90009782 (P.T.A.B. May. 17, 2013)

Ex Parte 6,193,856 et al

Patent Trial and Appeal BoardMay 17, 2013

90009782 (P.T.A.B. May. 17, 2013)

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. 90/009,782 07/22/2010 6,193,856 097007-0104 5783 22428 7590 05/17/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER DIAMOND, ALAN D ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 05/17/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Guardian Industries Corp. Requester and Appellant v. Asahi Glass Co., Ltd. and AGC Plat Glass Patent Owner and Respondent ____________ Appeal 2013-000112 Ex Partes Reexamination Control 90/009,782 Patent U.S. 6,193,856 B1 Technology Center 3900 ____________ Before HUBERT C. LORIN, LORA M. GREEN, and RICHARD M. LEBOVITZ, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal by the Patent Owner from the Patent Examiner‟s decision to reject pending claims 1-28 in an ex partes reexamination of U.S. Patent No. 6,193,856. The Board‟s jurisdiction for Appeal 2013-000112 Ex Partes Reexamination Control 90/009,782 Patent 6,193,856 B1 2 this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm the Examiner. I. BACKGROUND The patent in dispute in this appeal is U.S. Patent No. 6,193,856 B1, issued February 27, 2001 (“the „856 patent”). The Patent Owner and Real Party in Interest is Asahi Glass Co., Ltd. and AGC Plat Glass. Appeal Br. 2. A request for ex parte reexamination of the „856 patent was made on July 22, 2010 by third party requester Guardian Industries Corp. Request for Reexamination 1. This appeal is related to inter partes reexamination 95/000,563, and is further related to the litigation styled Asahi Glass Co., Ltd. and Asahi Flat Glass North America, Inc. v. Guardian Industries Corp., Case No. No. 09- 515 (SLR) (D. Del.). In that litigation, the jury confirmed the patentability of claim 16 of the '856 patent “over all references” which Patent Owner contends were put forward in this reexamination. Appeal Br. 2. Patent Owner did not provide a list of those “references” in their Appeal Brief. In the present reexamination appeal, an oral hearing took place on December 19, 2012. A transcript of the oral hearing will be entered in due course. Claims 1-28 are pending and stand rejected by the Examiner. Claims 1-16 were original claims of the „856 patent. Claims 17-28 were added during the reexamination proceeding. Patent Owner appeals the Examiner‟s rejections of claims 1-28. The appealed rejections are listed on pages 4-5 of the Appeal Brief. Appeal 2013-000112 Ex Partes Reexamination Control 90/009,782 Patent 6,193,856 B1 3 I.A. CLAIMS 1. A sputtering target comprising a substrate and a target material formed on the substrate, wherein the target material comprises as a main component an oxygen deficient oxide; the oxygen deficient oxide comprises at least one metal oxide of a chemical formula MOx that is deficient in oxygen as compared with a stoichiometric composition of the at least one metal oxide; and M and x in the at least one metal oxide of the chemical formula MOx are selected from a group of M and associated values of x consisting of Nb, 2