.). With regards to the remaining limitations, the Examiner
finds:
Coresix further teaches a total thickness variation of less than 2
μm and a root mean square roughness over a square millimeter
of major surface of less than 2 Å; which would have either
suggested or rendered obvious the ranges of the instant claims.

With regard to the sheet having a peak-to-valley waviness of
less than 500 nanometers and a peak-to-valley waviness of less
than 100 nanometers, Coresix teaches the wafer may be lapped
or polished to a desired flatness or finish), so it would have
been obvious to one of ordinary skill in the art at the time of
invention to lap or polish the wafer to the desired peak-to-
valley waviness (i.e., flatness or finish).

(Final Act. 3, internal citations omitted).
Appellant offers two arguments urging reversal of the rejection. First,
Appellant argues that Coresix Wafers, on its face, does not actually disclose
a wafer with the claim 16’s recited properties, because the document is
primarily a marketing document (Appeal Br. 4). In particular, Appellant
relies on the following statement from Coresix Wafers: “Capabilities depend
on material and substrate size. Actual capabilities for specific wafer
available upon request” (Appeal Br. 4–5). Appellant does not dispute the
Examiner’s factual findings that Coresix Wafers discloses parameters for a
wafer which overlap with the claimed parameters. However, Appellant
asserts that because of the foregoing language regarding capabilities, a
person of skill in the art would not necessarily have understood that Coresix
Wafers could actually produce a wafer with the requisite properties (id.).
This argument is not persuasive of reversible error. As noted by the
Examiner (Ans. 5), the test for obviousness is what the reference would have
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Application 15/846,778

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suggested to a person of skill in the art. In this instance, Coresix Wafers
describes a wafer which would meet the terms of the claims, thereby
rendering those claims obvious. Regardless of whether a person of skill in
the art might have thought that Coresix Wafers represents only a marketing
pitch, it describes, and therefore suggests, a wafer with the claimed
properties. “Even if a reference discloses an inoperative device, it is prior
art for all that it teaches.” Beckman Instruments, Inc. v. LKB Produkter AB,
892 F.2d 1547, 1551 (Fed. Cir. 1989).
Appellant’s second argument is that Coresix Wafers is non-enabling
with respect to a wafer having the claimed properties (Appeal Br. 6–8).
Appellant argues that the language “Capabilities depend on material and
substrate size. Actual capabilities for specific wafer available upon request”
indicates that Coresix Wafers is expressly indicating that it cannot produce
wafers with all of the properties listed in the document, thereby overcoming
any presumption of enablement attached to the document (Appeal Br. 6).
This argument is not persuasive, because it is overstating the significance of
the “capabilities language” in the document. There is no evidence in the
Coresix Wafers document itself that it is not enabling for any of the
embodiments disclosed therein.
Thus, the burden is on Appellant to demonstrate that Coresix Wafers
is not enabled with respect to the claimed invention. In re Sasse, 629 F.2d
675 (CCPA 1980). In order to do so, Appellant points to its Specification
which states that it was very difficult to produce very thin, yet highly
polished wafers (Appeal Br. 6, citing Spec. ¶ 6). Appellant further points to
“the absolute lack of any evidence that Coresix is able to make silica wafers
with the properties recited in claim 16.” This argument is also not
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persuasive. First, as noted above, there is a presumption of enablement for
the prior art. Thus, “an absolute lack of evidence” that Coresix Wafers is
enabled (beyond Coresix Wafers itself) is not sufficient to show that the
reference is not enabled. Second, although the Specification does describe
some of the difficulties in producing very thin, highly polished wafers, these
statements are very generalized and not at all tied to Coresix Wafers.
Accordingly, we conclude that Appellant has not met its burden of
showing that Coresix Wafers is not enabled.
For the foregoing reasons, we sustain the rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
16–21 103 Coresix Wafers 16–21

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