Ex Parte Fisher

Board of Patent Appeals and Interferences

Dec 31, 2007

10855415 (B.P.A.I. Dec. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM KEITH FISHER
____________

Appeal 2007-3685
Application 10/855,415
Technology Center 1700
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Decided: December 31, 2007
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Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2007-3685
Application 10/855,415

I. BACKGROUND
The invention relates to a polymer sheet used as an interlayer in light-
transmitting laminates such as safety glass, multiple-layer glass panels using
the interlayer, and a method for reducing the transmission of infrared
radiation through such glass panels. To reduce the transmission of infrared
radiation, an infrared absorbing agent is included in the interlayer. Claim 1
is illustrative of the subject matter on appeal:
1. A polymer interlayer comprising an infrared absorbing agent,
wherein said agent comprises a dielectric core disposed within a conductive
coating and wherein said agent selectively absorbs infrared light.

Appellant requests review of the sole rejection maintained by the
Examiner: The rejection of claims 1-33 under 35 U.S.C. § 103(a) as
unpatentable over Toyama et al. (US 6,903,152 B2 issued Jun. 7, 2005) in
view of Kondo (US 6,315,848 B1 issued Nov. 13, 2001), Oldenburg et al.
(US 6,685,986 B2 issued Feb. 3, 2004), and Varadan et al. (US 5,366,664
issued Nov. 22, 1994).

II. DISCUSSION
Appellant contends that, as a matter of law, the Examiner’s rejection
is improper (Br. 3). According to Appellant, the Examiner has: (1) failed to
identify a proper motivation for combining the references, and (2) has relied
upon nonanalogous art (Br. 3).
Appellant does not argue any claim separately from the others. We
select claim 1 as representative for deciding the issues on appeal.
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The issue on appeal arising from the contentions of Appellant and the
Examiner is: Has Appellant identified a reversible error in the Examiner’s
obviousness rejection of representative claim 1?
A preponderance of the evidence of record supports the following
Findings of Facts (FF):
1. Toyama and Kondo are both directed to interlayer films that contain
an agent functioning to protect from infrared radiation; referred to as
heat-ray shielding microparticles (Toyama, col. 13, ll. 20-27) or ultra-
fine heat insulating particles (Kondo, col. 2, l. 61 to col. 3, l. 3).
2. According to Toyama, the particle is a metal oxide particle. The
composition of the metal oxide microparticle is not particularly
restricted but includes, among others, a particle of tin-doped indium
oxide (ITO), antimony-doped tin oxide (ATO), and aluminum-doped
zinc oxide (AZO) (Toyama, col. 13, ll. 27-30).
3. Kondo describes a wide range of compositions for the ultra-fine
particles including a long list of metals, compounds containing metals
(oxides, nitrides, oxynitrides, sulfides), and composites containing the
metals (doped metals and doped compounds of metal including ITO
and ATO) (Kondo, col. 4, ll. 14-61).
4. Oldenburg describes metal nanoshell particles that can be tuned to
absorb infrared radiation, the particles consisting of a non-conducting
inner layer surrounded by a conducting outer layer (Oldenburg, col. 3,
ll. 36-45).
5. Oldenburg discloses that the nanoshell particles can be added to
polymers such that the resulting materials can absorb radiation.
“Embodiments containing these materials can be used in thermal
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Appeal 2007-3685
Application 10/855,415

management to produce more energy efficient buildings, automobiles
and storage chambers creating savings in air conditioning and heating
costs.” (Oldenburg, col. 4, ll. 39-52).
6. Oldenburg specifically suggests using the nanoshells to absorb or
scatter light in the infrared range and that “such compositions would
be ideal for use in a wide range of materials including … windows …
that could be used on or in vehicles and building structures.”
(Oldenburg, col. 8, ll. 17-23).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
Appellant contends that Oldenburg “is nonanalogous art to the
polymer interlayer and laminated glass art of the present invention.” This is
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Application 10/855,415

because, according to Appellant, “the Oldenburg reference is classified in
the Patent Office class of ‘coating process’ (427),” an art area nonanalogous
to the interlayer and laminated glass art (Br. 5).
Whether a prior art reference is within the scope of the prior art one of
ordinary skill in the art would have been presumed to have been aware, i.e.
analogous art, is a threshold question in the inquiry of obviousness. To label
the reference as analogous prior art merely connotes that it is relevant to a
consideration of obviousness under section 103 as “prior art.” In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985). “Two criteria have evolved for
determining whether prior art is analogous: (1) whether the art is from the
same field of endeavor, regardless of the problems addressed, and (2) if the
reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992)). As recognized in KSR, “familiar items may have obvious uses
beyond their primary purposes.” KSR, 127 S. Ct. at 1742.
We determine that Oldenburg is within the scope of prior art such that
one of ordinary skill in the art of polymer interlayers and laminated glass
would have been presumed to have been aware of its contents. Oldenburg is
within the field of endeavor: This reference specifically discloses that the
nanoshell particles disclosed therein are useful in thermal management
windows (FF 5 and 6). Oldenburg is also reasonably pertinent to the
particular problem of using particles to absorb radiation in window materials
to provide a heat insulation property (FF 4-6).
Appellant has not shown that the Examiner reversibly erred in finding
Oldenburg to be within the scope and content of the prior art.
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Application 10/855,415

Turning to the question of whether the combination of prior art
provides the necessary evidence of obviousness; we agree with the Examiner
that it does. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 127 S. Ct. at 1739. Here, Toyama and Kondo both show that
it was known in the art to use particles in an interlayer to provide the
interlayer with a heat insulation property (FF 1). Toyama and Kondo evince
that those of ordinary skill in the art understood that a range of metals, metal
oxides, and composites were known to provide the necessary heat insulation
property (FF 2 and 3). Oldenburg describes a particle that also has heat
insulation properties and can be used in windows as well as in polymer
materials (FF 5 and 6). The combination is obvious because the use of the
known infrared ray absorbing nanoshell particles of Oldenburg would have
been expected to produce the predictable result of providing the necessary
heat insulating property in the interlayer of Toyama (FF 4-6).1

III. CONCLUSION
Appellant has not identified a reversible error in the Examiner’s
obviousness rejection of representative claim 1. We sustain the rejection of
claims 1-33 under 35 U.S.C. § 103(a).

IV. DECISION
The decision of the Examiner is affirmed.

1 A discussion of Varadan is not necessary to our Decision.
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Application 10/855,415

V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

tc

BRENC LAW
ANDREW BRENC
P.O. BOX 155
ALBION, PA 16401-0155

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