Ex Parte Fredholm

Patent Trial and Appeal Board

Aug 18, 2016

13202110 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/202,110 08/18/2011
22928 7590 08/22/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Allan M. Fredholm
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.
SP09-038 5935
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
08/22/2016 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN M. FREDHOLM 1
Appeal2015-001724
Application 13/202, 110
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection2 of
claims 1-7 and 16-33. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
1 The real party in interest is identified as Coming, Incorporated. (Appeal
Brief, filed May 29, 2014 ("App. Br."), 2.)
2 Final Office Action mailed April 10 2014 ("Final Rejection"; cited as
"FR.").
Appeal2015-001724
Application 13/202,110
OPINION
A. Introduction 3
The subject matter on appeal relates to a "a glass manufacturing
system and method for forming a high quality thin glass sheet which has a
thickness less than about 2 mm and more preferably less than about 100
µm." (Spec. i-f 2.) These glass sheets may be used in "personal computer
(PC) monitors, television (TV) monitors, personal digital assistants (PD As)
and other hand held devices." (Id. i-f 3.)
The system that manufactures the glass sheets includes "a delivery
system" that delivers molten glass to a downstream "rolling pair" "to form a
glass sheet," and "a temperature controlled environment" to provide a "cross
temperature gradient to stretch the glass sheet such that the glass sheet has a
substantially constant thickness." (Id. i-f 6.) Representative claim 1 reads:
1. A glass manufacturing system comprising:
a delivery system where molten glass transitions from a
guided flow to a free fall flow;
a roHing roH pair having two roHing roHs which receive
the molten glass free falling from the delivery system and roll
the molten glass to form a glass sheet; and
an enclosure, located downstream of the two rolling
rolls, configured to provide a temperature controlled
environment with a cross temperature gradient where two outer
edges of the glass sheet are exposed to a hotter temperature than
a central portion of the glass sheet, wherein the temperature
controlled environment provides the cross temperature gradient
to stretch the glass sheet such that the glass sheet has a
substantially constant thickness.
Representative claim 22 reads:
3 Application 13/202,110, Glass Manufacturing System and Method/or
Forming a High Quality Thin Glass Sheet, filed August 18, 2011. We refer
to the"' 110 Specification," which we cite as "Spec."
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Application 13/202,110
22. A glass manufacturing system comprising:
a delivery system which outputs molten glass;
a rolling roll pair having two rolling rolls which receive
the molten glass from the delivery system and roll the molten
glass to form a glass sheet, wherein at least one of the rolling
rolls is a compensated roll such that when the molten glass is
drawn between the rolling rolls then the glass sheet formed has
a center portion that is thicker relative to two outer edges of the
glass sheet; and
an enclosure, located downstream of the two rolling
rolls, which contains and uses electrical heaters to heat the two
outer edges of the glass sheet and further uses controlled heat
loss to maintain a lower temperature at the central portion of the
glass sheet whereby the glass sheet is stretched so the glass
sheet has a substantially constant thickness; and
a first edge roll pair and a second edge roll pair, the first
edge roll pair and the second edge roll pair are located within
the enclosure, wherein a first edge portion of the glass sheet is
drawn between two edge rolls associated with the first edge roll
pair, and an opposing second edge portion of the glass sheet is
drawn between two edge rolls associated with the second edge
roll pair.
(App. Br. 16 (emphases added).)
The Examiner maintains the following grounds of rejection: 4
A. Claim 32 stands rejected under 35 U.S.C § 112, first paragraph
for failure to meet the enablement requirement.
B. Claims 24 and 30-33 stand rejected under 35 U.S.C § 112,
second paragraph as being indefinite.
C. Claims 1, 2, 6, 7, and 16-21 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Mueller (U.S. Patent
4 Examiner's Answer mailed October 10, 2014 ("Ans."). The rejection of
claims 1-7 and 16-21under35 U.S.C § 112, second paragraph as being
indefinite has been withdrawn. (Ans. 2.)
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Application 13/202,110
Application Publication No. 2008/0184741, published August
7, 2008).
Cl. Claims 3 and 4 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Mueller and Kariya (U.S. Patent No.
6,758,064 Bl, issued July, 6, 2004).
C2. Claim 5 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Mueller and Kaiser (U.S. Patent No.
6,896,646 B2, issued May 24, 2005).
D. Claims 22, 23, 25-27, and 29-31 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Mueller, Kaiser, and
Kari ya.
DI. Claim 28 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Mueller, Kaiser, Kariya, and Hayashi (JP 11-
139837, publication date May 5, 2005).
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Rejection A: Claim 32
Claim 32 depends from claim 22 and additionally recites "wherein the
glass sheet after being drawn between the first edge roll pair and the second
edge roll pair has a substantially constant thickness below 1 µm." (App. Br.
20)
Appellant does not dispute that claim 32 fails to meet the enablement
requirement under 35 U.S.C § 112, first paragraph because the '110
Specification does not disclose how to make a glass sheet having "a
substantially constant thickness below 1 µm." (App. Br. 4.) Appellant
instead submits that claim 32 as it is currently written "contains a
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Application 13/202,110
typographical error where the term 1 µm should have been 100 µm." (Id.)
We accordingly summarily affirm the rejection of claim 32 under 35 U.S.C
§ 112, first paragraph.
Rejection B: Claims 24 and 30-33 5
Claims 24 and 30-33 are dependent claims of claim 22 which is an
apparatus claim. Claim 24 recites "wherein the two outer edges of the glass
sheet are exposed to at least a 100°C hotter environment than the central
portion of the glass sheet." Claims 30-33 similarly recite various
parameters that the recited apparatus may achieve.
The Examiner rejects claims 24 and 30-33 as being indefinite finding
that "it is unclear what structural limitations are intended to further limit the
apparatus of claim 22" and that "the manner of operating a device does not
differentiate apparatus claims from the prior art. (Ans. 3; see also FR. 3--4.)
Claim 24
Appellant argues that the rejection of claim 24 under section 112,
second paragraph should be reversed "for at least the reasons discussed''
with respect to the indefiniteness rejection of claim 1 which has been
withdrawn. (Reply 8; App. Br. 4--8; see Ans. 2.) 6 Appellant does not
present separate arguments for the indefiniteness rejection of claim 24.
"'Functional' terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any and all
embodiments which perform the recited function." In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). However, "[b]readth is not to be equated with
indefiniteness .... " In re Miller, 441F.2d689, 693 (CCPA 1971). "[T]he
5 Claims 30-33 stand or fall with claim 1 with respect to the indefiniteness
rejection. (See App. Br. 4--8.)
6 Reply Brief filed November 11, 2014 ("Reply").
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Application 13/202,110
definiteness of the language employed must be analyzed-not in a vacuum,
but always in light of the teachings of the prior art and of the particular
application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232,
1235 (CCPA 1971).
In this case, claim 22 from which claim 24 (and claims 30-33) depend
recites, among other components, "an enclosure ... which contains and uses
electrical heaters ... and further uses controlled heat loss to maintain a
lower temperature at the central portion of the glass sheet whereby the glass
sheet is stretched so the glass sheet has a substantially constant thickness."
Figure 1 of the '110 Specification illustrates "a temperature controlled
environment 120." The '110 Specification discloses that "[ t ]he temperature
controlled environment 120 was made by enclosing a section of the
manufacturing process below the rolling roll pair 106 and using electrical
heaters to heat the outer edges 118a and 118b of the glass sheet 11 O" and
using controlled heat loss to maintain the lower temperature at the central
portion 116 of the glass sheet 110. (Spec. p. 9 i131.)7 The '110
Specification further provides an embodiment in which:
the temperature controlled environment 120 can be made by
enclosing at least a section of the process and using (for
example): (1) thermal insulation to limit cooling from outside
the manufacturing process; (2) active cooling such as forced air,
or radiative heat sinks such as water cooled devices etc. to
maintain a lower temperature at the central portion 116 of the
glass sheet 110; and/or (3) active heating such as electric
7 We include the page of the paragraph in the citation because the '110
Specification contains two paragraphs labeled [0031 ], one on page 9 and
another on page 11. The ' 110 Specification also contains two paragraphs
labeled [0032] and [0033], respectively. (Compare Spec. p. 9--10 with p.
12.)
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Application 13/202,110
heating that is applied through windings of heated tubes etc. to
reheat the glass sheet 110 and in particular reheat the outer
edges 118a and 118b of the glass sheet 110.
(Id. if 19.)
Given these examples of a "temperature controlled environment 120"
(id.), we find that, when read in light of the specification, a skilled artisan
would understand what is claimed in claim 24, which recites "wherein the
two outer edges of the glass sheet are exposed to at least a 100°C hotter
environment than the central portion of the glass sheet."
Accordingly, the Examiner has not persuasively established that claim
24 is indefinite. We, therefore, will not sustain the Examiner's§ 112, second
paragraph rejection of clam 24.
Claims 30-33
Claim 3 0 depends from claim 22 and additionally recites "wherein the
rolling roll pair receives the molten glass which has a viscosity in range of
150-10,000 poises."
Claim 3 1 depends from claim 22 and additionally recites "wherein the
glass sheet after being drawn between the first edge roll pair and the second
edge roll pair has a substantially constant thickness below 1 mm."
Claim 3 2 depends from claim 22 and additionally recites "wherein the
glass sheet after being drawn between the first edge roll pair and the second
edge roll pair has a substantially constant thickness below 1 µm."
Claim 33 depends from claim 22 and additionally recites "wherein the
glass sheet after being drawn between the first edge roll pair and the second
edge roll pair has a surface quality in range of 0 .25 nm Ra."
The Examiner rejects each of these claims finding that "[i]t is unclear
what structure is intended by the limitation" recited in each claim. (FR. 4.)
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Application 13/202,110
The Examiner additionally finds that "per MPEP 2114 [,] the material
worked upon does not differentiate apparatus claims prior the prior art."
(Id.)
Appellant does not present separate arguments for the indefiniteness
rejection of claims 30-33. (App. Br. 8 ("Applicant respectfully traverse this
rejection for at least the reasons discussed above" with regard to claim 1 ).)
Appellant additionally states that these claims may be canceled if the
indefiniteness rejection is maintained. (App. Br. 8; Reply 2.) Because
Appellant appears to have acquiesced to the rejection by expressing a
willingness to cancel them, we summarily affirm the indefiniteness rejection
of claims 30-33.
Rejection C: Claim 18
With regard to the obviousness rejection of claim 1 based on Mueller,
the dispositive issue is whether the Examiner has shown that a system
having "an enclosure [120] ... configured to provide a temperature
controlled environment with a cross temperature gradient where two outer
edges [ 118a, b] of the glass sheet are exposed to a hotter temperature than a
central portion [ 116] of the glass sheet, wherein the temperature controlled
environment provides the cross temperature gradient to stretch the glass
sheet such that the glass sheet has a substantially constant thickness" is
present in or would have been obvious in view of the applied prior art.
(Bracketed labels illustrated in Fig. IA, infra.)
The '110 Specification discloses a glass manufacturing system shown
in Figure 1 A which is reproduced below:
8 Claims 2, 6, 7, and 16-21 stand or fall with claim 1 with respect to the
obviousness rejection. (See App. Br. 8.)
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Application 13/202,110
11~.
1440 -110
125tl- ""-., -J26o
1420
-·-t-·-·--------------------------1---
1 : :: I '-"140
FIG. lA
-!Mo
--VO
FIG. IA of the '110 Specification illustrating "a front view ... of an
exemplary glass manufacturing system." (Spec. i-f 9.)
As illustrated, the glass manufacturing system 100 "includes a
delivery system 102 within which there is a guided flow of molten glass
104[.]" (Spec. i-f 17.) The glass manufacturing system 100 includes rolling
pair 106 having "rolling rolls 108a and 108b" that receive the molten glass
"to form a glass sheet 11 O" having "a central portion 116" and "two outer
edges 118a and 118b." (Id. i-fi-117, 18.)
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Application 13/202,110
The glass manufacturing system 100 also includes "a temperature
controlled environment 120" that maybe made "by enclosing a section of the
manufacturing process below the rolling roll pair 106 and using electrical
heaters to heat the outer edges 118a and 118b of the glass sheet 110 and
using controlled heat loss to maintain the lower temperature at the central
portion 116 of the glass sheet 110." (Id. i-f 17, and p.9, i-f 31.) Figure IA
shows that the temperature controlled environment 120 may include edge
roll pairs 122 and 124 and edge rolls 128-138 for "a first edge portion
126a." (Id. i-fi-120, 21.) The system may also include "pulling roll pairs 140"
having pulling rolls 142a/b "to help obtain the desired thickness." (Id. i-f 22.)
The cited prior art Mueller relates to a glass manufacturing process
"for producing glass panes ... with a thickness of less than 3mm" which
may be "used as substrate glass in electronic devices, for example displays
(portable telephones, flat screens, etc.) and digital mass storage devices of
computers." (Mueller i-fi-12, 3.) The prior art process may produce the glass
sheets by "drawing a thin glass ribbon vertically downward" and "possibly
also lateral to the ribbon direction." (Id. i-fi-130, 72.) The process is
illustrated in Fig. 1 of Mueller which is reproduced below:
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Application 13/202,110
~--·-
At~\. /l
~
Fig. 1 of Mueller illustrating "a vertical section" through the glass
manufacturing process. (Id. i-f 82.)
Figure 1 of Mueller illustrates that the glass melt feed enters "through
the inlet 1, and into the drawing tank 6." (Mueller i-f 83.) The inlet 1
includes "segmented heating device 3 and a segmented cooling device 4."
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Application 13/202,110
(Id.) The drawing tank 6 facilitates the glass feed to be drawn or stretched in
a predetermined direction to form a glass sheet. (Id.) The X-direction as
illustrated "indicates direction of the glass ribbon width, the Y-direction is
the direction perpendicular to the ideal ribbon surface (glass ribbon
thickness), and the Z-direction is the direction in the drawing direction." (Id.
ii 81.)
Figure 1 of Mueller shows that warp rollers 29, drawing rollers 30 and
stabilizing rollers 37 are used to stretch the glass sheet. (Id. iii! 90, 93.) In
particular, the "warp rollers 29 are disposed in the rolling furnace 25" to
"stretch the glass ribbon in the X-direction[.]" (Id. if 90.) The "rolling
furnace 25 has an electric heating unit 27 that is segmented in the X- and Y-
direction and a cooling unit 28 that is also segmented in the X and Y-
direction." (Id.; Fig. 1.) Figure 1 of Mueller also illustrates that
"[u]nderneath the rolling furnace 25 is the drawing shaft 32." (Id. if 91.)
"The drawing shaft 32 has an electric heating unit 35 that is segmented in
the X- and Y-direction, and has a cooling unit 36 that is also segmented in
the X- and Y-direction." (Id.)
Appellant argues that the Examiner erred in rejecting claim 1 because
"Mueller requires only the use of electric heating devices 35 and cooling
devices 3 6 along with radiation shielding to improve the temperature
homogeneity of a glass ribbon[] without any teaching of Applicant's
claimed limitation." (App. Br. 9 (emphasis in original).)
We interpret the system claim recited in claim 1 as directed to an
apparatus, i.e. a structure which can be termed a machine or manufacture
under 35 U.S.C. § 101. It has long been held that "apparatus claims cover
what a device is, not what a device does." Hewlett-Packard Co. v. Bausch
& Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). An inventor of a
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Application 13/202,110
structure (machine or article of manufacture) is entitled to benefit from all of
its uses, even those not described, Roberts v. Ryer, 91 U.S. 150, 157 (1875),
and conversely, patentability of the structure cannot tum on the use or
function of the structure. In re_Michlin, 256 F.2d 317, 320 (C.C.P.A. 1958)
("It is well settled that patentability of apparatus claims must depend upon
structural limitations and not upon statements of function.").
Claims directed to an apparatus therefore must be distinguished from
the prior art in terms of structure. See In re Danly, 263 F.2d 844, 848
(CCPA 1959) ("Claims drawn to an apparatus must distinguish from the
prior art in terms of structure rather than function"); In re Gardiner, 171
F .2d 313, 315-16 ( CCP A 1948) ("It is trite to state that the patentability of
apparatus claims must be shown in the structure claimed and not merely
upon a use, function, or result thereof."). "'By its own literal terms a claim
employing [functional] language covers any and all embodiments which
perform the recited function." Swinehart, 439 F.2d 213. Where there is
reason to believe that the structure of the prior art is inherently capable of
performing the claimed function, the burden shifts to the applicant to show
that the claimed function patentably distinguishes the claimed structure from
the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981).
Here, Appellant does not dispute that the prior art teaches "an
enclosure" but argues that the prior art enclosure is not configured to
perform the functions recited in claim 1. The Examiner, on the other hand,
finds that the prior art reference teaches that "the glass ribbon is selectively
heated and/or cooled" during the manufacturing process "both in the ribbon
direction and lateral to the ribbon direction." (Mueller i-f 56 (cited in FR. 5).)
The prior art teaches that "segmented heating and cooling elements can be
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Application 13/202,110
used to set definite temperature profiles in the ribbon direction [and] lateral
to the ribbon direction" to "improve[] the results with regard to the quality
criterion of warp." (Mueller i-f 52.)
Whereas the "main purpose of the temperature controlled environment
120" disclosed in the '110 Specification "is to slightly re-soften the glass
sheet 110 after the rolling operation to draw and stretch the glass sheet 110
(Spec. i-f 19), the Mueller reference teaches that "different zones of the glass
ribbon can be cooled slightly differently as needed so that the stretching of
the glass ribbon in the Z-direction is greater for the hotter glass zones than it
is for cooler glass zones." (Mueller i-f 51.)
Mueller therefore teaches that: ( 1) "in the stretching of the glass
ribbon, the reduction in the thickness of the cooler zones is moderately
reduced in comparison to the reduction in the thickness of the warmer
zones"; (2) "segmented heating and cooling elements can be used to set
definite temperature profiles"; (3) "an electric heating unit 35 [] is
segmented in the X- and Y-direction, and [] a cooling unit 36 [] is also
segmented in the X- and Y-direction" so that the glass sheet may be
selectively heated and/or cooled in both directions; and ( 4) heating and
cooling units such as 35 and 36 may be located along the edges (instead of
the center) of the glass sheet. (Mueller i-fi-151, 52, 56, 91 (cited in FR. 5);
Mueller Figs 1, 2.) All the heating systems are operated electrically, and the
cooling systems cooled using circulating fluids or gaseous mediums.
(Mueller i-f 94.) Based on these teachings, we find that the skilled artisan
would have understood that Mueller's segmented heating and cooling
elements would be capable of functioning to provide a temperature
controlled environment as recited in claim 1.
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We are not persuaded by Appellant's argument that Mueller's
disclosure of "an improved temperature homogeneity" teaches away from
constructing the structure of claim 1. (See App. Br. 1 O; Reply 4.) "[I]n
general, a reference will teach away if it suggests that the line of
development flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant." In re Gurley, 27 F.3d 551,
553 (Fed. Cir. 1994). Appellant points to nothing in Mueller to suggest to a
skilled artisan that the prior art glass manufacturing system having the
recited enclosure should not be modified as recited in claim 1 to produce
glass sheets "as substrate glass in electronic devices" and other applications.
(See Mueller i-f 2; see also Spec. i-f 3 (the glass sheets produced by the
claimed system may be used for "personal computer (PC) monitors,
television (TV) monitors, personal digital assistants (PD As) and other hand
held devices").) Appellant also does not convincingly explain how the
overall teachings in Mueller including having different "cooler" and
"warmer" zones to control the thickness of the glass sheet teaches away
from the enclosure recited in claim 1. (See Mueller i-f 51.)
Appellant further supports the teaching away argument by stating that
instead of using the recited enclosure, "it is Mueller's roller pairs 30 which
are used to stretch the glass sheet to obtain a predetermined thickness."
(App. Br. 10.) Appellant, however, does not explain why claim 1-an open
ended claim-would exclude such a roller pair. Appellant does not argue that
Mueller's teaching about roller pairs 30 "criticize[s], discredit[s], or
otherwise discourage[ s ]" using the enclosure as recited in claim 1. (See id;
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).) No harmful error has
been identified in this aspect of the obviousness analysis.
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Rejection D: Claim 229
With regard to the rejection of independent claim 22, Appellant
repeats the same argument that the prior art reference Mueller does not
render the claim obvious and teaches away. (See App. Br. 13-14; Reply 5-
7). We therefore sustain the rejection of claim 22 for the reasons stated
supra.
Rejections Cl, C2 & DJ: Remaining Claims
Appellant argues that the rejections of claims 3-5 and 28 are in error
based on their respective dependency from claim 1 and claim 22. (App. Br.
11-12, 14--15.) Appellant has not provided arguments separate from those
for claim 1 or claim 22, and we are not persuaded for the reasons discussed
with respect to claims 1 and 22 from which the remaining claims depend. In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.'').
New Grounds of Rejection
Claim 24 depends from claim 22, and additionally recites "wherein
the two outer edges of the glass sheet are exposed to at least a 100°C hotter
environment than the central portion of the glass sheet."
The Examiner finds that the additional limitation recited in claim 24
"only describes a manner of operating the device[.]" (Ans. 12.) Because
"'manner of operating the device does not differentiate apparatus claim from
the prior art"' as provided in MPEP 2114 (id.), we find that a skilled artisan
would have found claim 24 obvious based on Mueller's system which may
9 Claims 23, 25-27, and 29-31 stand or fall with claim 22. (App. Br. 12.)
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be used to heat certain portions of a glass sheet as recited in claim 24. (See
Ans. 13.) We therefore reject claim 24 under 35 U.S.C § 103(a) as being
unpatentable over Mueller.
We also reject claim 33 under 35 U.S.C § 103(a) as being
unpatentable over Mueller. Claim 33 (depends from claim 22) additionally
recites "wherein the glass sheet after being drawn between the first edge roll
pair and the second edge roll pair has a surface quality in range of 0.25 nm
Ra."
"It is well settled that patentability of apparatus claims must depend
upon structural limitations." Michlin, 256 F.2d at 320. Because claim 33
lacks additional structural limitations of the apparatus recited in claim 22,
we reject claim 33 based on the reasons provided supra with regard to claim
22.10
C. ORDER
The rejection of claim 32 under 35 U.S.C § 112, first paragraph is
• 1 ' • 1 summaruy sustamea.
The rejections of claims 1-7, 16-23, and 25-31 under 35 U.S.C.
§ 103(a) are sustained.
The rejection of claims 30-33 under 35 U.S.C § 112, second
paragraph is sustained.
The rejection of claim 24 under 35 U.S.C § 112, second paragraph is
reversed.
Claims 24 and 33 are rejected under 35 U.S.C. § 103(a).
10 We further note that the prior art system in Mueller can achieve a
"thickness distribution of< 20 mm." (Mueller i-f 35.)
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same record ....
AFFIRMED-IN-PART; NEW GROUND OF REJECTION
37 C.F.R. § 41.50(B)
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