Ex Parte Fechner et al

Patent Trial and Appeal Board

Jun 30, 2016

11692358 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111692,358 03/28/2007
27572 7590 07/05/2016
HARNESS, DICKEY & PIERCE, PLC
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
FIRST NAMED INVENTOR
Joerg Fechner
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.
4965S-000298 7438
EXAMINER
HOBAN, MATTHEW E
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
troymailroom@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOERG FECHNER and PETER BRIX
Appeal2014-002635
Application 11/692,358 1
Technology Center 1700
Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 2
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision finally rejecting claims 1-20 under 35 U.S.C. § 103(a)
as unpatentable over Peuchert. 3 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is SCHOTT AG. Appeal
Br. 1.
2 Our decision refers to Appellants' Specification (Spec.) filed March 28,
2007, the Examiner's Final Office Action (Final Act.) mailed October 11,
2012, Appellants' Appeal Brief (App. Br.) filed May 28, 2013, the
Examiner's Answer (Ans.) mailed October 2, 2013, and Appellants' Reply
Brief (Reply Br.) filed December 2, 2013.
3 Peuchert et al., US 2002/0032117 Al, published March 14, 2002
("Peuchert").
Appeal2014-008979
Application 11/692,358
STATEMENT OF THE CASE
The invention relates to an alkali-free almninoborosilicate glass
having properties optimized for use as LCD display substrates. Spec. i-fi-12,
14. Claim 10, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal:
10. An aluminoborosilicate glass having a coefficient of thermal
expansion CTE :S 3.3·10-6/K and comprising the following
components (in wt.%):
Si02 58-70
Ab03 17-18
B203 5-15
MgO 0-9
Cao 2-12
Bao 0.1-5
Sn02 0-1
As203 0-2,
said glass, apart from random impurities, being free of
alkali oxides and free of strontium oxide; the proportion (in
wt.%) of Si02· B20iAb03 lying between 32 and 38, said glass
having a viscosity-temperature characteristic being defined by a
mean gradient g determined by the quotient of the viscosity
difference (given in the differences of the common logarithms
of the viscosities in dPas) and the temperature difference (given
in K), said mean gradient g :S -5.50·10-3 log (dPas)/K in the
viscosity range between 104 dPas and 102 dPas.
Claim 1, the remaining independent claim, similarly recites an
aluminoborosilicate glass, but differs from claim 10 in use of the transitional
terms, "consisting of," when reciting the glass' components, recites broader
ranges for several of the components, optionally includes 0.1-10 wt.%
ultraviolet light blocking oxides, and recites a slightly narrower
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Application 11/692,358
Si02· B203/ Ah03 ratio between 33 and 37 and a ratio for Si02/ Ah03 of
between 3.3 and 3.55.
OPINION
Appellants do not separately argue the claims on appeal.
Accordingly, we select claim 10 as representative. Claims 1-9 and 11-20
stand or fall with claim 10.
The Examiner finds Peuchert teaches an aluminoborosilicate glass
composition free of SrO and alkalis, comprising the following oxides (in
wt.%): Si02 58---65; B203 6-10.5; Ah03 14--25; MgO 0-3; Cao 0-9; Bao
3-8. Final Act. 3. The Examiner further finds Peuchert teaches properties
of a number of example glasses have CTEs within the recited range and
viscosity gradients overlapping the recited gradient range. Id. at 3 and 4.
Moreover, the Examiner finds Peuchert teaches the effects of the oxides
independently, in particular that both B203 and ZnO serve to modify the
viscosity characteristics of the giass and CaO can be used to controi the
glass' final CTE. Id. at 3--4. Given that Peuchert discloses glass
compositions with overlapping ranges for components, as well as ways to
modify the glass in order to meet viscosity and CTE requirements, the
Examiner concludes it would have been obvious for one of ordinary skill in
the art to select from Peuchert's overlapping ranges of components to arrive
at the claimed invention. Id. at 4.
Appellants contend the Examiner fails to address Peuchert as a whole,
and fails to accord the proper weight to Appellants' evidence of criticality.
Appeal Br. 4. As to Appellants' first contention that the Examiner fails to
consider the teachings of Peuchert as a whole, Appellants do not dispute that
the recited "compositions reflect a selection among materials including those
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Application 11/692,358
recited in Peuchert." Id. at 6; Reply Br. 3. While Appellants concede that
overlapping ranges have been shown to establish a prima facie case of
obviousness, Appellants urge that the Examiner's analysis fails to consider
that Peuchert fails to teach how to make all the selections with a reasonable
expectation of success. Id.
In particular, Appellants note the claims recite a CTE :S 3.3·10-6/K, a
viscosity-temperature characteristic (mean gradient) g :S -5.50·10-3 log
( dPas )/K in the viscosity range 104-102 dPas, an Ab03 content of between
17-18 wt.%, and ranges for the proportions of Ab03, Si02, and B203.
Appeal Br. 6. Appellants also note Peuchert's range for Ah03 content is
14--25 wt.%, with a particular preference for contents outside the claimed
range. Id. Appellants assert that Peuchert's Example 12 is the only example
having an Ab03 content with the claimed range, but note that the CaO
content of this example is too high, the CTE is too high, and the
SiOiB203/Ah03 is too low. Id. at 6-7. Appellants argue that Peuchert, read
as a whole, fails to provide a basis to select the Ab03 from Example 12,
while ignoring the other limitations of this example. Id. at 7. Indeed,
Appellants urge that Peuchert directs use of Ab03 levels higher than those of
Appellants' claims. Reply Br. 3. As such, Appellants contend that the only
basis for making this selection is improper hindsight. Appeal Br. 7; Reply
Br. 4.
We do not find Appellants' arguments persuasive of reversible error.
"Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
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Application 11/692,358
from applicant's disclosure, such a reconstruction is proper." In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, there is no dispute that Peuchert teaches a glass composition having
oxide components whose content overlaps the recited ranges, where the
claimed glass composition represents a selection of these materials within
these ranges. In addition, as the Examiner finds, Peuchert discloses reasons
to modify the amounts of various oxides, in particular, Ah03, Si02, B203,
and CaO to adjust the viscosity and CTE. Under these circumstances, the
Examiner has presented a prima facie case of obviousness over Peuchert.
Further, although Appellants argue that the Examiner fails to consider
Peuchert as a whole, including Peuchert's preferred range for Ab03 outside
Appellants' recited range, and Peuchert's Example 12 which falls within
Appellants' recited Ab03 content range, but fails to meet Appellants' CTE,
CaO content and SiOiB203/ Ab03, we note "all disclosures of the prior art,
including unpreforred embodiments, must be considered." Merck & Co. Inc.
v. Biocraft Laboratories Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976).) Appellants fail to direct our
attention to any indication that the Examiner failed to consider Peuchert as a
whole. Indeed, the Examiner has made specific findings regarding
Peuchert's general teachings as to the amounts of each of the components
included in their glass compositions, as well as specific findings regarding
Peuchert's teachings regarding the effects of various oxides on CTE and
viscosity. Appellants do not address, much less identify reversible error, in
any of these findings. Given Peuchert's undisputed disclosure of
overlapping ranges for the oxide components of the glass composition and
the effects of modifying the amounts of various oxides on CTE and
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viscosity, there is sufficient factual support in Peuchert for the Examiner's
conclusion that the claimed glass composition would have been prima facie
obvious.
Where a prima facie case of obviousness based on overlapping ranges
is established, the prima facie case may be overcome if the prior art teaches
away from the claimed invention, by evidence of new and unexpected
results relative to the prior art, or by evidence of other pertinent secondary
considerations. See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738
(Fed. Cir. 2013) (certiori denied); Novo Nordisk A/S v. Caraco Pharm.
Labs., Ltd., 719 F.3d 1346, 1352-54 (Fed. Cir. 2013). Here, Appellants
contend that the claimed ranges are critical and the Examiner failed to give
proper weight to the Declaration of Dr. UlfDahlmann under 37 C.F.R. §
1.132 ("Dec.") as evidence of criticality. In particular, Appellants direct our
attention to the Declaration, paragraphs 13-15, for reasons why Appellants'
recited range for Ab03 is critical. Appeal Br. 7-8. Appellants assert that
when Ab03 content is greater than 18 wt.%, "melting is difficult and the
melting temperature is high, leading to higher energy consumption." Id. at
8; Dec. i-f 13. On the other hand, according to Appellants, when Ab03
content is less than 17 wt.%, "a higher Si02 content is necessary to provide a
CTE in the target range of< 3.3 10-6/K. A higher Si02 content leads to
higher working temperatures." Appeal Br. 8; Dec. i-f 14. Declarant then
states that a difference of 15-25°C in working temperature is significant at
these high melting temperatures, providing Appellants composition with
smaller mold wear-off and lower energy consumption. Dec. i-f 15.
The Examiner responds that Declarant's opinions lack evidentiary
support, in that data showing criticality of the cited range has not been
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provided. Appeal Br. 5. In addition, the Examiner finds Peuchert teaches
consideration of energy consumption and processing temperature at
paragraph 28, in disclosing that the addition of Ab03 generally increases
processing temperature. Id. The Examiner finds, therefore, the effects of
Ab03 content to be generally understood in the art. Id. The Examiner
further notes that Appellants have neither identified nor established an
unexpected result. Id. at 6.
We agree. Although the Declaration presents the opinion of an expert
in the field, even expert opinion must have an objective basis in order to
permit evaluation of the merits of the opinion and weighing its probative
value against the weight of the evidence in support of the prima facie case.
" [A Jn expert's opinion on the ultimate legal issue must be supported by
something more than a conclusory statement." In re Buchner, 929 F.2d 660,
661 (Fed. Cir. 1991). See also Rohm and Haas Co. v. Brotech Corp., 127
F.3d 1089, 1092 (Fed. Cir. 1997) ("Nothing in the rules or in our
jurisprudence requires the fact finder to credit the unsupported assertions of
an expert witness.") As for the difference in working temperatures of 15-
250C, there is no evidence of the significance of this difference at the
measured melt temperatures, nor is there data with regard to mold wear-off
or energy consumption. Moreover, as the Examiner finds, Peuchert is aware
of the effects of Ab03, and also discloses the use of the glass composition
for LCD display substrates, as well as desirable properties for CTE and
viscosity. Thus, although Peuchert prefers Ab03 content above 18 wt.%,
Peuchert nonetheless teaches a range of Ab03 encompassing Appellants'
range. We are therefore not convinced that Ab03 content within the claimed
range produces unexpected results.
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Appellants next argue that claim 1 specifically excludes ZnO by virtue
of its use of the transitional terms, "consisting of." Appeal Br. 9.
Appellants assert that ZnO leads to higher density and tends to cause defects.
Id. at 10; Dec. if 12. The Examiner notes, however, that Peuchert merely
refers to use of ZnO as an optional component. Ans. 6. It is reasonable,
therefore, that the ordinary artisan would have found it obvious to have
excluded ZnO from the glass composition.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in Peuchert
with Appellants' countervailing evidence and argument for nonobviousness
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 1-20 would
have been obvious as a matter of law under 35 U.S.C. § 103(a).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Examiner's Answer, the decision of the
Examiner rejecting claims 1-20 under 35 U.S.C. § 103(a) as unpatentable
over Peuchert is 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)(l).
AFFIRMED
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