Ex Parte Bookbinder et alDownload PDFPatent Trial and Appeal BoardMay 25, 201813640153 (P.T.A.B. May. 25, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/640, 153 10/09/2012 22928 7590 05/30/2018 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR Dana Craig Bookbinder 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 ATTORNEY DOCKET NO. CONFIRMATION NO. SPl0-175 6986 EXAMINER SHUKLA, KRUPA ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 05/30/2018 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): usdocket@corning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANA CRAIG BOOKBINDER and TIMOTHY MICHAEL GROSS Appeal2017-003959 Application 13/640,153 Technology Center 1700 Before GEORGE C. BEST, N. WHITNEY WILSON, and AVEL YN M. ROSS, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's January 4, 2016 decision finally rejecting claims 1, 3, 4, 6, 10, and 11 ("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the real party in interest as Coming Incorporated (Appeal Br. 3). Appeal2017-003959 Application 13/640,153 CLAIMED SUBJECT MATTER Appellants' disclosure is directed to laminates for transparent armor application and in particular to laminates comprising a strike face, a spall catcher and one or more intermediate layers between the strike face and the spall catcher (Spec. ,r 6). The strike face is an anomalous glass, while the spall catcher is a polymeric material (id.). The intermediate layers are selected from the group consisting of sold-lime glass and glass-ceramics (id.). Details of the claimed invention are set forth in claim 1, which is reproduced below from the Claims Appendix: 1. A transparent laminate comprising a strike face, a spall catcher and one or a plurality of intermediate layers between the strike face and the spall catcher; the strike face being an anomalous glass, the spall catcher being a polymeric material, and the one or plurality of intermediate layers being selected from the group consisting of sold-lime glass and glass-ceramics; wherein the layers of the laminate are adhesively bonded to one another, and wherein the anomalous glass is a silica-titania glass consisting of 10 wt% to 20 wt% Ti02 and the remainder being Si02 and a CTE of less than -1.0 x 10-7/°C at a temperature in the range of 5-35 °C. REJECTIONS I. Claim 6 is rejected under 35 U.S.C. § 112, second paragraph as indefinite. 2 2 In the Final Action, claims 1, 3, 4, 6, 10, and 11 were rejected as indefinite (Final Act. 2). However, in the Answer, the Examiner only lists claim 6 as being rejected as indefinite (Ans. 2-3). In any event, as set forth below, Appellants do not contest this rejection, which we summarily affirm. 2 Appeal2017-003959 Application 13/640,153 II. Claims 1, 6, and 10 are rejected under 35 U.S.C. § I03(a) as unpatentable over Weinhold3 in view of Chaudhri4 and Dawes. 5 III. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, and in further view of Barefoot. 6 IV. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, and in further view ofNagai. 7 V. Claim 4 is rejected under 35 U.S.C. § I03(a) as unpatentable over Weinhold in view of Chaudhri, Dawes, Nagai, and Gomez. 8 VI. Claim 11 is rejected under 35 U.S.C. § I03(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, Nagai, and Gross. 9 DISCUSSION We have reviewed the arguments and evidence proffered by Appellants in the Appeal Brief and the Reply Brief, and determine that the preponderance of the evidence supports the determination that the appealed claims would have been obvious over the cited art. 3 Weinhold, WO 2009/042877 A2, published April 2, 2009. 4 M. M. Chaudhri & C. R. Kurkjian, Impact of Small Steel Spheres on the Swfaces of "Normal" and "Anomalous" Glasses, 69: 5 J. Am. Ceram. Soc. 404--10 (1986). 5 Dawes et al., US 2007/0042892 Al, published February 22, 2007. 6 Barefoot et al., US 2011/0201490 Al, published August 18, 2011. 7 Nagai et al., US 5,277,947, issued January 11, 1994. 8 Sinue Gomez et al., Designing Strong Glass for Mobile Devices, 40:1 SID Symposium Digest of Technical Papers 1045--48 (2009). 9 T.M. Gross & M. Tomozawa, Crack-free High Load Vickers Indentation of Silica Glass, 354 Journal ofNon-Crystalline Solids 5567---69 (2008). 3 Appeal2017-003959 Application 13/640,153 Rejection L Appellants do not make arguments with respect to Rejection I (Appeal Br. 6 n.1 ). Accordingly, this rejection is summarily affirmed. Rejection II. The Examiner finds that Weinhold discloses a transparent multilayer laminate comprising a strike face layer, a glass ceramic layer (corresponding to the claimed intermediate layer), and a polymer spall layer (Final Act. 5, citing Weinhold, claim 9). The Examiner further finds Weinhold teaches that the layers are bound together by adhesive interlayers made of polymeric material, such as polyvinyl butyral (id.). The Examiner also finds that Weinhold discloses that its strike face layer is made of borosilicate glass, which is an anomalous glass, but does not teach a strike face layer made oftitania-doped silica glass (id.). The Examiner finds that Chaudhri discloses the properties of several types of glass, including titania-doped silica which is an anomalous glass having a high hardness (Final Act. 5, citing Chaudhri, 408, Table 1 ). The Examiner determines that it would have been obvious to use titania-doped silica anomalous glass from Chaudhri in place of the borosilicate glass in Weinhold to improve its hardness. The Examiner further finds (id. at 6) that the combination of Weinhold and Chaudhri does not disclose the specific properties of the anomalous glass recited in the claims (10 wt% to 20 wt% Ti02 and 80-94 wt% Si02 and a CTE of less than -1.0 x 10-7 /°C at a temperature in the range of 5-35°C (claim 1) and 10-15 wt% Ti02 and 85-94 wt% Si02 and a CTE of less than -1.0 x 10-7/°C at a temperature in the range of 5-35°C (claim 6)). The Examiner finds that Dawes teaches a very homogenous titania-doped silica glass with low levels of striae having these properties, except that 4 Appeal2017-003959 Application 13/640,153 Dawes's glass has a titania content of 9%, while the claims recite a titania- content of at least 10% (Final Act. 6, citing Dawes ,r,r 9--10). The Examiner determines that this difference in titania-content is small enough that a prima facie case of obviousness exists because a person of skill in the art would not have expected the slight difference to change the properties of the material (id. at 6-7, citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775 (Fed. Cir. 1985)). The Examiner determines that it would have been obvious to use Dawes's titian-doped silica glass to improve its homogeneity and reduce the striae in the glass. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Furthermore, the Examiner must articulate some "reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This reasoning must show that "there was an apparent reason to combine the known elements in the fashion claimed." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,418 (2007). Appellants argue that Dawes does not teach that the titania-range of the glass impacts homogeneity and reduced striae in the glass (Appeal Br. 5 Appeal2017-003959 Application 13/640,153 8). Therefore, according to Appellants, the Examiner has not adequately established a reason to combine the teachings of Dawes with those of Weinhold and Chaudhri (id. at 8-9). In response, the Examiner finds that although Dawes does teach that its disclosed method is responsible the improved homogeneity and reduced striae, the Dawes's product does have the claimed properties, and Appellants have not shown that that amount of titania does not impact homogeneity and striae levels (Ans. 15). In this instance, the rationale provided by the Examiner to use the Dawes's glass ( which the Examiner finds-and Appellants do not dispute- has the claimed properties) with the combined teachings of Weinhold and Chaudhri is to increase the homogeneity and reduce the striae in the glass (Final Act. 7). In this regard, the Examiner, as a further explanation of why a person of skill in the art would have combined Dawes with Weinhold and Chaudhri, also finds that increased homogeneity and low levels of striae would have improved the strength of the glass (Ans. 16). Appellants do not dispute this finding (see Reply Br. 3-6). Thus, we determine that Appellants have not shown reversible error in the prima facie case of obviousness set out by the Examiner. The Examiner has shown that the prior art teaches each of the claim limitations, and has provided a reason why a person of skill in the art would have combined the art in the manner needed to arrive at the claimed invention. Appellants make several additional arguments seeking reversal of Rejection II. First, Appellants argue that Chaudhri and Weinhold teach away from the claimed invention. In particular, Appellants contend that Weinhold teaches that having a smaller CTE mismatch to the neighboring glass ceramic layers and that this favors the use of borosilicate glass for the 6 Appeal2017-003959 Application 13/640,153 strike face (as opposed to the claimed titania-doped silica glass) (Appeal Br. 9--10). However, even if the explanation offered by Appellants regarding the teachings of Weinhold in connection with matching of CTE's for the strike face (Reply Br. 3-5) are accurate ( and we need not and do not reach this issue), a person of skill in the art might nevertheless have elected to use the titania-doped silica glass of Chaudhri for the benefit of its increased hardness. Obviousness is determined in light of all the facts. A given course of action (in this case substituting in the titania-doped silica glass for the borosilicate glass) often has simultaneous advantages and disadvantages (in this case an increased hardness versus possible problems from different CTEs ), and this does not necessarily obviate a motivation to combine the references. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Thus, the preponderance of the evidence does not support Appellants' argument that Weinhold teaches away from the combination recited in the rejection. Appellants also argue that Weinhold does not indicate that hardness is a property in need of improvement (Appeal Br. 9). However, as the Examiner explained (Ans. 20-21 ), a person of ordinary skill would have understood that increasing hardness of the strike face layer would lead to increased impact resistance, which would be useful in many applications, including, for example, transparent armor. Finally, Appellants argue that Dawes is directed to an improved method of manufacturing a specific type of titania-doped glass, and thus, is not particularly pertinent to Weinhold's product (Appeal Br. 8). However, Dawes is used in the rejection as teaching a silica-titania glass having the claimed properties, and the rejection outlines, as discussed above, why a 7 Appeal2017-003959 Application 13/640,153 person of skill in the art would have employed it in the product of Weinhold (improvement in the hardness and strength of the glass), arriving at the claimed invention. Accordingly, the preponderance of the evidence supports our affirmance of Rejection II. Rejection III. Appellants do not offer any arguments in connection with Rejection III other than those proffered in connection with Rejection II (Appeal Br. 10-11 ). Therefore, we affirm this rejection for the same reasons as we affirm Rejection II. Rejection IV. In addition to the arguments which are common to those for Rejection II, Appellants argue that the Examiner has not provided an adequate rationale for combining Nagai with the other cited art (Appeal Br. 12). However, as suggested by the Examiner, Nagai teaches that its glass has good mechanical strength (Nagai, Abstract, 2:33--40), which would be useful in the Weinhold's product. Thus, Appellants have not shown reversible error in the rejection. Rejection V. We affirm this rejection for the same reasons as for Rejection IV. Rejection VI. The Examiner relies on Gross as teaching that a low -OH content in silica glass provides high crack resistance, and that this teaching would have led a person of skill in the art to minimize the -OH content of the silica glass (Final Act. 15). That Gross' s teaching is not specific to a strike face does not remove the incentive that a person of skill in the art would have in modifying Weinhold's teachings as required by the rejection. 8 Appeal2017-003959 Application 13/640,153 CONCLUSION We AFFIRM the rejection of claim 6 under 35 U.S.C. § 112, second paragraph as being indefinite. We AFFIRM the rejection of claims 1, 6, and 10 under 35 U.S.C. § 103(a) as unpatentable over Weinhold in view of Chaudhri and Dawes. We AFFIRM the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, and further view of Barefoot. We AFFIRM the rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, and further view of Nagai. We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable over Weinhold in view of Chaudhri, Dawes, Nagai, and Gomez. We AFFIRM the rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over Weinhold in view of Chaudhri and Dawes, Nagai, and Gross. 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 9 Copy with citationCopy as parenthetical citation