Ex Parte Gross

Patent Trial and Appeal Board

Nov 30, 2018

13584902 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/584,902 08/14/2012
22928 7590 12/04/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Timothy Michael Gross
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-190 4477
EXAMINER
FERGUSON, LAWRENCE D
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 TIMOTHY MICHAEL GROSS 1
Appeal2018-002270
Application 13/584,902
Technology Center 1700
Before BRADLEY R. GARRIS, JENNIFER R. GUPTA, and
JANEE. INGLESE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
rejections under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable
over Harvey et al., (US 2010/0206008 Al, published Aug. 19, 2010)
(hereinafter "Harvey") and dependent claims 2-5, 7-10, and 12-24 as
unpatentable over Harvey alone or in combination with an additional prior
art reference. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Coming Incorporated is identified as the real party in interest (App. Br. 2).
Appeal2018-002270
Application 13/584,902
Appellant claims an article comprising a glass material having a
Vickers crack initiation threshold of at least about 10 kgf, wherein the glass
material is an alkali aluminosilicate glass having at least one modifier
selected from the group consisting of alkali metal oxides and alkaline earth
metal oxides, and wherein the mol% ratio of Ah03+B20ialkaline metal
modifiers is greater than 1 ( claim 1 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. An article comprising a glass material, the glass material having
a thickness of less than about 1.5 mm, a compressive layer
extending from a surface of the glass material to a depth of layer of
at least 7 5 microns, an inner central region under a tension of up to
about 7 5 MPa, and a Vickers crack initiation threshold of at least
about 10 kgf, wherein the compressive layer is under a
compressive stress of at least 250 MPa, wherein the glass material
is an alkali aluminosilicate glass comprising at least 50 mol% Si02
and at least one modifier selected from the group consisting of
alkali metal oxides and alkaline earth metal oxides, wherein [ Ah03
(mol%) + B203(mol%))/(I alkali metal modifiers (mol%))] > 1
and wherein the article exhibits a resistance to the formation of
median and/or radial cracks.
In rejecting claim 1, the Examiner finds that Example 1 of Harvey
discloses a glass material embodiment having a composition wherein the
mol% ratio is within the claimed range (Final Action 3). The Examiner also
finds that Harvey does not disclose the claimed amounts of Vickers crack
initiation threshold and other properties but concludes that such amounts
would have been obvious "since these properties directly affect the
mechanical strength of the glass material and since it has been held that
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Appeal2018-002270
Application 13/584,902
discovering an optimum value of a result effective variable involves only
routine skill in the art" (id.).
Appellant argues that the Examiner's finding regarding the mol%
ratio of Harvey's Example 1 fails to consider the alkali metal modifier Na20
in the Example 1 embodiment and that consideration of this modifier yields
a mol% ratio of 0.70 instead of greater than 1 as claimed (App. Br. 3).
Appellant further argues that the Examiner's obviousness conclusion
concerning the claimed amount of Vickers crack initiation threshold is
erroneous because "[t]he Examiner has provided no evidence that the
Vickers crack initiation threshold is recognized as a result-effective variable
for the mechanical strength of the glass by Harvey, or in the art" (id. at 6).
In the Response to Argument section of the Answer, the Examiner
does not dispute the validity of Appellant's arguments that a proper
calculation of the mol% ratio for Harvey's Example 1 yields a value below
the claimed range and that the Examiner provides no evidence to show
Vickers crack initiation threshold is recognized as a result-effective variable
for the mechanical strength of glass (see Ans. 6-10). Rather, the Examiner
responds to these arguments by relying on rationales differing from those
expressed in the rejection. In particular, the Examiner states that Harvey
discloses another glass composition embodiment in paragraph 18, (i.e., at
lines 11-15 of the second column on page 2) wherein the mol% ratio is
greater than 1 as claimed (Ans. 6-7). The Examiner also states that the glass
material of this other embodiment is substantially identical to the glass
material of claim 1 and therefore "would be expected to meet the claimed
Vickers crack initiation threshold" (id. at 10).
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Appeal2018-002270
Application 13/584,902
Appellant replies to these new rationales by explaining that the
Examiner's cited glass composition in paragraph 18 of Harvey yields a total
mol% value of only 90.0 rather than the expected 100, that one of ordinary
skill in the art would recognize the erroneous nature of this cited
composition, and that the nondisclosed components needed to arrive at 100
mol% could be additional alkali metal modifiers impacting the mol% ratio
(Reply Br. unnumbered 2). Appellant argues "[t]his uncertainty makes it
impossible to determine whether the composition cited by the Examiner
exhibits the inequality [Ah03(mol%) + B203(mol%))/(I alkali metal
modifiers (mol%))] > 1, as recited in the present claims" (id. at unnumbered
2-3). For this same reason, Appellant also argues that "it is not possible to
determine what properties [ such as the claimed Vickers crack initiation
threshold] would be inherent to the alleged composition cited by the
Examiner" (id. at unnumbered 4).
Appellant's explanations and arguments in the Reply Brief are not
contested by the Examiner in the record of this appeal.
The foregoing circumstances lead us to determine that the Examiner
fails to establish a prima facie case of unpatentability for sole independent
claim 1. Therefore, we do not sustain the§ 103 rejections of claims 1-5, 7-
10, and 12-24.
The decision of the Examiner is reversed.
REVERSED
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