Ex Parte Boire et al

Board of Patent Appeals and Interferences

Jul 23, 2010

10419872 (B.P.A.I. Jul. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIPPE BOIRE and XAVIER TALPAERT
____________

Appeal 2009-004841
Application 10/419,872
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and JEFFREY T. SMITH,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 25, 27, and 28, all of the pending claims in the above-
identified application.2 We have jurisdiction under 35 U.S.C. §§ 6 and 134.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004841
Application 10/419,872

STATEMENT OF THE CASE
The subject matter on current appeal is related to the subject matter
decided in previous Appeal No. 2009-001296 (Application 10/079,483) on
May 28, 2008. The subject matter on current appeal, like that of the related
appeal, is directed to methods of depositing “a photocatalytically-activatible
self-cleaning coating” on a surface of a glass substrate via using a chemical
vapor deposition technique or a spray pyrolysis technique. (Compare claims
25, 28 and 37 reproduced in the decision on Appeal No. 2009-001296 with
the claims reproduced below.) Details of the currently appealed subject
matter are recited in claims 25, 27, and 28 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
25. A method comprising the steps of:
providing a float-glass strip,
positioning a chemical vapor deposition coating apparatus over a
surface of the float-glass strip, wherein the float-glass strip is at a
temperature of 400 to 650 ºС, and
directing a metal oxide precursor selected from the group consisting
of titanium tetrachloride and titanium tetraisopropoxide through the
chemical vapor deposition coating apparatus over a surface of the float-glass
strip and annealing the float-glass strip to produce titanium oxide in a
crystalline phase as a photocatalytically-activatible self-cleaning coating
over the surface of the float-glass strip.
27. In a method for forming a float-glass strip wherein the method
comprises providing a float-glass strip, the improvement comprising:
depositing by a process selected from the group consisting of spray
pyrolysis and chemical vapor deposition a crystalline phase of a
photocatalytically-activatible self-cleaning coating over a surface of the
float-glass strip.
28. A method comprising the steps of:
2 See page 2 of the Supplemental Appeal Brief (“App Br.”) filed January 7,
2008.
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Application 10/419,872

providing a glass substrate prepared by a float-glass process,
depositing a photocatalytically-activatible self-cleaning coating over
the surface of the glass substrate by a process selected from the group
consisting of chemical vapor deposition and spray pyrolysis so that the
coating has a thickness between 20 nm and 1 micron.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following evidence at page 3 of the Answer
(“Ans.”) dated July 17, 2008:
Van Laethem 4,414,015 Nov. 8, 1983
Watanabe ‘816 WO 95/15816 Jun. 15, 1995
Soubeyrand 5,798,142 Aug. 25, 1998
Watanabe ‘866 5,853,866 Dec. 29, 1998

Fukayama et al. “Highly Transparent Photoactive TiO2 Thin Film
Coated on Glass Substrate,” 187th Electrochemical Society Meeting, Reno,
21-26 May 1995 Extended Abstracts, 95-1 (Abstract 735, p 1102).

Takahashi et al., “Pt-TiO2 Thin Films on Glass Substrates as Efficient
Photocatalysts,” Journal of Materials Science, Vol. 24, pp. 243-246 (1989).

Cui et al., “Photcatalytic Properties of Titanium (IV) Oxide Thin Films
Prepared by Spin Coating and Spray Pyrolysis,” Mat. Res. Bull., Vol. 28, pp.
195-201, (1993).

Boire et al., US Patent Application 10/419,872 filed April 22, 2003.

Boire et al., US Patent Application 10/856,876 filed June 1, 2004.

Appellants request review of the following grounds of rejection set
forth in the Answer:
1. Claims 25, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Fukayama, Soubeyrand, and Van Laethem;
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Appeal 2009-004841
Application 10/419,872

2. Claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Takahashi, Soubeyrand and Van Laethem;
3. Claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable
over the combined disclosures of Cui, Soubeyrand, and Van Laethem; and
4. Claims 25, 27, and 28 on the ground of nonstatutory
obviousness-type double patenting as provisionally unpatentable over claims
25 through 31 and 37 through 55 of copending Application 10/079,483 or
claims 25, 33 through 35, 38, 39, 44 through 51, 77, and 78 of copending
Application 10/856,876 (App. Br. 3-4).
ISSUES AND CONCLUSIONS
The dispositive question is: Have Appellants identified reversible
error in the Examiner’s determination that one of ordinary skill in the art
would have been led to form a glass substrate coated with photocatalytically
active TiO2 or Pt-TiO2 film having the claimed thicknesses, as taught by
Fukayama, Takahashi, or Cui via applying the claimed known
photocatalytically active TiO2 or Pt-TiO2 coating producing precursors on a
surface of a float glass strip (a ribbon or strip at the outlet of the float-bath
chamber) during the manufacturing of the coated glass substrate as
suggested by Soubeyrand and Van Laethem, within the meaning of 35
U.S.C. § 103(a)? On this record, we answer this question in the negative.
ANALYSIS, FINDINGS OF FACT, AND PRINCIPLES OF LAW
I. 35 U.S.C. § 103(a):
Appellants do not dispute the Examiner’s finding that Fukayama and
Cui individually teach forming a glass substrate deposited with a
photocatalytically-activatible self-cleaning crystalline TiO2 coating having
the claimed thickness via applying the claimed photocatalytically active
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Appeal 2009-004841
Application 10/419,872

TiO2 coating producing precursors (e.g., titanium tetraisopropoxide) on a hot
glass substrate having a temperature ranging from 400 to 500 o C with either
a CVD/spray coating apparatus or a spray pyrolysis coating apparatus
positioned over the surface of the glass substrate. (Compare Ans. 4 and 6
with App. Br. 4-6 and 10-11.) Nor do Appellants dispute the Examiner’s
finding that Takahashi teaches forming a glass substrate with a
photocatalytically-activatible self-cleaning crystalline Pt-TiO2 coating
having the claimed thickness by applying the claimed TiO2 coating
producing precursor on the surface of the glass substrate via a known spray
pyrolysis deposition technique. (Compare Ans. 5 with App. Br. 8-9.)
Rather, Appellants contend that one of ordinary skill in the art would not
have been led to coat a float-glass strip with the known photocatalytically-
activatible TiO2 or Pt-TiO2 film producing precursors to form the coated
glass substrate taught by Fukayama, Takahashi, or Cui (App. Br. 4-11).
According to Appellants, there is no reasonable expectation of successfully
forming the photocatalytically-activatible self-cleaning TiO2 or Pt-TiO2
coated glass substrate taught by Fukayama, Takahashi, or Cui using a float-
glass strip (App. Br. 5-9 and 11). However, we are not persuaded such a
contention.
As is apparent from col. 2, ll. 24-26, of Soubeyrand, its coating
method, like the method of Fukayama, Takahashi, or Cui, is directed to
pyrolytically forming a coating on a glass substrate at an elevated
temperature. Soubeyrand teaches that this coating method includes
continuously applying a silica coating producing precursor on a float glass
ribbon (a ribbon at the outlet of the float-bath chamber) during the
manufacture of a silica coated glass substrate “in order to take advantage of
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Appeal 2009-004841
Application 10/419,872

factors such as the residual temperature and the pristine condition of the
glass substrate” (col. 2, ll. 26-31). According to Soubeyrand, this coating
method was also known to be used to form other desired coatings (inclusive
of the coatings taught by Fukayama, Takahashi, or Cui) on a float glass
ribbon in order to take the advantage of the residual heat from the float glass
ribbon forming process (col. 1, ll. 18-42, especially col. 1, ll.38-42).
Further, Soubeyrand teaches that this coating method can also be used with
appropriately heated glass substrates, in lieu of float glass ribbons (col. 2, ll.
31-34). Thus, it can be inferred from Soubeyrand that the float glass
ribbons or the heated glass substrates of the type taught by Fukayama,
Takahashi, or Cui can be used interchangeably in forming a coated glass
substrate having a desired coating, except that the float glass ribbons provide
additional advantages of utilizing “the residual temperature and the pristine
condition of the glass substrate.”
Moreover, Appellants do not dispute the Examiner’s finding that Van
Laethem teaches successfully depositing titanium oxide coatings on float
glass strips by spray pyrolysis or CVD to form coated glass substrates.
(Compare Ans. 4-6 with App. Br. 5-11.) Indeed, Van Laethem teaches
applying organo-metallic precursors, e.g., the claimed titanium tetrachloride
precursor, on hot glass substrates, such as float glass strips, using a spray
pyrolysis or CVD technique to form coated glass substrates having desired
metal or metal compound coatings, such as titanium oxide coatings (cols. 1,
2, 7, and 8). According to Van Laethem, this coating method is useful in
obtaining a coated glass substrate having desired coating thicknesses (cols.
1-2).
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Appeal 2009-004841
Application 10/419,872

Given the above advantages of using float glass ribbons or strips in
forming coated glass substrates having desired coating thicknesses, we
concur with the Examiner that one of ordinary skill in the art would have
been led to form the glass substrate coated with desired photocatalytically
active self-cleaning crystalline TiO2 or Pt-TiO2 film having the claimed
thicknesses taught by Fukayama, Takahashi, or Cui via applying the
claimed titanium tetrachloride or titanium tetraisopropoxide precursor on a
hot glass substrate, such as a float glass strip at the claimed temperature, by
spray pyrolysis or CVD, with a reasonable expectation of successfully
forming the photocatalytically active self-cleaning crystalline TiO2 or Pt-
TiO2 coating on a hot glass substrate, inclusive of a float glass strip, within
the meaning of 35 U.S.C. § 103(a).
II. Obviousness-Type Double Patenting
Appellants have not chosen to substantively challenge the provisional
obviousness-type double patenting rejections (App. Br. 12). Rather,
Appellants state that “no Terminal Disclaimer is required at this time” since
Applications 10/079,483 and 10/856,876 have not been issued as patents
(id.). The record reveals that Application 10/079,483 (the ‘483 application)
was abandoned, thus rendering the obviousness-type double patenting
rejection of claims 25, 27, and 28 based on the claims of the ‘483 application
moot. On the other hand, the record shows that Application 10/856,876 was
issued as U.S. Patent 7,597,930 on October 6, 2009. Thus, for the reasons
stated by the Examiner at pages 7-8 of the Answer, we summarily affirm the
obviousness-type double patenting rejection of claims 25, 27, and 28 based
on the claims of copending Application 10/856,876.
ORDER
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Application 10/419,872

For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

tc

OBLON, SPIVAK, MCCLELLAND MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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