EUROKERA S.N.C.

Patent Trials and Appeals Board

Jan 24, 2022

2021004094 (P.T.A.B. Jan. 24, 2022)

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. 15/756,650 03/01/2018 Gregory DEBREYER 81049865 3995 167762 7590 01/24/2022 Element IP, PLC 2331 Mill Road Suite 610 Alexandria, VA 22314 EXAMINER PAIK, SANG YEOP ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): patent@elementiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY DEBREYER, FRANCK DEMOL, NICOLAS ROUX, and PABLO VILATO Appeal 2021-004094 Application 15/756,650 Technology Center 3700 Before MICHELLE R. OSINSKI, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, 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 1-9, 12, 13, 16-18, and 21-26. Appeal Br. 1. Claims 10, 11, 14, 15, 19, and 20 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Eurokera S.N.C. as the real party in interest. Appeal Br. 2. Appeal 2021-004094 Application 15/756,650 2 We AFFIRM. CLAIMED SUBJECT MATTER The application is titled “Glass Ceramic Worktop.” Spec. 1. Claim 1 is the sole independent claim. Appeal Br. 12-16 (Claims App.). We reproduce independent claim 1 and dependent claims 6 and 7, below: 1. An item of equipment, comprising: - a worktop formed of a substrate made of monolithic glass material with a surface area of greater than 0. 7 m2, said substrate exhibiting a luminosity L* of greater than 10, a light transmission TL of less than 50%, and an opacity indicator of greater than 90 and of less than or equal to 100, - a heating element, and - an interface configured to perform wireless communication with an external unit capable of activating and controlling the heating element, the interface being further configured to transmit commands given by the external unit to the heating element, wherein said item of equipment is devoid of light source(s). 6. The item of equipment as claimed in claim 1, wherein the substrate exhibits a luminosity L* of greater than 15, a haze of greater than 20%, a light transmission TL of less than 32%, and an opacity indicator of greater than 95 and of less than or equal to 100. 7. The item of equipment as claimed in claim 1, wherein the substrate or the glass material comprises colorants or is provided with a coating conferring on the substrate or the glass material a different coloring from its own coloring. Appeal Br. 12, 13 (Claims App.). Appeal 2021-004094 Application 15/756,650 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Harris US 5,746,114 May 5, 1998 Vilato ’103 US 6,118,103 Sept. 12, 2000 Vilato ’491 US 2005/0224491 A1 Oct. 13, 2005 Schilling US 2006/0243462 A1 Nov. 2, 2006 Nelson US 2010/0089905 A1 Apr. 15, 2010 Beall US 2013/0296155 A1 Nov. 7, 2013 Beifuss US 2015/0042453 A1 Feb. 12, 2015 Wollgram EP 2,217,036 A1 Aug. 11, 2010 See Final Act. 2-3. REJECTION Claims 1-9, 12, 13, 16-18, and 21-26 stand rejected as unpatentable under 35 U.S.C. § 103 over Wollgram, Nelson, Vilato ’491, Beall, Schilling, Vilato ’103, and Harris or Beifuss. Final Act. 2-3. OPINION Appellant argues claims 1-5, 8, 9, 12, 13, 16-18, and 21-26 as a group. See Appeal Br. 4-11. We select independent claim 1 as the representative claim, with claims 2-5, 8, 9, 12, 13, 16-18, and 21-26 standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Appellant presents separate arguments for claims 6 and 7. See Appeal Br. 10. We address these claims separately below. Appeal 2021-004094 Application 15/756,650 4 I. Claims 1-5, 8, 9, 12, 13, 16-18, and 21-26 a. Examiner’s Rejection In rejecting independent claim 1, the Examiner relies on Wollgram for teaching a worktop formed of a substrate made of a monolithic glass ceramic with the following features (Final Act. 3): (1) having a surface area of greater than .7 m2 (citing Wollgram ¶¶ 11, 14); (2) having at least one heating element such as an induction heater under the substrate (citing Wollgram ¶ 13); (3) defining a cooking location with markings or decorations via printing or scratching that would be permanent decoration on the substrate (citing Wollgram ¶ 26); (4) wherein the cooking location/area occupies at least 25% of the surface area of the substrate (citing Wollgram ¶ 12); (5) having a support table/cabinet that supports the worktop substrate, the substrate having a thickness of at least 2mm and less than 15mm (citing Wollgram ¶ 11); and (6) the glass substrate occupying at least 50% of the surface of the worktop, and the glass substrate having a coating or a printing on the substrate with different colors (citing Wollgram ¶ 26). The Examiner acknowledges, however, that Wollgram does not teach a substrate that: (1) exhibits a luminosity L* of greater than 10, (2) a light transmission TL of less than 50%, (3) an opacity indicator of greater than 90 and less than or equal to 100, Appeal 2021-004094 Application 15/756,650 5 (4) at least one interface for communication with at least one element of the worktop, (5) an external unit capable of activating and controlling heating element via the interface that transmits commands given by the external unit, and (6) the item that is devoid of light sources. Id. (indentations and numbering added for clarity). We refer to these elements (1)-(6), below. To address (1), the luminosity of greater than 10, the Examiner relies on Nelson. Id. In particular, the Examiner finds that Nelson teaches that “it is known to provide a glass-ceramic substrate having a luminance L* greater than 10.” Id. (citing Nelson ¶ 10). In further addressing (1)-luminance greater than 10-while also addressing (2)-light transmission of less than 50%-the Examiner finds that Vilato ’491 teaches “a glass-ceramic substrate having a luminance L* value greater than 10, and Vilato ’491 further shows it is known to provide the glass substrate having a light transmission TL of between 5 to 40%.” Final Act. 4 (citing Vilato ’491 ¶ 33). To address (3), the opacity greater than 90 but less than or equal to 100, the Examiner relies on Beall for teaching a “glass ceramic substrate that exhibits an opacity that is greater than 85%.” Final Act. 4 (citing Beall ¶ 20). The Examiner explains that the claimed range encompasses Beall’s teaching of greater than 85%. See id. To address (4)-the claimed interface for communication-and (6)- the cooktop devoid of a light source-the Examiner relies on Schilling for teaching these limitations. See id. Appeal 2021-004094 Application 15/756,650 6 To address (5)-the external unit capable of activating and controlling heating element via the interface that transmits commands given by the external unit-the Examiner relies on Vilato ’103 for teaching this limitation. See id. The Examiner further relies on Harris and Beifuss for teaching “a worktop or cooktop having an interface that allows a wireless communication with an external unit to activate heating elements.” Id. In particular, the Examiner finds that Harris teaches an external unit that “includes a LCD display and a keypad that is in wireless communication with an interface . . . that transmits commands to control the heating elements.” Id. at 4-5 (citing Harris, col. 3, l. 57-col. 4, l. 10). The Examiner further cites to Beifuss for teaching an “external unit being a tablet PC or a smartphone which is known to include a touch screen with an interface . . . that performs a wireless communication with the external unit to control the heating elements.” Id. at 5. Based on the teachings of the cited art, the Examiner reasons that [I]t would have been obvious to obvious to one of ordinary skill in the art to adapt Wollgram with the glass ceramic worktop that exhibits the luminosity L*, the light transmission TL, and the opacity indicator as claimed to mask or conceal elements that are disposed underneath the worktop for aesthetic purposes as known in the art; and in view of Schilling and Vilato ’103, it would have been obvious to further adapt Wollgram with the interface to activate the elements such as the heating elements wherein the worktop can additional be devoid of light sources for display purposes as such lights are not required to operate elements associated with the worktop; and in view of Harris or Beifuss, it would have been obvious to one of ordinary skill in the art to adapt Wollgram with the interface that is in wireless communication with an external unit including a keyboard, a tablet, a cell phone, or a touch screen which are well known devices that can provide a wireless communication to remotely Appeal 2021-004094 Application 15/756,650 7 activate and control the heating elements as another known control arrangement for the convenience of the user. Id. b. Appellant’s Argument In contesting the rejection, Appellant argues that “the combination of references applied against the claims does not disclose, suggest, or otherwise teach one of ordinary skill in the art how to make at least Appellant’s claimed worktop element, requiring a substrate made of monolithic glass material and exhibiting a particular combination of luminosity, light transmission, and opacity characteristics.” Appeal Br. 4 (emphasis added). In support of this argument, Appellant submits the declaration of one of its inventors, Mr. Pablo Vilato (“Vilato Dec.,” dated Nov. 25, 2020), who testifies in relevant part (see Appeal Br. 6-7): None of Wollgram, Nelson, Vilato, or Beall, individually or in combination, provide any suggestion or direction that would cause one of skill in the art to select the three particular optical characteristics of the substrate described in Claim 1 above, nor do any of Wollgram, Nelson, Vilato, or Beall, individually or in combination, provide any teaching or suggestion as to how one of ordinary skill in the art would go about providing in a single substrate made of monolithic glass material all three of the particular optical characteristics of the substrate described in Claim 1. Vilato Dec. ¶ 7. Because none of Nelson, Vilato ’491, and Beall consider the interplay between all three of luminosity, light transmission, and opacity, these references even in combination fail to teach one of ordinary skill in the art how to make a substrate of monolithic glass material that meets the luminosity, light transmission, and opacity limitations of Claim 1 above. It is not the case that the components of monolithic glass materials Appeal 2021-004094 Application 15/756,650 8 can be chosen and varied in simple, predictable ways to provide any desired combination of multiple optical characteristics with any degree of certainty. Vilato Dec. ¶ 11. Appellant contends that “through paragraphs 7 and 11 of the Vilato Declaration, [Appellant established] that there is nothing in the combination of Wollgram, Nelson, Vilato ’491, and Beall that would teach one of ordinary skill how to produce a glass providing Appellant's claimed combination of luminosity, light transmission, and opacity characteristics.” Reply Br. 2. Appellant argues that Vilato’s testimony in paragraph 11 “explains why the combined references fail to enable the claimed substrate.” Appeal Br. 7; see also Reply Br. 2 (“Appellant has established that the combination of references applied against the claims does not disclose, suggest, or otherwise enable one of ordinary skill in the art how to make” the claimed invention.). c. Analysis We disagree with Appellant that the proposed combination is not supported by the teachings of the cited art. Appellant’s argument and Mr. Vilato’s testimony are not persuasive for the following three reasons. First, Appellant’s argument attacks the references individually, rather than considering what the combined references would have suggested to a person of ordinary skill in the art. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appeal 2021-004094 Application 15/756,650 9 Mr. Vilato’s testimony cites perceived shortcomings of the individual references that are ultimately irrelevant to the underlying rejection. For example, Mr. Vilato’s testimony that “Nelson is silent with regard to both light transmission TL and opacity” is inapposite to the rejection. Vilato Dec. ¶ 8 (emphasis added). The Examiner does not rely on Nelson for teaching these features. See Final Act. 4. Rather than relying on Nelson, the Examiner relies on Vilato ’491 for teaching “light transmission TL of between 5 to 40%” and Beall for teaching “an opacity that is greater than 85%.” See id. (citing Vilato ’491 ¶ 33, Beall ¶ 20). As another example, Mr. Vilato’s testimony that “Vilato ’491 is completely silent regarding opacity” (Vilato Dec. ¶ 9 (emphasis added)) ignores the fact that the Examiner relies on Beall-not Vilato ’491-for satisfying the claimed opacity. See id. Second, Appellant’s argument is unpersuasive as it appears to be premised on a misunderstanding of the law. Appellant argues that “there is nothing in the combination of Wollgram, Nelson, Vilato ’491, and Beall that would suggest Appellant’s particular combination of glass characteristics.” Appeal Br. 6. We infer from Appellant’s argument that Appellant believes the Examiner erred in failing to cite an express teaching for combining the cited art. See id. If our understanding is correct, we note that there is no requirement for the Examiner to cite an express teaching, suggestion, or motivation from the prior art to support the motivation to combine references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (holding an express teaching, suggestion, or motivation in the prior art is not a requirement for an obviousness determination). Rather, a skilled artisan is presumed to know something about the art apart from what the references explicitly teach. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (holding Appeal 2021-004094 Application 15/756,650 10 that an ordinarily skilled artisan must be presumed to know something about the art apart from what the references disclose); see also KSR, 550 U.S at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Here, we agree with the Examiner that a skilled artisan would have been motivated to modify Wollgram’s glass substrate for the reasons provided in the rejection, including for “aesthetic purposes.” See Final Act. 5. Third, we find that Mr. Vilato’s testimony is entitled to little or no weight, as Mr. Vilato fails to disclose underlying facts or data to support much of his testimony. See 37 C.F.R. § 42.65(a) (opinion testimony that does not disclose underlying facts or data “is entitled to little or no weight”); see also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“[W]hat the Board consistently did was accord little weight to broad conclusory statements that it determined were unsupported by corroborating references. It is within the discretion of the trier of fact to give each item of evidence such weight as it feels appropriate”); In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of little probative value in overcoming obviousness rejection). For example, Mr. Vilato’s testimony that “[i]t is not the case that the components of monolithic glass materials can be chosen and varied in simple, predictable ways to provide any desired combination of multiple optical characteristics with any degree of certainty” lacks citation to relevant evidence. See Vilato Dec. ¶ 11. Although Mr. Vilato cites to the prior art, as explained above, the testimony related to those citations amount to nothing more than attacking the references individually for teachings irrelevant to the underlying rejection. Notably, Appellant’s argument and Mr. Vilato’s Appeal 2021-004094 Application 15/756,650 11 testimony fail to address the Examiner’s reason for combining the cited art. See generally id.; see also generally Appeal Br.; see also generally Reply Br. In particular, Mr. Vilato fails to explain why a skilled artisan would have difficulty modifying Wollgram’s glass ceramic worktop to have the claimed luminosity, light transmission, and opacity, based on the teachings of the cited art, and for the purpose of improving the aesthetics while maintaining the functionality of Wollgram’s worktop. See Final Act. 5; see also Ans. 5 (“the combination of the applied art . . . provides the decorative and functional purposes which are also reasonably pertinent to the problem/solution Appellant was also concerned.”). For the foregoing reasons, Appellant’s argument does not identify error in the Examiner’s rejection. Therefore, we affirm the rejection of independent claim 1, and of claims 2-5, 8, 9, 12, 13, 16-18, and 21-26, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). II. Claim 6 Appellant argues that Claim 6 requires that the substrate exhibit a luminosity L* of greater than 15, a haze of greater than 20%, a light transmission TL of less than 32%, and an opacity indicator of greater than 95 and of less than or equal to 100, thereby providing an advantageous translucence/opaqueness (see, e.g., specification page 9, lines 13-15). None of the applied references disclose, suggest, or enable this particular, refined combination of limitations, nor do they predict the benefits this combination of limitations provides. Appeal Br. 10. Appellant’s argument is not persuasive. Appeal 2021-004094 Application 15/756,650 12 Other than repeating the entirety of claim 6 and asserting, without any explanation, that the prior art fails to “disclose, suggest, or enable” the claimed limitations, Appellant’s argument does not identify error in the Examiner’s findings. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). For example, the Examiner relied on Vilato ’491 having a luminosity of greater than 15, a haze of at least 50%, and a light transmission of between 5% and 32%. Final Act. 4. The Examiner further relied on Beall for teaching an opacity that would encompass greater than 95 and less than 100. See id. (citing Beall ¶ 20). Appellant’s argument fails to address any of these particular findings. Accordingly, we affirm the rejection of claim 6. III. Claim 7 Appellant argues that Claim 7 requires that the substrate or the glass material comprise colorants, or be provided with a coating conferring on the substrate or the glass material a different coloring from its own coloring. Such aspects of the claimed item of equipment provide wide latitude in changing or altering the appearance of all or a part of the substrate in a way that is impossible for the applied prior art to suggest, as the applied art does not, and cannot, provide Appellant’s starting substrate with its intrinsic claimed characteristics of luminosity, haze, and light transmission, and thereby cannot provide the product of such a substrate altered by colorants or a coating, or its visual effect. Appeal Br. 10-11. Appellant’s argument is not persuasive of Examiner error. The Examiner finds that Wollgram teaches a “glass substrate provided with a coating . . . with different colors.” Final Act. 3 (citing Wollgram ¶ 26). This teaching satisfies the limitation of claim 7, which requires “the Appeal 2021-004094 Application 15/756,650 13 substrate or the glass material comprises colorants . . . .” See Appeal Br. 13 (Claims App.). Appellant’s argument “that it is impossible for the applied prior art to suggest” the claimed limitations does not specifically address the Examiner’s findings or otherwise identify error in the rejection. See id. at 10-11; Lovin, 652 F.3d at 1357. Accordingly, we affirm the rejection of claim 7. CONCLUSION We affirm the rejection of 1-9, 12, 13, 16-18, and 21-26. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-9, 12, 13, 16- 18, 21-26 103 Wollgram, Nelson, Vilato ’491, Beall, Schilling, Vilato ’103, and Harris or Beifuss 1-9, 12, 13, 16- 18, 21-26 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). AFFIRMED