Ex Parte Brown et alDownload PDFPatent Trial and Appeal BoardJun 13, 201612508762 (P.T.A.B. Jun. 13, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/508,762 0712412009 22928 7590 06/15/2016 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR James W. Brown 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. SP09-218 8629 EXAMINER ROSE, ROBERT A ART UNIT PAPER NUMBER 3727 NOTIFICATION DATE DELIVERY MODE 06/15/2016 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 JAMES W. BROWN, TADASHI KITAMURA, GAUTAMN. KUDVA, and SIVA VENKATACHALAM Appeal2014-004558 Application 12/508,762 1 Technology Center 3700 Before JOHN C. KERINS, STEFAN STAICOVICI, and ARTHUR M. PESLAK, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE James W. Brown et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 2, 4-15, and 17-21.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). According to Appellants, the real party in interest is Coming Incorporated. Appeal Br. 2 (filed May 10, 2013). 2 Claims 3 and 16 were canceled and claim 21 was added in Appellants' after-final amendment, filed Jan. 28, 2013 ("Amendment"). See Amendment 8. The Amendment was entered by the Examiner in the Advisory Action transmitted Feb. 12, 2013. See Adv. Act. 1. Appeal2014-004558 Application 12/508,762 We REVERSE. SUMMARY OF DECISION INVENTION Appellants' invention relates to a method and apparatus for shaping the edge of a glass plate. Spec. ,-i 1. Claims 1, 11, 1 7, and 21 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method of shaping the edge of a glass plate compnsmg: coupling a glass plate to a support fixture, a portion of the glass plate extending from the support fixture a distance L and comprising a first surface, an second surface opposing the first surface and an end surface, and wherein the first surface and the end surface intersect along a first edge and the second surface and the end surface intersect along a second edge; contacting the first edge with a first abrasive cup wheel rotating about a first axis of rotation angled relative to the first surface, wherein the first abrasive cup wheel contacts the first edge with a first force F 1 that produces a first deflection 81 of the extended portion; contacting the second edge of the glass plate with a second abrasive cup wheel rotating about a second axis of rotation angled relative to the second surface and spaced apart from the first abrasive cup wheel axis of rotation by a distance D equal to or greater than 220 mm, the second abrasive cup wheel contacting the second edge with a second force F2 that produces a second deflection fo of the extended portion opposite from 81, and wherein the second abrasive cup wheel contacts the second edge simultaneous with the first abrasive cup wheel contacting the first edge; producing relative motion between the first and second abrasive cup wheels and the glass plate during the contacting of the first and second abrasive cup wheels with the first and 2 Appeal2014-004558 Application 12/508,762 second edges, respectively; and wherein the first deflection does not overlap the second deflection. REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 1, 2, 11, and 17 under 35 U.S.C. § 102(b) as being anticipated by Gariglio (US 7,134,936 B2, iss. Nov. 14, 2006). II. The Examiner rejected claims 1, 2, 4-15, and 17-21under35 U.S.C. § 103(a) as being unpatentable over Gariglio. 3 ANALYSIS Rejection I Independent claims 1, 11, and 17 require, inter alia, a distance bet\,'1/een axes of rotation of first and second abrasive cups, namely, equal to or greater than 220 mm, such that the deflection of the glass plate caused by the first abrasive cup does not overlap (as per claims 1 and 11) or affect (as per claim 17) the deflection of the glass plate caused by the second abrasive cup. See Appeal Br. 20-23. The Examiner finds that, "Gariglio discloses a method and apparatus for shaping the edge of a glass plate comprising all of the subject matter set forth in Applicant's claims above." Final Act. 2 (transmitted Sept. 26, 2012). 3 Claims 1, 2, 11, 17, and 21 were added to this rejection as a new ground of rejection. See Ans. 4. 3 Appeal2014-004558 Application 12/508,762 In response, Appellants argue that Gariglio fails to teach a spacing between the axes of rotation of first and second grinding wheels such that "the deflection induced to the glass plate by one of the abrasive cups wheels does not overlap the deflection induced to the glass plate by the other of the abrasive cup wheels." Appeal Br. 15. Thus, according to Appellants, "Gariglio does not anticipate claims 1, 11, [and] 17 .... " See id. at 16. It is well settled that "there is no anticipation 'unless all of the same elements are found in exactly the same situation and united in the same way ... in a single prior art reference'." Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984). Here, although the Examiner points to wheels 20, 22, 24, 26, and 28 as the claimed abrasive cup wheels (see Final Act. 2), the Examiner fails to indicate where Gariglio teaches the claimed distance between the axes of rotation of the grinding wheels is such that the deflection caused by one wheel does not overlap or affect the deflection caused by the other grinding wheel. Moreover, although we appreciate the Examiner's finding that Gariglio teaches that the entire distance L between grinding wheels 101, 104 is about 25-35 cm (see Ans. 6), that is, 250-350 mm, nonetheless, Gariglio fails to teach explicitly any amount of deflection of its glass plate 2 caused by any of its grinding wheels. See Gariglio, col. 6, 11. 51-56 and Figs. 1, 5. More specifically, Gariglio fails to teach that the deflection caused by grinding wheel 101 does not overlap or affect the deflection caused by grinding wheel 104. Furthermore, we do not agree with the Examiner that "deflection of the glass edge is a local phenomenon and would be inherent in the application of grinding pressure to the glass edge in Gariglio" (see Final Act. 4 Appeal2014-004558 Application 12/508,762 3 and Ans. 5, emphasis added), because the fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). "To establish inherency, the extrinsic evidence 'must make clear that the missing descriptive matter is necessarily present in the thing described in the reference, and that it would be so recognized by persons of ordinary skill.' 'Inherency, however, may not be established by probabilities or possibilities."' In re Robertson, 169 F .3d 743, 745 (Fed. Cir. 1999) (citations omitted). In this case, the Examiner has not provided any persuasive evidence or technical reasoning from which we can ascertain that the spacing L of 250-350 mm between Gariglio's grinding wheels 101, 104 or the spacing between wheels 20, 22, 24, 26, and 28 is such that that the deflection of the glass plate caused by one grinding wheel necessarily does not overlap or affect the deflection of the glass plate caused by another grinding wheel. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 102(b) of claims 1, 2, 11, and 17 as being anticipated by Gariglio. Rejection II Independent claims 1, 11, 1 7, and 21 require, inter alia, a distance between axes of rotation of first and second abrasive cups such that the deflection caused by the first abrasive cup does not overlap (as per claims 1 and 11) or affect (as per claims 1 7 and 21) the deflection caused by the second abrasive cup. See Appeal Br. 20-24. 5 Appeal2014-004558 Application 12/508,762 The Examiner finds that the "spacing of the grinding wheels along the glass edge are seen as obvious matters of design choice to those of ordinary skill in the art." Final Act. 2. According to the Examiner, "the amount of deflection under load is an inherent property of the material, [] is a local phenomenon" and the claimed distance between grinding wheels is "seen as arbitrary." Ans. 5-6. First, as we have noted above, Gariglio fails to teach that the deflection caused by grinding wheel 101 does not overlap or affect the deflection caused by grinding wheel 104. Similarly, Gariglio fails to teach that the deflection caused by one of grinding wheels 20, 22, 24, 26, and 28 does not overlap or affect the deflection caused by another of the same grinding wheels. Second, although we appreciate that deflection of a glass plate under load during grinding is an inherent property of the material, nonetheless, the Examiner has not provided any persuasive evidence or technical reasoning to show that the spacing L of 250-350 mm between Gariglio's grinding wheels 101, 104 or the spacing between grinding wheels 20, 22, 24, 26, and 28 is such that that the deflection caused by one grinding wheel necessarily does not overlap or affect the deflection caused by another grinding wheel. Last, we do not agree with the Examiner's position that the claimed distance between grinding wheels is "arbitrary" such that the spacing between grinding wheels is an obvious matter of design choice. See Ans. 5- 6. In the context of a rejection based on design choice~ the relevant issue is whether the alleged differences between the claimed invention and the prior art "'result in a difference in function or give unexpected results." See Jn re ,_, 6 Appeal2014-004558 Application 12/508,762 Rice, 341F.2d309, 314 (CCPA 1965). In this case, Appellants' Specification describes that when the distance between grinding wheels is 190 mm "the deflection due to one abrasive wheel is influenced by the deflection of the other abrasive wheel," whereas when the distance is 310 mm, "the deflection produced by one wheel is not influenced by the deflection of the other wheel." Spec. 13 ii 52. The Specification further states that "[p ]referably, the distance D between the two axes of rotation ... is equal to or greater than 250 mm, and more preferable equal to or greater than 310 mm." Id. ii 51. As such, the distance between grinding wheels is not "arbitrary," as the Examiner opines, but rather "result[ s] in a difference in fimction" as it specifically prevents overlapping of the deflection of the glass plate caused by the grinding wheels during the grinding process. Hence, the Examiner has failed to explain adequately why the subject matter of independent claims 1, 11, 17, and 21 would be obvious in view Gariglio. In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claims 1, 11, 17, and 21 and their respective dependent claims 2, 4-10, 12-15, and 18-20, as being unpatentable over Gariglio. SUMMARY The Examiner's decision to reject claims 1, 2, 4-15, and 17-21 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation