Ex Parte Giron et al

Board of Patent Appeals and Interferences

Sep 20, 2011

10564501 (B.P.A.I. Sep. 20, 2011)

 

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JEAN-CHRISTOPHE GIRON, JUERGEN
SCHUETT, XAVIER FANTON, and FABIEN BETEILLE
________________

Appeal 2011-001782
Application 10/564,501
Technology Center 1700
________________

Before EDWARD C. KIMLIN, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-18, 21, and 22.
We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A glazing assembly, comprising:

a first rigid upper substrate with a solar protective layer positioned on
the outer face of the first rigid protective layer that faces outside towards the
sun;

Appeal 2011-001782
Application 10/564,501

2
at least one active system positioned on the inner face of the first rigid
substrate, the at least one active system comprising a multilayer, comprising
at least one thin film;

a second rigid lower substrate positioned below the at least one active
system; and

at least one polymer film positioned between the active system and
the second rigid substrate, the polymer film comprising a function of
retaining fragments of the glazing assembly should the glazing assembly
break.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 3):
Johnson 6,284,360 B1 Sep. 04, 2001
Barth 6,294,233 B1 Sep. 25, 2001
Giron ‘125 2004/0053125 A1 Mar. 18, 2004
Giron ‘889 WO 2002/006889 Jan. 2002

Appellants’ claimed invention is directed to a glazing assembly
comprising a first rigid upper substrate and a second rigid lower substrate.
The first substrate has a solar protective layer positioned on its outer face,
and at least one active system positioned on its inner face. In addition, a
polymer film is positioned between the active system and the second
substrate which functions to retain fragments of the glazing assembly upon
breakage.
Appealed claims 1-11, 15-18, 21, and 22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Giron in view of Barth. Claims
12-14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Giron in view of Barth and Johnson.

Appeal 2011-001782
Application 10/564,501

3
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
Examiner has not established a prima facie case of obviousness for the
claimed subject matter. Accordingly, we will not sustain the Examiner’s
rejections.
The appealed claims require at least one active system positioned on
the inner face of the first substrate, which substrate has a solar protective
layer on its outer face. The Examiner recognizes that the primary reference,
Giron, does not disclose a solar protective layer on the outer face of the first
substrate. While it may have been obvious to one of ordinary skill in the art,
based on Barth, to provide a solar protective film on the outer surface of a
glass panel, the Examiner points to no teaching in Giron or Barth for
providing an active system on the inner face of the substrate which has a
solar protective layer on its outer face. While the Examiner reasons that it
would have been obvious to orient the substrate adjacent the active system to
face either inward or outward, there is no teaching in the applied prior art to
position the active system on the inner surface of a substrate that has a
protective layer positioned on the outer surface, nor for such active system to
have a polymer film positioned between it and a second substrate.
Appellants emphasize that the present Specification teaches an
advantage of applying the active system to the first substrate rather than the
second, carrier substrate, namely, to obviate delamination to the carrier
substrate caused by surface defects resulting from contact of the second
substrate with bending members. Such a stated advantage rebuts any finding
by the Examiner that the claimed positioning of the active system is simply a
matter of obvious, design choice.
Appeal 2011-001782
Application 10/564,501

4
The Examiner’s additional citation of Johnson does not remedy the
deficiency of the combination of Giron and Barth discussed above.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

ssl