Ex Parte Buhay et al

Patent Trial and Appeal Board

Jul 22, 2016

11752501 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111752,501
24959 7590
PPG Industries, Inc,
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
05/23/2007
07/25/2016
FIRST NAMED INVENTOR
Harry Buhay
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.
1637D2 3873
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
MAILDATE DELIVERY MODE
07/25/2016 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
Ex parte HARRY BUHA Y, JAMES J. FINLEY, and
JAMES P. THIEL
Appeal2015-000569
Application 11/752,501
Technology Center 1700
Before N. WHITNEY WILSON, MONTE T. SQUIRE, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-37. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In our decision below, we refer to the Final Office Action appealed from,
mailed October 7, 2013 (Final Act.), the Appeal Brief filed September 6,
2014 (Appeal Br.), the Examiner's Answer mailed August 4, 2014 (Ans.),
and the Reply Brief filed October 2, 2014 (Reply Br.)
2 Appellants identify the real party in interest as PPG Industries Ohio, Inc.
Appeal Br. 2.
Appeal2015-000569
Application 11/752,501
STATEMENT OF CASE
The claims are directed to a method for forming a multilayered
coating stack comprising a layer of barrier coating. Spec. 13. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of forming a multilayered coated substrate,
comprising providing a coated substrate comprising a coating,
wherein the coating comprises:
and
at least one degradable metal layer;
a dielectric layer;
a radiation reflective metal layer over the dielectric layer;
a primer layer directly on the radiation reflective metal
layer;
providing at least one barrier layer over the at least one
degradable metal layer, wherein the barrier layer has a
permeability to oxygen of no greater than 10 grams per m2 per
day at a temperature of 900°F, and wherein the barrier layer
comprises a mixture of silica and alumina having greater than or
equal to 40 wt. % silica; and
passing the coated substrate through a furnace having a
line speed, wherein the coated substrate has a visible light
transmittance of at least 70 percent, and wherein if another
coated substrate would be passed through the furnace at the line
speed, wherein the other coated substrate comprises the dielectric
layer, the radiation reflective metal layer and the primer layer,
but the other coated substrate does not comprise the barrier
coating, the other coated substrate would have a visible light
transmittance less than 70 percent.
Claims Appendix at Appeal Br. 24.
REJECTIONS
Appellants seek our review of the following rejections A---C.
A. Claims 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-37,
stand rejected under 35 U.S.C. § 112, first paragraph, as
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Application 11/752,501
failing to comply with the written description requirement.
Final Act. 2.
B. Claims 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-37
stand rejected under 35 U.S.C. § 112 second paragraph as
being indefinite. Id. at 3.
C. Claims 1--4, 7, 9-12, 20-22, 25-26, 28, 30-31, and 35-37
stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Belkind3 in view ofBrown. 4 Id. at 5.
Appellants focus their argument on independent claims 1 and 20 and
do not present additional arguments directed to the dependent claims
separate from what is argued for claims 1 and 20. And, because the issues
arising for claims 1 and 20 are the same, in relevant part, we focus our
discussion below on claim 1 to resolve the issues on appeal.
OPINION
Rejection A - Written Description
The Examiner rejects 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-
37 as failing to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph. Final Act. 2. The Examiner finds that the support for
Appellants' new claim limitations-i.e., amendments to the passing clause-
is insufficient because "the Applicant's specification does not actually
compare the exact same coated substrate with the barrier layer to one
without." Id. The Examiner finds that barrier coating layer of the 3xAg
(500) is different that the final layer of the 3xAg (metal) and as a result, do
3 Belkind et al., US 4,769,291, issued September 6, 1988 (hereinafter
"Belkind").
4 Brown et al., US 6,582,799 Bl, issued June 24, 2003 (hereinafter
"Brown").
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Application 11/752,501
not provide written description for the amended claims. In addition, the
Examiner finds that "in some situations the coated substrate without the
barrier coating actually did possess a visible light transmittance higher than
70% (See, for example, data at belt speeds of 7 and 9 ipm)." Id. at 3. And
finally, the Examiner finds that Appellants' support and recited data
are specific to the unique coating compositions, wherein the
processing is performed under specific heat treatment conditions
(temperature/atmosphere/duration (length of furnace)) and
further compared to unique coating compositions performed
under the same conditions; all of which are are [sic] not
commensurate in scope with the amendments made to claims 1
and 20, therefore such a generally recited limitation is not
adequately described in the specification, as the specification has
not described any and all treatment conditions, any and all
coating layer and substrate compositions and combinations
thereof.
Final Act. 3; see also Ans. 3 (same).
Appellants argue that the Examiner's contention that the claims are
not supported by the written description because the claims are broader than
the recited examples, is an improper basis for a written description rejection.
Appeal Br. 7. According to Appellants, the Examiner fails to review the
specification as a whole and wrongly focuses instead on the examples alone.
Id. at 7-9.
To comply with the written description requirement, an applicant's
specification must convey with reasonable clarity to a person of ordinary
skill in the art that, as of the filing date, the applicant was in possession of
the claimed invention. In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)
Appearance of a claim in the specification in ipsis verbis does not guarantee
that the written description requirement is satisfied, see, e.g., Enzo Biochem,
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Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor does a
failure to meet that standard require a finding that a claim does not comply
with the written description requirement, In re Edwards, 568 F.2d 1349,
1351-52 (Fed. Cir. 1978). "[T]he purpose of the written description
requirement is to 'ensure that the scope of the right to exclude, as set forth in
the claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification."' Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1353-54 (Fed. Cir. 2010) (en bane) (quoting
Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920 (Fed. Cir.
2004).
We agree with the Examiner that claims 1-5, 7, 9-12, 20-22, 25, 26,
28, 30, 31, and 35-37 are not described in the Specification within the
meaning of§ 112, first paragraph. Specifically, we agree with the
Examiner's findings that because "in some situations the coated substrate
without the barrier coating actually did possess a visible light transmittance
higher than 70% (See, for example, data at belt speeds of 7 and 9 ipm)"
(Final Act. 3.), it is not clear that the skilled artisan would understand
Appellants to have possession of the claimed invention based on the
disclosure in the Specification. 5 Figure 1, the only teaching in the
Specification regarding a visible light transmittance of any value, shows that
the breadth of the claims is not supported by the specification. See Fig. 1.
Second, we fail to find in Appellants' briefing any argument specifically
directed to this limitation and contending that the Examiner erred in this
respect. Appellants do generally argue that the barrier layer allows for an
5 As for the additional bases for the Examiner's lack of written description
rejection, we do not reach them.
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Application 11/752,501
improved heat budget which leads to higher visible light transmission at
slower belt speeds and thus, the issue becomes "whether the Specification
conveys to one of ordinary skill in the art that the recited barrier coating can
be used to reduce the line speed while maintaining a LT A at or above 7 0
percent." Appeal Br. 10; Reply Br. 2. But, Appellants do not persuasively
articulate how the disclosure conveys to one skilled in the art that Appellants
were in possession of the method as specified in the claims. Thus,
Appellants' argument falls short of meeting their burden.
On this record, we find that a preponderance of the evidence supports
the Examiner's rejection for lack of written description.
Rejection B-Indefiniteness
The Examiner rejects 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-
37 as being indefinite under 35 U.S.C. § 112, second paragraph. Final Act.
3. The Examiner concludes that two elements appearing in claims 1 and 20
render the claims indefinite. First, the Examiner explains that
[ t ]he line speed tied only to a furnace is a relative limitation
which renders the claim indefinite as it is not defined by the
claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the
art would not be reasonably apprised of the scope of the
invention, since the specifics for an appropriate line speed for
such an "other coated substrate" are not defined by the claim.
Final Act. 4. The Examiner states that the same furnace is recited in the
"passing" clause, but nowhere does it say that the same processing
conditions or substrate are required. Ans. 5. Second, the Examiner explains
that the limitation "'if another coated substrate would be passed ... ', is not a
definitive" statement because, as Appellants admit, it is not actively recited.
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Id. at 5---6; see also Appeal Br. 12 (explaining that "anyone reading this
claims, would understand this is not an active step"). The Examiner
"maintains that the previous interpretation that [the "if' limitation] is an
optional limitation is apt based on Appellants admission." Id. at 6.
Appellants argue that the phrase "passing the coated substrate through
a furnace having a line speed ... wherein if another coated substrate would
be passed through the furnace at the line speed" would be clearly
understood by the skilled artisan. Appeal Br. 12. Specifically, Appellants
urge the phrase means "that if the same coated substrate that does not
comprise the barrier coating passes through the same furnace at the same
speed, the LT A will be less than 70 percent, while, in contrast, the barriers
coated substrate will have a LTA equal to or greater than 70 percent." Id.
Appellants also argue that a person skilled in the art would understand that if
the same furnace is used-i.e., only one furnace is recited-then the same
conditions would also exist. Reply Br. 4.
And, Appellants contend that the "Examiner does not explain why he
believes ... [the "if' limitation] is not amenable to construction or in
insolubly ambiguous." Appeal Br. 13. Appellants argue that "this phrase is
directed to another coating that is similar to the recited coating except lacks
the barrier coating. As discussed above, the crux of the invention is that one
may reduce the line speed in his or her furnace by using the recited barrier
coating." Id. Appellants also explain that the Examiner errs in interpreting
the "if' as optional rather than relative, which is definite. Reply Br. 4.
Section 112, i-f 2, requires "that a patent's claims, viewed in light of
the specification ... inform those skilled in the art about the scope of the
invention with reasonable certainty." Nautilus, Inc. v. Biosig Instruments,
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Application 11/752,501
Inc., 134 S. Ct. 2120, 2129 (2014). "[B]readth is not to be equated with
indefiniteness .... " In re Miller, 441F.2d689, 693 (CCPA 1971). During
prosecution, a claim is examined for compliance with 35 U.S.C. § 112, i-f 2
by determining whether the claim meets threshold requirements of clarity
and precision. In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009)
(quoting MPEP § 2173.02). A claim is not indefinite merely because more
suitable language or modes of expression are available. Id. In determining
whether a particular claim is definite, the claim's language must be analyzed
in light of the content of the particular application, the prior art's teaching,
and the interpretation that would be given to the claim's language by a
person of ordinary skill in the art at the time the invention was made. Id.
We agree with the Examiner and conclude that independent claim 1
(independent claim 20 and claims depending therefrom) are indefinite under
35 U.S.C. § 112, second paragraph. The Examiner offers two bases for the
rejection: (1) "that the line speed tied only to a furnace is a relative
limitation ... "and (2) the "if another coated substrate would be passed" is
not a definitive statement." Final Act. 4; Ans. 4--5. We agree, however,
with the Examiner's first basis only. We understand claim 1 (specifically
the "passing" clause) to recite a comparison between an inventive coated
substrate including a barrier layer and a hypothetical coated substrate
without a barrier layer. To be a meaningful comparison, the inventive and
hypothetical coated substrates need to be substantially similar, but for the
presence of a barrier layer on the inventive coated substrate. Appellants'
arguments are in accord with our understanding. Appeal Br. 12.
Specifically, Appellants argue that
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Application 11/752,501
This phrase could be understood not only by one of ordinary skill
in the art, but anyone reading this claim, to mean that if the same
coated substrate that does not comprise the barrier coating passes
through the same furnace at the same speed, the LT A will be less
than 7 0 percent, while, in contrast, the barriers [sic] coated
substrate will have a L TA equal to or greater than 70 percent.
Id. (emphasis added). But, as the Examiner correctly finds, Appellants'
claims do not require the furnace conditions (other than line speed) or the
"another substrate" to be the same. 6 Ans. 5. Thus, like the Examiner, we
conclude that the lack of specificity in the processing conditions and the
identity of the "another substrate" for the hypothetical coated substrate
renders the claims indefinite.
As to the Examiner's second basis for the rejection under§ 112,
second paragraph, we disagree. The Examiner erroneously "interprets such
a limitation as optional for [the] purposes of examination." Final Act. 5.
We conclude the language of the claim, as informed by the Specification
(see Spec. i-fi-f 63-71 ); is amenable to construction and is a relative limitation.
Rejection C - Obviousness
The Examiner rejects 1--4, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-
37 as being obvious under 35 U.S.C. §103(a). Final Act. 5. Having
determined that claims 1-5, 7, 9-12, 20-22, 25, 26, 28, 30, 31, and 35-37
are indefinite based on a limitation at issue in the prior art rejections, we
cannot sustain the rejection of these claims under 35 U.S.C. § 103(a),
because these rejections are based on speculative assumptions as to the
6 We observe also that the coating of claim 1 includes "at least one
degradable metal layer" but the hypothetical coating does not have a
corresponding requirement. See e.g., Claims Appendix at Appeal Br. 24.
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meaning and scope of the claims. 7 See In re Steele, 305 F.2d 859, 862---63
(CCP A 1962). We thus reverse this rejection.
CONCLUSION
The Examiner did not reversibly err in rejecting claims 1-5, 7, 9-12,
20-22, 25, 26, 28, 30, 31, and 35-37, under 35 U.S.C. § 112 first paragraph,
as failing to comply with the written description requirement.
The Examiner did not reversibly err in rejecting claims 1-5, 7, 9-12,
20-22, 25, 26, 28, 30, 31, and 35-37, under 35 U.S.C. § 112 second
paragraph, as being indefinite.
The Examiner reversibly erred in rejecting claims 1--4, 7, 9-12, 20-
22, 25, 26, 28, 30, 31, and 35-37 under 35 U.S.C. § 103(a) as being
unpatentable over Belkind and Brown because the claims are indefinite and
the obviousness analysis would have to be based on speculative assumptions
about the meaning and scope of the claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009).
AFFIRMED
7 We emphasize that our reversal of these rejections is because the claims are
indefinite and a decision has not been made on the technical merits. Should
prosecution continue-after amendment to overcome the§ 112 rejections-
any rejection under 35 U.S.C. § 103(a) should account for the "if" clause as
a limitation.
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