Ex Parte Butts et al

Patent Trial and Appeal Board

Mar 4, 2015

11704809 (P.T.A.B. Mar. 4, 2015)

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).
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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.
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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
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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
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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.
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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.
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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
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