Ex Parte Butts et alDownload PDFPatent Trial and Appeal BoardMar 4, 201511704809 (P.T.A.B. Mar. 4, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS I. BUTTS, JENNIFER B. CANARY, GLEN B. COOK, PHILIP M. FENN, J. TERRY FISK, SANDRA L. GRAY, and JAMES P. MCCANN ____________ Appeal 2015-002363 Application 11/704,809 1 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and RICHARD M. LEBOVITZ, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of a decision of the Primary Examiner to reject claims 1–4 and 6–21. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 According to the Appellants, the real party in interest is “CORNING INCORPORATED” (Appeal Brief filed August 4, 2014, hereinafter “App. Br.,” 2). Appeal 2015-002363 Application 11/704,809 2 BACKGROUND The invention relates to a method for producing a liquid crystal display (LCD) glass sheet with a reduced number of defects (Specification, hereinafter “Spec.,” 2, ll. 10–27). Representative claim 1 is reproduced from page 23 of the Appeal Brief (Claims App’x) as follows: 1. A method for producing a LCD glass sheet, comprising heating a mixture of glass precursor components for a sufficient time and temperature to melt the components to produce the LCD glass sheet, wherein one of the glass precursor components comprises a calcium source comprising single crystal quartz grains or refractory particles having a particle size less than about 210 µm, and wherein the LCD glass sheet is produced by a downdraw process that produces 50 sequential glass sheets having an average number of silica stones less than 0.05 silica stones/cubic centimeter, where each sheet has a volume of at least 500 cubic centimeters. THE REJECTIONS The Examiner rejected the claims under 35 U.S.C. § 103(a) as follows: I. Claims 1–4, 7, 8, 12, 13, and 18–21 as unpatentable over Hikata (PCT Publication WO 2005/015606 A1 published February 17, 2005); 2 II. Claims 1–4, 7, 8, 12, 13, and 18–21 as unpatentable over Hikata and Stanley (United States Patent 3,990,966 issued November 9, 1976); 2 Both the Examiner and the Appellants rely on EP 1 653 499 A1, which published May 3, 2006, as an English language equivalent of the Hikata PCT Publication (Examiner’s Answer entered October 27, 2014, hereinafter “Ans.,” 4; App. Br. 3). Therefore, our citations to Hikata are also to the English language equivalent. Appeal 2015-002363 Application 11/704,809 3 III. Claims 6, 16, and 17 as unpatentable over Hikata, Stanley, and Cherney (United States Patent 3,992,314 issued November 16, 1976); IV. Claims 7, 9–11, 14, and 15 as unpatentable over Hikata, Stanley, and Lee (United States Patent 2,155,721 issued April 25, 1939); and V. Claims 7, 9–11, 14, and 15 as unpatentable over Hikata, Stanley, and McKinnis (United States Patent 3,274,006 issued September 20, 1966). (Examiner’s Answer entered October 27, 2014, hereinafter “Ans.,” 4–16; Final Office Action entered February 6, 2014, hereinafter “Final Act.,” 8– 10.) The Examiner indicated that a rejection under 35 U.S.C. § 112, ¶ 2, of claims 1–4 and 6–21 (Final Act. 2–3) has been withdrawn in view of certain claim amendments submitted on May 6, 2014 (Ans. 3). DISCUSSION The Appellants address Rejections I–V together based on a common set of arguments for all claims subject to these rejections (App. Br. 4–22). Therefore, we confine our discussion to claim 1, which we select as representative of the claims that are subject to Rejection I pursuant to 37 C.F.R. § 41.37(c)(1)(iv), and that discussion will be controlling for all five rejections. The Examiner found that Hikata describes a method for producing a glass sheet suitable for use as a LCD glass sheet by a downdraw process using a high purity calcium carbonate glass batch material that is free from Appeal 2015-002363 Application 11/704,809 4 insoluble residue (Ans. 4–5). While acknowledging that Hikata does not explicitly discuss the level of quartz grain contamination in the calcium source, the Examiner found that Hikata’s high purity calcium carbonate source would reasonably appear to possess the degree of purity (“having an average number of silica stones less than 0.05 silica stones/cubic centimeter”) recited in claim 1 because, consistent with the disclosure in the current Specification, Hikata explicitly teaches that glass melts produced from these calcium carbonate sources are free from insoluble residues––i.e., free from silica stones (id. at 5). Alternatively, the Examiner found that Stanley discloses a method for producing purified calcite (e.g., calcium carbonate) from limestone rock and concluded that a person of ordinary skill in the art “would have found it an obvious matter to employ the STANLEY limestone purification technique in order to produce the ‘high purity’ calcium carbonate source indicated as a requirement in the HIKATA process” (id. at 7–8). The Examiner found that Stanley teaches the calcium material has a particle size of 15 microns or less, meeting the claimed limitation of “single crystal quartz grains or refractory particles having a particle size less than about 210 µm” (id. at 9). The Appellants contend that the applied prior art references do not appreciate or recognize the problem addressed by their invention (App. Br. 7–9). Specifically, the Appellants assert that they discovered stone defects, which are generally caused by solid inclusions that have not been fully digested or dissolved, are introduced through batch materials, such as the calcium source, used to make the glass composition (id. at 8). According to the Appellants, “it has been unexpectedly discovered that when one of the glass precursor components comprises a calcium source comprising single Appeal 2015-002363 Application 11/704,809 5 crystal quartz grains or refractory particles having a particle size less than about 210 µm, stone formation is minimized during the production of LCD glass substrates” (id. at 9). We discern no merit in the Appellants’ position. In this case, Hikata plainly describes down-draw methods including, e.g., a slot-down drawing method for forming glass sheets (¶ 40). In Hikata’s Example 1, various glass compositions including “high-purity calcium carbonate” sources were formed into predetermined shapes and then tested for, inter alia, insoluble residues (¶¶ 97, 99–113). According to Hikata, insoluble residues were not detected in Samples 8–10 (Table 3; ¶ 109). Because the Appellants have attributed low levels of silica stones (insoluble residues) in the glass product to the “calcium source comprising single crystal quartz grains or refractory particles having a particle size less than about 210 µm” recited in claim 1 (Spec. 6, ll. 12–31) and Hikata discloses “high-purity calcium carbonate”- based glass products with no insoluble residues, we detect no error in the Examiner’s finding that the Hikata’s “high-purity calcium carbonate” would reasonably appear to be made up of “single crystal quartz grains or refractory particles having a particle size less than about 210 µm,” as required by claim 1. The Appellants do not direct us to persuasive evidence or technical reasoning demonstrating otherwise. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). “Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.” Id. Appeal 2015-002363 Application 11/704,809 6 Contrary to the Appellants’ belief, Hikata need not appreciate or recognize that the “high-purity” calcium carbonates used to form the glass product disclosed in Samples 8–10 had silica stone purity levels within the range recited in claim 1, or were responsible for the insoluble-free result, to render the claim unpatentable. Cf. MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.”). See also id. at 1366 (“Where, as here, the result is a necessary consequence of what was deliberately intended, it is of no import that the article’s authors did not appreciate the results.”). 3 We also find no reversible error in the Examiner’s alternative basis for rejecting claim 1 based on the combined teachings of Hikata and Stanley. Specifically, the Examiner found that Stanley teaches purified calcite having particle sizes of 15 microns or less and therefore “any remnant single crystal quartz grains or other refractory particles, should any in fact exist, would likewise have a particle size of less than about 210 microns as recited in claim 1 . . . .” (Ans. 8) (citing Stanley col. 2, l. 42–col. 3, l. 61). The Appellants do not refute these findings with countervailing evidence. Because Hikata teaches the use of high-purity calcium carbonate as the calcium source and Stanley teaches such a high-purity calcium source, a 3 The Appellants’ reliance on Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1354 (Fed. Cir. 2013) is misplaced. (App. Br. 9). In that case, the prior art formulations had to be modified in view of an additional reference to form a new formulation having new storage stable properties. Here, by contrast, the disclosed prior art method formed a glass product that was free from insoluble residues (i.e., silica stones) as in the invention encompassed by claim 1. Appeal 2015-002363 Application 11/704,809 7 person of ordinary skill in the art would have been prompted to combine the teachings of Stanley with Hikata in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (“[F]amiliar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). The Appellants argue that “Hikata is concerned with manufacturing a vessel or envelope for an external electrode fluorescent lamp” (App. Br. 17) (internal citation omitted). Hikata, however, also teaches the production of glass sheets (¶ 40). The Appellants fail to direct us to evidence showing that Hikata’s glass sheets could not be used as LCD glass sheets or identify a structural difference between Hikata’s sheets and those used for an LCD. The Declaration of Dennis I. Butts filed February 27, 2012 (Evidence App’x) repeats the arguments made in the Appeal Brief. Therefore, we do not find it persuasive. SUMMARY Rejections I–V are 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 bar Copy with citationCopy as parenthetical citation