Ex Parte Amin et alDownload PDFPatent Trial and Appeal BoardNov 21, 201714707106 (P.T.A.B. Nov. 21, 2017) Copy Citation 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. 14/707,106 05/08/2015 Jaymin Amin SP14-116T 8959 22928 7590 11/24/2017 TORNTNO TNmRPORATFD EXAMINER SP-TI-3-1 CORNING, NY 14831 JOHNSON, NANCY ROSENBERG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 11/24/2017 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): u sdocket @ corning .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAYMIN AMIN, SHANDON DEE HART, KARL WILLIAM KOCH III, ERIC LOUIS NULL, XU OUYANG, CHARLES ANDREW PAULSON, and JAMES JOSEPH PRICE Appeal 2017-003526 Application 14/707,106 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s February 18, 2016 decision finally rejecting claims 1—30. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellants state that the real party in interest is Coming, Inc. (Appeal Br. 2). Appeal 2017-003526 Application 14/707,106 CLAIMED SUBJECT MATTER Appellants’ invention is directed to articles with multi-layer anti-reflective coatings, which exhibit abrasion resistance, low reflectivity, and colorless transmittance and/or reflectance (Spec. 12). Claims 1, 5, and 27 are representative and are reproduced below from the Claims Appendix of the Appeal Brief (emphasis added): 1. An article comprising: a substrate having a major surface; and an anti-reflective coating having a thickness of about 1 pm or less disposed on the major surface, the anti-reflective coating comprising an anti-reflective surface, wherein the article exhibits a maximum hardness of about 8 GPa or greater as measured by a Berkovich Indenter Hardness Test along an indentation depth of about 50 nm or greater, wherein the article exhibits: a single side light reflectance of about 1 % or less over the optical wavelength regime, and wherein the article exhibits a b* value, in reflectance, in the range from about -5 to about 1 as measured on the anti- reflective surface only at all incidence illumination angles in the range from about 0 degrees to about 60 degrees. 5. The article of claim 1, wherein the article exhibits an abrasion resistance comprising an average roughness Ra, as measured by atomic force microscopy, of about 12 nm or less, and wherein the abrasion resistance is measured after a 500- cycle abrasion using a Taber Test. 27. An article comprising: a substrate having a major surface; and an anti-reflective coating having a thickness of about 1 pm or less disposed on the major surface, 2 Appeal 2017-003526 Application 14/707,106 wherein the article exhibits an average visible photopic reflectance of about 0.7% or less over the optical wavelength regime at normal incidence under a D65 or F2 illuminant, wherein the article exhibits ab* value, in reflectance, in the range from about -5 to about 1 as measured on the anti- reflective surface only at all incidence illumination angles in the range from about 0 degrees to about 60 degrees under a F2 illuminant, and wherein the article exhibits a reflectance angular color shift of less than about 4, as measured on the anti-reflective surface from normal incidence to an incident illumination angle of about 60 degrees under a D65 illuminant orF2 illuminant and wherein angular color shift is calculated using the equation sf((a*2-a*i)2+(b*2-b*i)2) with a*f/ and b*i representing the coordinates of the article when viewed at normal incidence and a *2[] and b *2 representing the coordinates of the article when viewed at the incident illumination angle, wherein the article exhibits a single side light reflectance of about 1.5% or less over the optical wavelength regime. Appeal Br. 23, 24, 30 (Claims App.). REJECTIONS (I) Claims 1—4, 6—15, 18—22, 24, 25, and 27—30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Reymond,2 as evidenced by Suzuki.3 (II) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Watanabe.4 2 Reymond et al., U.S. Patent Pub. No. 2009/0104385 Al, published April 23, 2009. 3 Suzuki et al., U.S. Patent Pub. No. 2010/0027383 Al, published February 4, 2010. 4 Watanabe et al., U.S. Patent Pub. No. 2009/0052041 Al, published February 26, 2009. 3 Appeal 2017-003526 Application 14/707,106 (III) Claim 16 is rejected under 35 U.S.C. 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Lee.5 (IV) Claims 17 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Suzuki. (V) Claim 26 is rejected under 35 U.S.C. § 103(a) as unpatentable over Reymond and further in view of Machol.6 Appellants offer separate arguments in support of dependent claims 2 and 18—30 (subject to Rejections I and III—V) and claim 5 (subject to Rejection II) (see Appeal Br. 16, 18). Otherwise, Appellants’ arguments are directed to limitations recited in independent claims 1,18, 24, and 27 (see id. at 12—17, 19-21; Reply Br. 4—6). Accordingly, our discussion will focus on Rejection I. Dependent claims 3, 4, and 6—17 (subject to Rejections I, III, and IV) will stand or fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). DISCUSSION Rejections I and III—V Appellants broadly argue that the Examiner’s obvious determination is erroneous because “Reymond is lacking: the combination of hardness, reflectance, and color properties” (Appeal Br. 12; see generally id. at 12—16; Reply Br. 4—6). 5 Lee et al., U.S. Patent Pub. No. 2010/0028607 Al, published February 4, 2010. 6 Machol, U.S. Patent No. 5,719,705, issued February 17, 1998. 4 Appeal 2017-003526 Application 14/707,106 The Examiner finds that Reymond discloses a transparent substrate having an antireflection coating, made from a stack of thin dielectric layers of alternating high and low refractive index, with a total thickness of 238— 293 nm (Final Act. 3 (citing Reymond Abstract; Table 1)). According to the Examiner, Reymond discloses dielectric layer thicknesses and refractive index criteria for achieving “an anti-reflection effect over a broad low-light reflection band[,] having neutral tint in transmission^] and an attractive appearance in reflection” (Ans. 3 (citing Reymond 18—21, 35)). The Examiner determined, inter alia, that “[i]t would have been obvious to one of ordinary skill in the art to design a film with a reflectance of 1% or less and a b* of almost zero to have a neutral color as taught in Reymond through varying the refractive indices and physical thicknesses in the coatings” (Final Act 3, 7, citing Reymond 15, 35, 39; see also Final Act. 7, 8, 9,11-12, 14). Appellants make the following arguments: (1) with respect to claims 1 and 24, “[n]one of the Examples in Reymond exhibit a combination of reflectance of less than or equal to about 1% and the claimed b* value range” (Appeal Br. 12—13; see also Reply Br. 3); (2) with respect to claims 18 and 27, none of Reymond’s Examples exhibit the combination of an article exhibiting a single side light reflectance of about 1.5% or less over the optical wavelength regime and a reflectance angular color shift of less than about 4, as measured on the anti- reflective surface from normal incidence to an incident illumination angle of about 60 degrees under a D65 illuminant or F2 illuminant (Appeal Br. 13; see also Reply Br. 3, 6); 5 Appeal 2017-003526 Application 14/707,106 (3) the Examiner has not articulated why Reymond’s modification of refractive indices and thicknesses would lead one of skill in the art to the claimed combination of reflectance, hardness, and neutral color (Appeal Br. 15; see also Reply Br. 5); (4) “as Reymond achieves the color properties claimed, he walks farther away from the reflectance values claimed [. . . a]nd when Reymond comes close to the reflectance values claimed, he walks farther away from the color properties as claimed” (Appeal Br. 14; see also Reply Br. 1—2); (5) because “hardness is not disclosed in Reymond, there could be no disclosure, teaching or suggestion of modifying the stacked layers ... to arrive at the claimed combination of hardness, reflectance and color” (Appeal Br. 16); and (6) Reymond fails to disclose how to achieve the optical performance recited in claims 2 and 18—30 under either a D65 or F2 illuminant (id.). These arguments are not persuasive of reversible error. With regard to arguments (1), (2), and (3), it is well established that a reference is good for all it fairly teaches a person having ordinary skill in the art. E.g., In re Mills, 470 F.2d 649, 651 (CCPA 1972). Appellants’ arguments focus solely on Reymond’s Examples while dismissing teachings relevant to the Examiner’s rejections. As the Examiner finds, Reymond specifically teaches a desired reflectance of 1.5% or less, neutral color in transmission, and almost neutral color in reflectance, i.e., b* almost 0 (Final Act. 3, citing Reymond H 15, 35, 39). The Examiner further finds that Reymond teaches that these characteristics are achieved through varying the refractive indices and thickness of stacked layers (Ans. 3, citing Reymond 1115—21, 35; see also Reymond 126). Absent factual evidence showing 6 Appeal 2017-003526 Application 14/707,106 otherwise, we discern no reversible error in the Examiner’s reasonable determination that one of ordinary skill in the art would have reasonably inferred that Reymond’s antireflection coating could be modified to achieve the claimed combination of reflectance, hardness, and neutral color (Ans. 4). In connection with argument (3), the Supreme Court has made clear that an obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). That is because “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. As pointed out by the Examiner, Reymond fairly teaches the basic requirements of thickness and refractive index of each layer and that varying each achieves the reflectance and color neutrality taught in Reymond (Ans. 4). The fact that Appellants have recognized other properties which would flow naturally from following the teachings or suggestions from the applied prior art for varying the thickness and refractive index of each dielectric layer cannot be the basis for patentability when the differences, if any, would otherwise have been obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Appellants argue further in connection with arguments (1) and (2) that the Examiner reversibly erred in finding that “Reymond’s broad desire to have a reflectance of ‘less than 1.5%’ ... is sufficient teaching to render obvious Appellants’] claimed reflectance of about ‘1% or less’” (Reply Br. 6 (citing Ans. 3—4)). According to Appellants, “1.45%, 1.4%, 1.35%, 1.3%, 1.25%, and 1.2%, are all ‘less than 1.5%,[’] but are not ‘1% or less[’]” (Reply Br. 6). 7 Appeal 2017-003526 Application 14/707,106 We are unpersuaded because, inter alia, the Examiner’s determination that Reymond suggests overlapping ranges for the requisite reflectance is not in dispute (see, e.g., Final Act. 3, generally Appeal Br.). It is well established that: a prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. [Citations omitted.] Where the ‘claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap.’ In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003)). When the difference between the claimed invention and the prior art is some range or other variable within the claims, the Federal Circuit has consistently held that the Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellants to establish (1) that the alleged unexpected results presented as being associated with the claimed invention are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). On this record, Appellants have not made such a showing. Therefore, we are unpersuaded by arguments (1), (2), and (3). In connection with argument (4), Appellants contend that Reymond would have led “one of ordinary skill in the art away from that which Appellants’] have claimed, i.e., both desired color properties and low 8 Appeal 2017-003526 Application 14/707,106 reflectance” (Appeal Br. 16). However, Reymond teaches that varying the thickness of each dielectric layer provides “[t]he best results and compromises between the various properties desired.” See Reymond 126. A person of ordinary skill in the art would have understood and weighed the tradeoff in benefits between color properties and reflectance. Winner Int 7 Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit,. . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”); see Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (“a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate the motivation to combine”). Therefore, we are not persuaded by Appellants’ assertion that Reymond would have led one of ordinary skill in the art away from achieving both desired color properties and low reflectance in an anti-reflective coating. With respect to argument (5), Appellants have not identified reversible error in the Examiner’s finding that Reymond discloses the claimed hardness. As the Examiner finds, Reymond’s SfNTSiCF coating contains a silicon nitride content of 30 to 50 vol % to a depth of 150 nm (Ans. 5, citing Reymond Table 1,149). Appellants have not shown that it was unreasonable or erroneous for the Examiner to rely on Suzuki’s evidence that such a structure would have resulted in a hardness of at least 24 GPa (Ans. 5, citing Suzuki Abstract, Table 1, 11, 14). With regard to argument (6), Appellants have not identified reversible error in the Examiner’s finding that Reymond suggests the claimed optical 9 Appeal 2017-003526 Application 14/707,106 performance under either D65 or F2 illuminant. As the Examiner finds, Reymond teaches that antireflection coatings are used for windows and indoor glass surfaces (Ans. 6, citing Reymond 13). Appellants do not dispute the Examiner’s position that: (i) a D65 illuminant is equivalent to noon daylight and an F2 illuminant is equivalent to cool white fluorescent, or (ii) the objects with Reymond’s anti-reflective coating would have been expected to be subjected to both of the claimed illuminants (Ans. 6). Therefore, we agree with the Examiner that it would have been obvious to one of ordinary skill in the art that Reymond suggests the requisite optical performance recited in claims 2 and 18—30 under either D65 or F2 illuminants. Appellants have not persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness as to claims 1, 2, and 18—30. Dependent claims 3, 4, and 6—17 will fall with independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, we affirm the rejections of claims 1—4 and 6—30 for the reasons set forth above and explained in the Examiner’s Final Office Action and Answer. Rejection II Appellants’ arguments urging reversal of this rejection rely, inter alia, on the same arguments set forth above urging reversal of Rejections I and III—V (see Appeal Br. 18). For the reasons set forth above, Appellants have not identified any deficiencies in the Examiner’s application of Reymond’s teachings, as evidenced by Suzuki, to render instant claim 1 obvious. Appellants make the following separate arguments urging reversal of Rejection II: (i) Watanabe is silent as to any disclosure that the anti- 10 Appeal 2017-003526 Application 14/707,106 reflection layer would exhibit an arithmetic mean roughness Ra in the range 1.5—3.0 nm after a 500-cycle abrasion using a Taber Test (id.); and (ii) modification of Reymond’s coating to exhibit Watanabe’s alleged roughness would alter the optical performance of the coating (id.). We are not persuaded of reversible error in the Examiner’s rejection. Watanabe’s silence with respect to a 500-cycle abrasion using a Taber Test does not render the applied prior art deficient because the Examiner finds that: (i) Watanabe teaches that the disclosed arithmetic mean roughness Ra in the range 1.5—3.0 nm provides adequate mechanical characteristics, such as rub resistance (Ans. 7, citing Watanabe 149); and (ii) Reymond’s anti-reflective coating exhibits the requisite hardness recited in claim 1, from which claim 5 depends on (see supra p. 9). Therefore, we agree with the Examiner that one of ordinary skill in the art would have expected that the roughness of a coating with rub resistance and high hardness would not be significantly changed after a 500-cycle abrasion using a Taber Test. Furthermore, Appellants’ arguments are not persuasive that the ordinarily skilled artisan would have expected that such a coating would shift optical properties. As the Examiner finds, Watanabe is directed to maintaining anti-reflection (while exhibiting an arithmetic mean roughness Ra in the range 1.5—3.0 nm) (Ans. 7—8 (citing Watanabe, 111)). Accordingly, we affirm the rejection of claim 5 for the reasons set forth above and explained in the Examiner’s Final Office Action and Answer. 11 Appeal 2017-003526 Application 14/707,106 CONCLUSION We AFFIRM the rejection of claims 1—4, 6—15, 18—22, 24, 25, and 27—30 under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki. We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Watanabe. We AFFIRM the rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Lee. We AFFIRM the rejection of claims 17 and 23 under 35 U.S.C. § 103(a) as unpatentable over Reymond, as evidenced by Suzuki, and further in view of Suzuki. We AFFIRM the rejection of claim 26 under 35 U.S.C. § 103(a) as unpatentable over Reymond and further in view of Machol. 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 12 Copy with citationCopy as parenthetical citation