Ex Parte Feng et al

Patent Trial and Appeal Board

Mar 27, 2018

13666321 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/666,321 1110112012
22928 7590 03/29/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Jiangwei Feng
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.
SPll-302 5520
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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 JIANGWEI FENG, JANET MITCHELL, and
LJERKA UKRAINCZYK
Appeal2017-007783
Application 13/666,321 1
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1--4, 7-10, and 12-17.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest (Appeal Br. 4).
Appeal2017-007783
Application 13/666,321
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A method for reconditioning a surface-coated glass-
forming mold comprising:
providing the glass-forming mold, wherein the glass-
forming mold comprises a titanium-aluminum-nitride-
containing glass release layer having a surface oxidation layer,
wherein the surface oxidation layer (i) comprises oxygen,
aluminum, silicon and alkali metal and (ii) is a nitrogen-
depleted layer; and
contacting the swface oxidation layer with an aqueous
mineral acid solution comprising fluoride and phosphate ions
to recondition the glass release layer, wherein after the contact
with the aqueous mineral acid solution, the glass release layer
has a surface layer comprising alkali metal, silicon, aluminum
and oxygen that is substantially free of nitrogen depletion.
The Examiner maintains the following rejections: 2
(a) claims 1--4, 7-10, 12, 16, and 17 under 35 U.S.C. § 103(a) as
being unpatentable over Everson et al. (US 3,015,589, issued Jan. 2, 1962)
("Everson") in view of Mazzanti (US 2004/0021239 Al, published Feb. 5,
2004) and Bando et al. (JP 2001-335340 A, published Dec. 4, 2001)
("Bando"); and
(b) claims 13-15 under 35 U.S.C. § 103(a) as being unpatentable
over Everson in view of Mazzanti and Bando and further in view of
Muramoto et al. (US 6,436,859 Bl, issued Aug. 20, 2002) ("Muramoto").
2 We refer to the Specification, filed Nov. 1, 2012 ("Spec."); Final Office
Action, notice emailed July 6, 2015 ("Final Act."), Appeal Brief, filed Feb.
5, 2016 ("Appeal Br."); and the Examiner's Answer, notice emailed Sept.
21, 2016 ("Ans.").
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Application 13/666,321
ANALYSIS
The § 103 (a) rejection over Everson, Mazzanti, and Banda
Claims 1--4, 7-10, 12, 16, and 17 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Everson in view of Mazzanti
and Bando. Appellant sets forth arguments for claim 1 as a first group and
arguments for claims 7, 8, and 17 as a second group (Appeal Br. 7-13). We
address claims separately from representative claim 1 only to the extent that
they have been argued separately pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
Claims 1--4, 9, 10, 12, and 16
Appellant's principal argument3 regarding claim 1 is that one of
ordinary skill in the art would have lacked a reason or a reasonable
expectation of success for using an acid solution of fluoride and phosphate
ions to recondition a mold comprising a titanium-aluminum-nitride-
containing glass release layer, as recited in claim 1 (Appeal Br. 9).
Specifically, Appellant contends Everson discloses the use of individual
acids to descale and de-invest metal molds, not a mixture of acids, while
Mazzanti discloses an acid mixture to regenerate the pores of a resin mold,
which might produce surface oxidation layers having different chemistries
than surface oxidation layers formed on the surface of Everson's metal
surfaces (id. at 8, 10). Appellant further argues that none of Everson,
Mazzanti, and Bando disclose or suggest reconditioning a titanium-
aluminum-nitride-containing glass release layer, which would have a
3 Appellant discusses their invention at page 7 of the Appeal Brief, including
an asserted need for the invention. This appears to be an overview of the
invention and Appellant's view of its place in industry. Appellant does not
make any specific assertion of long felt need as a secondary consideration as
a rebuttal to the Examiner's obviousness rejection.
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Application 13/666,321
different surface oxidation layer chemistry than the surface oxidation layers
of Everson and Mazzanti (id. at 10-11). Appellant also argues the "obvious
to try" rationale is inapplicable because the applied references do not
provide any direction about what acids to use for reconditioning a mold
having a titanium-aluminum-nitride-containing glass release layer and do
not indicate that using both fluoride and phosphate ions is critical (id. at 11-
12).
Appellant's arguments are unpersuasive. The Examiner finds Everson
discloses a method of reconditioning metal molds for shaping glass articles
(Final Act. 2). As stated above, Appellant states that Everson treats metal
molds (Appeal Br. 8) and does not argue this finding. The Examiner further
finds Everson's process includes contacting the mold surface with an
aqueous mineral acid solution comprising fluoride ions, chloride ions, or
phosphate ions but does not disclose using a mixture of phosphate ions and
fluoride ions in the solution (Final Act. 2).
Everson discloses a descaling process in which metal is immersed in a
molten salt bath, quenched in water, immersed in a dilute inorganic acid,
rinsed, and immersed in another acid solution (Everson 3:57-72). Everson
discloses the dilute inorganic acid can be "hydrochloric acid, sulfuric acid,
phosphoric acid, nitric acid, or hydrofluoric acid, with or without corrosion
inhibitor" (id. 3:62---65). Thus, Everson's disclosure supports the
Examiner's findings regarding its use of acid for descaling.
In response to Appellant's arguments, the Examiner reiterates that
Everson discloses the use of hydrofluoric ions and phosphoric ions at
column 3, lines 61-64 and the Examiner concludes it would have been
obvious to combine hydrofluoric acid and phosphoric acid, which Everson
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Application 13/666,321
uses for the same purpose, to make a third mixture that is used for the very
same purpose (Ans. 3). Such a rationale has been previously expressed:
"[i]t is prima facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition which is to be used for the very same purpose." In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980) (citations omitted).
Therefore, the Examiner has set forth findings supported by Everson's
disclosure and a rationale supporting a conclusion that it would have been
obvious to combine the acids disclosed by Everson for descaling a metal
surface to form a mixture of the acids for the same purpose, thus meeting the
"contacting" step of claim l. Appellant has not filed a Reply Brief or
otherwise responded to the Examiner's findings and rationale in the
Examiner's Answer. The Examiner also finds that Mazzanti discloses the
use of acid mixtures for descaling molds (Ans. 2-3). Mazzanti appears to be
merely cumulative in view of the Examiner's findings and conclusion
regarding Everson.
The Examiner finds Everson does not disclose a mold having a
titanium-aluminum-nitride-containing glass release layer (Final Act. 3). The
Examiner finds Bando discloses such a mold and concludes it would have
been obvious to modify the process of Everson to include a mold having a
titanium-aluminum-nitride-containing glass release layer because Bando
teaches that such a release layer has excellent high temperature durability
and mold release performance (id.). Bando teaches a titanium-aluminum-
nitride (TiAlN) film for a mold and that the film "has excellent high
temperature durability and mold-releasing performance" (Bando abstract).
Thus, the disclosure of Bando supports the Examiner's findings and
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rationale to support a conclusion of obviousness.
To the extent Everson does not explicitly disclose its process is used
to treat titanium-aluminum-nitride-containing glass release layers, Everson
discloses its process is "applicable to a wide variety of both ferrous and non-
ferrous metals and alloys, including such metals as titanium" (Everson 3 :44--
52). Thus, Everson's process can be used for a wide range of metals and
alloys. Based upon such a disclosure, one of ordinary skill in the art would
have had a reasonable expectation of success that Everson's process would
be useful for reconditioning a titanium-aluminum-nitride-containing glass
release layer, such as the film disclosed by Bando. In comparison, Appellant
argues that a surface oxidation layer for the metal surface of Everson has a
different chemistry than a surface oxidation layer for a titanium-aluminum-
nitride-containing glass release layer and a person of ordinary skill in the art
would have had no reason or reasonable expectation of success for using
Everson's process to recondition a titanium-aluminum-nitride-containing
glass release layer (Appeal Br. 9-11). However, Appellant does not cite any
evidence or persuasive technical reasoning that the process of Everson
would not be effective for reconditioning the titanium-aluminum-nitride film
of Bando. Therefore, a preponderance of the evidence in the record supports
the Examiner's conclusion that it would have been obvious to modify
Everson in view of Bando to use a mixture of acid ions to recondition a
titanium-aluminum-nitride-containing glass release layer, as recited in claim
1.
Moreover, with regard to Appellant's arguments that none of the
applied references disclose reconditioning a titanium-aluminum-nitride-
containing glass release layer with an aqueous mineral acid solution
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comprising fluoride and phosphate ions, as recited in claim 1, the test for
obviousness is not that the claimed invention be expressly suggested in any
one or all of the references but what the combined teachings of the
references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Everson demonstrates it was
known to use acidic solutions containing phosphate or fluoride ions to
recondition metal surfaces, Bando discloses the benefits of using a titanium-
aluminum-nitride film for a mold, and the Examiner has set forth rationales
for combining the acids disclosed by Everson and for modifying Everson's
process to use Bando' s film.
In addition, Appellant argues that the acid of Everson would not
contact a surface oxidation layer, as recited in claim 1, because the molten
salt bath of Everson would have already removed any surface oxidation
layer (Appeal Br. 8-10). In support of this, Appellant asserts Everson's
examples XIII, XIV, and XV demonstrate it is optional to apply acid after
using the molten salt bath (id. at 9-10).
Appellant's arguments are unpersuasive. The Examiner correctly
finds Everson teaches that salt baths alone have not been adequate to clean
mold surfaces and, based upon this, one of ordinary skill in the art would
have understood that the acid used by Everson treats oxidation remaining
after the salt treatment (Ans. 2, citing Everson 1 :54--58). Indeed, Everson
discloses the particular procedure used to treat a surface depends upon the
type of metal treated and the material adhering to it (Everson 4:3-7).
Everson further teaches "it is frequently desirable, after the fused salt
treatment, to contact the surface of the metal being treated with an inorganic
acid at an elevated temperature" (id. 4: 18-21 ). Moreover, although
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examples XIII, XIV, and XV do not include an acid treatment, examples
XVI and XVII do (id. 3:70-75, 4:1-25). Therefore, Everson's disclosure
demonstrates treatments including the application of acid after a salt bath are
effective, and even advantageous, for treating the surfaces of molds.
For these reasons and those set forth in the Examiner's Answer, the
Appellant's arguments do not identify a reversible error in the Examiner's
rejection of claim 1. Appellant states claims 2--4, 9, 10, 12, and 16 stand or
fall with claim 1 (Appeal Br. 8).
Claims 7, 8, and 17
Claim 7 depends from claim 1 and further recites "wherein the
aqueous mineral acid solution comprises an acid mixture of HF, HCl, and
H3P04." Claims 8 and 17 depend from claim 7.
For the rejection of claim 7, Appellant cites the arguments for claim 1
and asserts "[ t ]here is even less of a reason to modify the single acid of
Everson to include three components" (Appeal Br. 13). However, Everson
discloses that hydrochloric acid, phosphoric acid, or hydrofluoric acid can be
used for its acid immersion step (Everson 3: 62---64 ). As discussed above, the
Examiner concludes it would have been obvious to combine these acids,
which are used for the same purpose of reconditioning metal surfaces, to
form a mixture used for the same purpose (Ans. 3). Therefore, the Examiner
has set forth findings supported by Everson's disclosure and a rationale
supporting a conclusion that it would have been obvious to combine the
claimed acids. As a result, Appellant's arguments do not identify a
reversible error in the Examiner's rejection.
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For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1--4, 7-10,
12, 16, and 17 over Everson, Mazzanti, and Bando.
The § 103 (a) rejection over Everson, Mazzanti, Banda, and Muramoto
Claims 13-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Everson in view of Mazzanti and Bando and further in
view of Muramoto. Appellant states claims 13-15 stand or fall with claim 1
(Appeal Br. 8). Therefore, for the reasons discussed above and those set
forth in the Examiner's Answer, we sustain the Examiner's§ 103(a)
rejection of claims 13-15 over Everson, Mazzanti, Bando, and Muramoto.
DECISION
The Examiner's rejection of claims 1--4, 7-10, and 12-17 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).
AFFIRMED
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