Ex Parte Frank et al

Patent Trial and Appeal Board

Feb 27, 2017

13738163 (P.T.A.B. Feb. 27, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/738,163 01/10/2013 Marcus FRANK JAR-3691-2889 9950
23117 7590 03/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
BURKHART, ELIZABETH A
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARCUS FRANK, ANTON DIETRICH, GREG MILLER,
RICHARD BLACKER, MUHAMMAD IMRAN, and
JEAN-MARC LEMMER1
Appeal 2015-006964
Application 13/738,163
Technology Center 1700
Before CHUNG K. PAK, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellants identify Guardian Industries Corp. as the real party in interest.
Appeal Br. 3.
2 We refer to the Specification filed January 10, 2013 (“Spec.”), the Final
Office Action mailed June 5, 2014 (“Final Act.”), the Appeal Brief filed
January 8, 2015 (“Appeal Br.”), the Examiner’s Answer mailed May 20,
2015 (“Ans.”), and the Reply Brief filed July 20, 2015 (“Reply Br.”). The
record also includes an Appeal Brief filed January 7, 2015, however, the
Examiner’s Answer is in response to the Appeal Brief filed January 8, 2015.
Ans. 1.
Appeal 2015-006964
Application 13/738,163
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision maintaining the rejection under 35 U.S.C. § 103 of claims 1-9, 17,
18, and 27-30 over Hartig '5103 in view of Reymond4 and Hartig '7185 and
of claim 19 over Hartig '510 in view of Reymond, Hartig 718, and Taylor.6
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a heat-resistant transparent
coated glass article and a method for forming the same. Spec. Abstract. The
coated glass article includes IR reflecting layer(s) comprising Ag (Spec. 1 6)
with layers comprising Ni and/or Ti disposed over and contacting the layer
containing Ag (Spec. 7-8). Coated articles including layers comprising
NiTi that comprise oxides (NiTiOx), and their manufacture, are described.
See, e.g., Spec, 27, 53, 57.
Independent claims 1 and 27 are both directed to a method for making
a coated article. Claim 17 is directed to making an insulated glass unit that
includes providing a coated article made in accordance with claim 1, that is,
3 Hartig et al., US 7,572,510 B2, August 11, 2009 (“Hartig '510”).
4 Reymond et al., WO 2010/142926 Al, published December 16, 2010
(“Reymond”). Corresponding published application US 2012/0087005 Al,
published April 12, 2012, is relied on as the English language equivalent,
which use is not squarely contested by Appellants (see generally Appeal
Br.), although Appellants refer to WO 2010/14926 Al, Dec. 16, 2010 as
“allegedly equivalent” to US 2012/0087005 Al, Apr. 12, 2012 (Appeal
Br. 7).
5 Hartig et al., US 5,344,718, issued September 6, 1994 (“Hartig 718”).
6 Taylor et al., US 2007/0128449 Al, published June 7, 2007 (“Taylor”).
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Application 13/738,163
the claim is directed to a method of making an insulated glass unit that
includes the coated glass article provided by the method of claim 1.
Claim 1 is representative.
1. A method of making a coated article including a coating
supported by a glass substrate, the method comprising:
disposing at least one first dielectric layer on the substrate;
disposing a first layer comprising Ag on the at least one
first dielectric layer;
disposing at least one second dielectric layer over the first
layer comprising Ag;
disposing a second layer comprising Ag on the at least one
second dielectric layer;
disposing a first layer comprising Ni and Ti over and
contacting the second layer comprising Ag;
disposing at least one third dielectric layer on the first
layer comprising Ni and Ti;
disposing a third layer comprising Ag on the at least one
third dielectric layer;
disposing a second layer comprising Ni and Ti over and
contacting the third layer comprising Ag;
disposing at least one fourth dielectric layer on the second
layer comprising Ni and Ti; and
wherein each of the first and second layers comprising Ni
and Ti has a metal content of from about 10-30% Ni and from
about 70-90% Ti.
Appeal Br. (Claims Appendix) 16.
Independent claim 27 recites, inter alia, “disposing a layer comprising
an oxide of Ni and Ti” wherein the “layer comprising the oxide of Ni and Ti
has a metal content of from about 10-30% Ni and from about 70-90% Ti.”
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that a preponderance of the evidence
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supports the Examiner’s determination that one of ordinary skill in the art,
armed with the knowledge provided in the applied prior art would have been
led to the subject matter recited in claims 1-9, 17, 19, and 27-30; however,
we are persuaded of reversible error in the Examiner’s rejection of claim 19.
We add the following.
“[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.”
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner’s rejection. See 37
C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356, 1365—
66 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make
a prima facie case, it has long been the Board’s practice to require an
Appellants to identify the alleged error in the examiner’s rejection); In re
Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (“[T]he burden of showing
that the error is harmful normally falls upon the party attacking the agency’s
determination.” (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009))).
All claims7
The Examiner relies on Hartig '510 for its disclosure of a method of
making a coated article including a coating supported by a glass substrate
which includes disposing blocker layers 205 and 305 onto infrared-reflective
(1R) layers 200 and 300, where each 1R layer can comprise Ag (col. 7,11. 5-
7 Appellants argue the patentability of claims subject to the first rejection on
the basis of independent claim 1 (Appeal Br. 7-12) and rely on the
dependency of claim 19 as to the second rejection (Appeal Br. 14).
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10) and each blocker layer can be Ti, Ni, Cr, or NiCr (col. 8,11. 20-35,
col. 9,11. 17-31, col. 10,11. 1-10). Ans. 2-3.
The Examiner further relies on Hartig '510 for teachings related to
blocker layers, incorporated by reference from WO 97/48649 (“WO '649”).
Ans. 4. Teachings relied on include, in particular, “that the presence of
titanium increases visible transmission”—namely after oxidation during heat
treatment—(WO '649, p. 2,11. 10—20) and that the ability of nickel to
transmit light is not great (WO '649, p. 3,11. 1-3). Ans. 4, 7-8.
The Examiner concedes Hartig '510 does not disclose a blocker layer
comprising Ni and Ti, wherein the layers have 10-30% Ni and 70-90% Ti
and relies on Reymond for its disclosure of blocker layers for protecting
silver films, particularly those that comprise both Ni and Ti (nickel-titanium
alloy). Ans. 3 (citing Reymond 147). Reymond discloses blocker films
“based on a metal chosen from nickel, chromium, titanium, niobium or an
alloy of these various metals” with particular mention of “nickel-titanium
alloys (especially those containing about 50% of each metal by weight) and
nickel-chromium alloys (especially those containing 80% nickel by weight
and 20% chromium by weight)” and that “[t]he various metals or alloys
cited may also be partially oxidized.”8 Reymond |47.
The Examiner finds Reymond to teach the use not only of the
particularly preferred 50:50 nickel-titanium alloy, but more generally of all
nickel-titanium alloys, and that nickel-titanium alloys are suitable
alternatives to the use of nickel-chromium alloys in blocker layers for
8 We note that Hartig '510, including portions cited by the Examiner for
barrier layer 205 (col. 9,11. 17-31), discloses use of material that is readily
oxidized, including titanium metal (col. 9,11. 20-22).
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protecting silver layers. Further, in articulating that the titanium protective
metal film oxidizes during heat treatment and that the transmissivity is
increased during such heating (Ans. 8) and that Ni provides less desirable
transmissivity (Ans. 7-8), the Examiner finds de facto that the percentage of
titanium in the nickel-titanium alloy is a result effective variable as to the
transmission of light following oxidation (Ans. 8). Likewise, the Examiner
finds the percentage of nickel to be a result effective variable in that nickel
improves durability even if it does not transmit light well. Ans. 4, 7-8
(citing Hartig 718, col. 4,11. 45—55, WO '649, p. 3,11. 1-3).
The Examiner has determined that the percentage composition of the
two metals in the nickel-titanium alloy is known to be a result effective
variable as to, inter alia, transmissivity in the oxidized metal. In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the
prior art that a property [or a result] is affected by the variable is sufficient to
find the variable result-effective.”).
The Examiner de facto concludes that the determination of the
optimum, or workable, metal composition of the nickel-titanium alloy to be
used in the blocking layer, including when it is oxidized, through no more
than routine experimentation would have been well within the ambit of one
of ordinary skill in the art. Ans. 4, 8-9; see In re Boesch, 617 F.2d 272, 276
(CCPA 1980) (“[DJiscovery of an optimum value of a result effective value
... is ordinarily within the skill of the art; In re Aller, 220 F.2d 454, 456
(CCPA 1955) (“[W]here the general conditions of a claim are disclosed in
the prior art, it is not inventive to discover the optimum or workable ranges
by routine experimentation.”).
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Appellants proffer arguments for patentability of claims 1-9, 17, 18,
and 27-30 on the basis of independent claim 1 (Appeal Br. 7-12) and rely
on these arguments as to claim 19 (Appeal Br. 14). Appellants’ arguments
focus on the percentage metal composition of the layer comprising nickel
and titanium.
Appellants contend that Reymond (147) is not properly a general
disclosure of a blocker layer comprising Ni and Ti (Appeal Br. 8; Reply Br.
2), but is rather limited to its teaching of a 50/50 ratio of Ni and Ti (Appeal
Br. 9; Reply Br. 2-3). Appellants contend that the more precise teaching of
Ni and Ti in a 50/50 ratio teaches away from the claimed ratio (Appeal Br.
8-9; Reply Br. 2-3) and that the Examiner has relied on impermissible
hindsight in relying on the broad genus of nickel-titanium alloy (Reply Br.
2-3).
Appellants’ arguments are not persuasive because Reymond
paragraph 47 makes mention in particular of nickel-titanium alloys—without
specifying percentage composition—and then goes on to emphasize
“especially those containing about 50% of each metal by weight” and, as
such, constitutes a general disclosure of nickel-titanium alloys. In re Fritch,
972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well-settled that the prior art is
relevant for all that it teaches to those of ordinary skill in the art.”); Merck &
Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The
disclosure of “a multitude of effective combinations does not render any
particular formulation less obvious.”). Further, the disclosure of particular
ranges, even preferred ranges, differing from those claimed does not
constitute a teaching away from the broader disclosure. See, e.g., DyStar
Textilfarben Gmbh & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
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1356, 1364 (Fed. Cir. 2006) (“We will not read into a reference a teaching
away from a process where no such language exists.”).
Appellants contend that the particular claimed ratio provides for
advantages over Reymond’s 50/50 ratio and that these evidence the
patentable nature of claim 1. Appeal Br. 10.
Appellants’ contentions are unpersuasive of reversible error because
we are directed to no evidence, only arguments. See, e.g., In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take
the place of evidence.”). Appellants have not, accordingly, met the requisite
burden to establish patentability on the basis of unexpected results. In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he burden of showing
unexpected results rests on he who asserts them.”); see also In re Freeman,
474 F.2d 1318, 1324 (CCPA 1973).
Appellants contend that the Examiner erred in relying on the teachings
incorporated into Hartig '510 from WO '649, arguing both that the relied on
material is not properly incorporated (Appeal Br. 10; Reply Br. 4) and that it
fails to teach or suggest that the presence of Ti increases visible transmission
compared to NiCr or any other metal, but instead merely states that the oxide
of a metal is more transparent than that metal alone (Appeal Br. 11; Reply
Br. 4-5).
As to what teaching is properly incorporated by reference, Appellants
contend that one skilled in the art looking at Hartig '510 would only look to
WO '649 for its teachings regarding niobium as being suitable for its blocker
film region 105. Appeal Br. 10; Reply Br. 4.
We determine the incorporated teaching is not so limited as
Appellants contend, and encompasses the particular teachings relied on by
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the Examiner because Hartig '510, col. 8,11. 33-34, specifically identifies
the material to be incorporated as that “relating to blocker layers” and the
material relied on by the Examiner relates to protective films sandwiching
the silver film, i.e., blocker layers (WO '649, 2,1. 11 to 3,1. 3). Such
identification of subject matter and where it can be found by identification of
the reference is sufficient. See, e.g., Husky Injection Molding Sys. Ltd. v.
Athena Automation Ltd., 838 F.3d 1236, 1248 (Fed. Cir. 2016); Callaway
Golf Co. v. Acushnet Co., 576 F.3d 1331, 1345^16 (Fed. Cir. 2009).
As to what the incorporated material teaches, Appellants contend that
the Examiner erred in determining that it “states or suggests that the
presence of Ti increases visible transmission compared to NiCr or any other
metal” because it “merely states that an oxide of a metal is more transparent
than that metal alone” (Appeal Br. 11; Reply Br. 4-5), but only address one
cited portion from WO '649 (page 2,11. 10-20), and proffer no further
explanation why the Examiner erred in determining that the percentage
titanium in the nickel-titanium alloy would be recognized as a result
effective variable (see generally Appeal Br.; Reply Br.).
On this record, in which Appellants fail to fully address the
Examiner’s determinations and cited evidence, we find the preponderance of
evidence supports the Examiner’s position. In essence, the Examiner has
determined that the particular identification of titanium as suitable for
providing such a layer with improved visible transmission upon oxidation
(WO '649, 2,11. 11-20) and teaching that the ability of nickel layers to
transmit light is limited (WO '649, 3,11. 1-3), reasonably teaches that it is
recognized in the prior art that the amount of titanium included in the nickel-
titanium alloy would affect, inter alia, the transmission of light through the
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layer. Appellants’arguments do not persuade us otherwise. Applied
Materials, 692 F.3d at 1297 (“A recognition in the prior art that a property
[or a result] is affected by the variable is sufficient to find the variable result-
effective.”).
Further, Appellants contend that Hartig 718—cited for its teaching to
include nickel for durability—teaches away from a lower amount of nickel
and towards a higher amount and, as such, one skilled in the art would not
have arrived at the claimed composition through routine experimentation to
achieve desired properties (Appeal Br. 11-12; Reply Br. 5-6), particularly
when faced with conflicting concerns of durability and light transmission
(Appeal Br. 11-12).
Appellants’ argument that Hartig 718 teaches away is unpersuasive
because the disclosure of particular ranges, even preferred ranges, differing
from those claimed does not constitute a teaching away from the broader
disclosure. DyStar Textilfarben, 464 F.3d at 1364. Also, having failed to
establish that the Examiner erred as to the amounts of nickel and titanium in
the nickel titanium alloy being result effective variables, as explained above,
the further argument grounded on conflicting concerns of durability and
light transmission is unpersuasive as balancing the two concerns as required
would also be within the ambit of the routineer. Cf. See Applied Materials,
692 F.3d at 1298 (“Evidence that the [multiple result-effective] interacted in
an unpredicted or unexpected way could render the combination
nonobvious, . . . but [appellant] failed to show anything unpredictable or
unexpected in the interaction of the variables.”).
For these reasons, we are unpersuaded that the Examiner erred in
determining that one skilled in the art, armed with the knowledge of the
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cited prior art, at the time of the invention would have arrived at the subject
matter of independent claim 1 within the meaning of 35 U.S.C. § 103.
Claim 18
Claim 18, depending from claim 17, is directed to the method of
making an “IG [insulating glass] unit [that] has a LSG [light to solar gain
ratio] of greater than or equal to 2.15.” The Examiner relies on Hartig '510’s
disclosure of a method of making an insulated glass unit as to the limitations
of claim 17 (Ans. 5, citing Hartig '510 Fig. 5, col. 2,11. 1-18) and finds that
such an insulated glass unit, “employing the Ni and Ti containing blocker
layers as suggested by Reymoud, would inherently have an LSG of greater
than or equal to 2.15 since this is an inherent result of using Ni and Ti in the
blocker layer as evidenced by the instant specification” (Ans. 5, citing Spec.
| 61). Relying on a quotation from paragraph 61, the Examiner further
maintains “that, ‘in the context of IG units, for example, the use of NiTiOx
advantageously allows for higher LSG values to be obtained . . . whereas an
LSG value of around 2.1 or lower is possible if only NiCr based layers are
used without NiTiOx inclusive layers.’ . . . [and] the claimed LSG property
would necessarily flow from the use of Reymoud’s oxidized NiTi alloy as
evidenced by the instant specification.” Ans. 9-10.
Appellants argue that the Examiner has erred in finding that the
recited LSG value is inherent, i.e., necessarily met, in the relied on
combination, and also that the Specification does not teach that the result is
necessarily obtained when using Ni and Ti in layers. Appeal Br. 13-14;
Reply Br. 6.
On this record, we find the Examiner has failed to meet the burden to
establish that the relied on combination would necessarily meet the recited
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LSG property. As to Appellants’ Specification, paragraph 61, we find the
Examiner’s reliance misplaced because, looking at the complete statement
rather than only the portion reproduced in the Answer, it merely sets forth
that “an LSG of 2.15 or higher is possible” with the use of NiTiOx, not that
it necessarily is the result. Ans. 5; Spec. 1 61. And as highlighted by
Appellants’ arguments, there are many factors that reasonably would be
understood to affect whether or not an LSG value of 2.15 or higher would be
obtained, and we find the Examiner has failed to sufficiently explain why the
relied on combination—grounded on provision of an alloy that is then
subjected to at least some oxidation—would provide NiTiOx arranged so as
to provide such an LSG value. The Examiner has the burden of providing
reasonable proof that a claim limitation is an inherent characteristic of the
prior art. In re Best, 562 E.2d 1252, 1254-55 (CCPA 1977). In this case,
the Examiner has failed to identify any particular process set forth in the
Specification—also in accordance with the claim—that provides an
insulated glass unit having the recited LSG value and compare that same
process to the relied on combination to properly establish that it is identical
or substantially identical. See generally Final Act.; Ans.
We are unable to sustain the rejection of claim 18 as set forth by the
Examiner and decline to scour the record in the first instance for facts that
might support the rejection, as our primary role is review, not examination
de novo.
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DECISION
In view of the reasons set forth above, we affirm the Examiner’s
rejections of claims 1-9, 17, 19, and 27-30, but reverse the Examiner’s
rejection of claim 18.
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)(iv).
AFFIRMED-IN-PART
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