Ex Parte 6623846 et al

Patent Trial and Appeal Board

Oct 15, 2012

95000424 (P.T.A.B. Oct. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,424 12/19/2008 6623846 205420-9009 3336
1131 7590 10/16/2012
MICHAEL BEST & FRIEDRICH LLP (Chi)
Two Prudential Plaza
180 North Stetson Avenue, Suite 2000
CHICAGO, IL 60601
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
10/16/2012 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 Corporation
Patent Owner and Appellant

v.

Cardinal CG Company
Requester and Respondent
____________

Appeal 2012-003392
Reexamination Control 95/000,424
Patent 6,623,846 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2012-003392
Reexamination Control 95/000,424
Patent 6,623,846 B2

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Patent Owner Guardian Industries Corporation (hereinafter “Patent
Owner”) requests rehearing under 37 C.F.R. § 41.79 of our decision mailed
April 25, 2012 (hereinafter “Decision”) in the appeal of the reexamination of
United States Patent 6,623,846 B2 (hereinafter the “‘846 Patent”) in which
we affirmed the Examiner’s decision to reject claims 14, 15, and 18-22.
(Request for Rehearing filed May 25, 2012, hereinafter “Request.”) Third-
Party Requester Cardinal CG Company (hereinafter “Requester”) filed
comments on Patent Owner’s Request for Rehearing. (Respondent’s
Comments in Opposition to Appellant’s Request for Rehearing filed June
22, 2012, hereinafter “Opposition”.)
Patent Owner contends that the Board misapprehended the teachings
of Arbab and overlooked the declarations of Philip J. Lingle.1 (Request 1.)
Patent Owner further contends that the Board should have addressed the
arguments challenging the Examiner’s reliance on the Declarations of
Annette Krisko.2 (Request 1.)
Initially, we decline Patent Owner’s request to vacate the Decision in
light of the Examiner’s treatment of the Krisko Declarations submitted by

1 Declaration under 37 C.F.R. § 1.132 of Philip J. Lingle executed on
April 3, 2009; Declaration under 37 C.F.R. § 1.132 of Philip J. Lingle
executed on May 17, 2010.

2 Declaration of Annette Krisko executed on May 5, 2009;
Supplemental Declaration of Annette Krisko executed on June 15, 2010.
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Reexamination Control 95/000,424
Patent 6,623,846 B2

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Requester as evidence of unpatentability.3 Although the Krisko Declarations
were cited in the Decision (Decision, p. 5) and cited by the Examiner in the
Response to Arguments section of the Right of Appeal Notice (RAN pp. 38,
39, 41, 44, 45, 50, 58, 59, 61, 72 (N1)), the Examiner did not rely on the
Krisko Declarations in formulating the rejections (RAN 11-16, 17-24), and
the Decision did not rely on the Krisko Declarations in affirming the
Examiner’s rejections. (Decision 11-13.) Rather, the Decision relied on the
prior art, specifically the combined teachings of Boire or Hartig in view of
Macquart, and Arbab as set forth by the Examiner, in order to conclude that
the claimed arrangement would have been obvious. (Decision 8-10, FF 4
and 7-13) Thus, the statements made in the Krisko Declarations regarding
the level of ordinary skill in the art and what the ordinary skilled artisan
would have understood from the prior art did not affect the outcome of the
present appeal. Therefore, Patent Owner’s request is moot.
Arbab
Patent Owner advances several arguments in order to support the
contention that the Board misapprehended the teachings of Arbab. (Request
2-7.) Specifically, Patent Owner contends that Arbab never discloses a
silicon oxynitride protective layer that is located below a functional layer
such as a silver layer; that one of ordinary skill in the art would not have
ignored layer 8b in Boire and would have graded layer 5a instead; that one

3 Patent Owner discusses Lingamfelter v. Kappos (Case No. 2011-1449),
where the issue of the Board’s jurisdiction to address challenges to
declarations submitted by third party requesters was discussed at oral
argument. (Request 9, 10.) However, in the opinion, which issued after the
Request was filed, the Court did not reach this argument. 2012 WL
3218529, *2 n.3 (Fed. Cir. 2012) (non-precedential).
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Reexamination Control 95/000,424
Patent 6,623,846 B2

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of ordinary skill in the art would not have graded all layers of silicon
oxynitride in Boire (both layers 5a and 8b); and similarly that one of
ordinary skill in the art would have only applied the teachings of Arbab to
layer e’ of Hartig in view of Macquart. (Request 2-6.) Patent Owner also
contends that the Board failed to address Patent Owner’s argument that
Arbab teaches away from grading layer 5a in Boire and layer e’ in Hartig,
and therefore the Board relied on impermissible hindsight in the Decision.
(Request 6-7.)
Initially, we note that a Request for Rehearing is limited to points that
were specifically misapprehended or overlooked by the Board. See 37
C.F.R. § 41.79(b)(1). As pointed out by Requester (Opposition 2-3, 8),
Patent Owner’s arguments regarding Arbab, Boire, Hartig, and Macquart are
similar to those advanced by Patent Owner in Patent Owner’s Appeal Brief
and identified and addressed in the Decision. (Decision 6-7, 11-13.) We see
no reason to repeat that analysis here. Accordingly, we do not agree with
Patent Owner that we misapprehended or overlooked the teachings of Arbab
and how one of ordinary skill in the art would have applied those teachings
to Boire or Hartig in view of Macquart.
Moreover, contrary to Patent Owner’s assertions, we did not overlook
Patent Owner’s teaching away argument. Presumably, Patent Owner is
referring to the argument that Arbab’s gradient layer should be located in the
outermost position in the stack and positioning the gradient layer in the
claimed position would destroy the protection provided by that layer. (PO
App. Br. 10-11.)
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Patent 6,623,846 B2

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However, we addressed this argument in the Decision on page 12,
where it is stated:
In this regard, we are also not convinced by Patent
Owner’s argument that in grading the silicon oxynitride layer of
Boire, the resulting combination would frustrate the protective
nature of the silicon oxynitride layer disclosed in Arbab. We
have not been directed to sufficient evidence that as a result of
grading the silicon oxynitride layers of Boire, the coating stack
would be inoperative. Arbab discloses multiple benefits of
graded silicon oxynitride layers, and we have not been directed
to sufficient evidence that the application of Arbab’s technique
to the silicon oxynitride layers of Boire would have been
beyond the skill level of the average worker in the art.

Accordingly we are not persuaded that we misapprehended the
teachings of Arbab, or engaged in impermissible hindsight in combining the
teachings of Arbab to Boire or Hartig in view of Macquart.
We also do not agree with Patent Owner’s arguments that finding of
fact (“FF”) 4 is erroneous. (Request 3.) FF 4 states: “Boire discloses that
silicon oxynitride may be used and an alternative to silicon nitride layer 5a.
(Col. 5, ll. 27-30.)” As pointed out by Requester, Boire expressly discloses
that silicon oxynitride may be used as an alternative to silicon nitride.
(Opposition 1-2.) Specifically, Boire discloses: “The barrier layer is, in
particular, based on silicon compounds of the silicon oxide SiO2, silicon
oxycarbide SiOxCy or silicon oxynitride. SiOxNy type. It may also be based
on nitrides, of the silicon nitride Si3N4 . . .type.” (Col. 5, ll. 27-30.)
Accordingly, FF 4 is supported by Boire’s disclosure.

Appeal 2012-003392
Reexamination Control 95/000,424
Patent 6,623,846 B2

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Lingle Declarations
Patent Owner argues that the Board overlooked the Lingle
Declarations, and specifically Lingle’s statements that adjustments to the
stack to obtain the same optical properties would unpredictably affect the
mechanical and/or chemical durability of the stack in an unpredictable
manner. (Request 7-8.)
Requester points out that the Lingle Declarations are not relevant to
the oxygen gradient limitations and are directed to claim limitations that are
no longer present in the claims. (Opposition 10-12.) Requester also points
out that the Arbab reference, while teaching the benefits of oxygen graded
silicon oxynitride for optical reasons also discloses that silicon oxynitride
having an oxygen gradient has good chemical durability. (Opposition 12-13,
citing e.g., Arbab, page 32, ll. 8-11.)
We agree with Requester that the Lingle Declarations do not provide
persuasive evidence regarding the effects of silicon oxynitride having an
oxygen gradient on the mechanical and chemical stability of a stack. Indeed,
Arbab itself provides evidence that a silicon oxynitride layer having an
oxygen gradient would provide sufficient chemical stability to a stack.
(Arbab, page 32, ll. 8-11.) Thus, we did not misapprehend or overlook the
Lingle Declarations in the Decision.
Therefore, we decline to make any changes in the Decision mailed
April 25, 2012. Accordingly, the Request for Rehearing is denied.
DENIED

Appeal 2012-003392
Reexamination Control 95/000,424
Patent 6,623,846 B2

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PATENT OWNER:
MICHAEL BEST & FRIEDRICH LLP
TWO PRUDENTIAL PLAZA
180 NORTH STETSON AVENUE, SUITE 2000
CHICAGO, IL 60601

THIRD-PARTY REQUESTER:
FREDRIKSON & BYRON
INTELLECTUAL PROPERTY GROUP
200 SOUTH SIXTH STREET
SUITE 4000
MINNEAPOLIS, MN 55402

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