Ex Parte Hubert

Patent Trial and Appeal Board

Jan 20, 2015

12589120 (P.T.A.B. Jan. 20, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAVID E. HUBERT
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Appeal 2012-011943
Application 12/589,120
Technology Center 3600
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Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
LISA M. GUIJT, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
David E. Hubert (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claim 1 as
unpatentable over Alts (US 5,683,764, issued Nov. 4, 1997), Appellant’s
Admitted Prior Art (“AAPA”)(Spec. 1), and Krause (US 2011/0113706 A1,
published May 19, 2011); claim 6 as unpatentable over Alts, AAPA, Krause,
and Schoofs (US 4,674, 243, issued June 23, 1987); and claim 7 as
unpatentable over Alts, AAPA, Krause, and Richard (US 6,737,105 B2,

1 According to Appellant, the real party in interest is Ibis Tek, LLC.
Br. 4.

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issued May 18, 2004). Claims 2–5 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates to “spaced transparent armor used on
vehicles for military or security force applications.” Spec. 1, ll. 9–10 and
Fig. 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. Transparent armor for use as a window of a vehicle,
comprising:
a vehicle window frame (24);
a stack of three or more components (10a 10b) disposed
within the vehicle window frame (24), each component
consisting of three or more layers of transparent materials
having nominal thicknesses of 8 mm and separated from each
other by inter-layers of PVB or urethane nominally 1 mm thick,
each component provided as a rigid laminate using an autoclave
operation so as to cause the inter-layers to adhere the layers
together, the components (10a 10b) separated from each other
by spacer material (12) so that adjacent components are held
apart by a respective gap or space of at least 3 mm; and
a seal adhesive (16) disposed so as to cover the edges of
the stack of three or more components (10a 10b) and hold the
stack together;
wherein the seal adhesive (16) is selected from the group
consisting of adhesives applied in the form of a liquid and a
structural adhesive tape.

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ANALYSIS
Claim 1
Appellant argues that Alts fails to disclose a “transparent armor
system,” but rather discloses a “sound-insulated window.” Br. 11.
According to Appellant, Alts’ sound-insulated window is used in a train,
whereas the transparent armor of claim 1 is used in “military vehicles that
travel off-road.” Id. at 13. At the outset, we note that, Appellant does not
point to any explicit definition in the Specification for the term “armor.” In
determining the ordinary and customary meaning of a term as viewed by a
person of ordinary skill in the art, it is appropriate to consult a general
dictionary definition for guidance. Comaper Corp. v. Antec, Inc., 596 F.3d
1343, 1348 (Fed. Cir. 2010). In this case, we agree with the Examiner that
an ordinary and customary meaning of the term “armor” is “any protective
covering.2” Ans. 2. As such, the Examiner is correct in that because Alts’
sound-insulated window provides armoring (protection) “against a BB or
rain,” it constitutes a “transparent armor system,” as called for by claim 1.
Id.
Appellant further argues that although Alts discloses two panes of
insulating glass wherein one pane may be “multilayered glass,” this is not a
teaching of “layers of transparent materials of nominally 8 mm thicknesses,
separated by inter-layers of urethane or PVB, formed into a rigid structure in
an autoclave process.” Br. 12. We are not persuaded by Appellant’s
arguments because nonobviousness cannot be established by attacking the

2 An ordinary and customary meaning of the term “armor” is “a
protective outer layer.” Merriam Webster’s Collegiate Dictionary (10th Ed.
1997).

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references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In this case, the Examiner admits that Alts fails to disclose
“the composition of the armor components” and the “thickness of the
transparent material.” Final Act. 2–3. Nonetheless, the Examiner finds that
determining an optimum value for the thickness of the transparent material
“involves only routine skill in the art” and “AAPA teaches that the
composition of the claimed armor is commonly known in the art.” Id. at 3
(citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980)). Appellant has not
shown error in the Examiner’s findings.
Appellant also argues that Alts fails to disclose “the recited seal
adhesive.” Br. 12. According to Appellant, in contrast to claim 1, which
requires a “seal adhesive to hold a stack of rigid laminates together,” Alts
employs the use of border 13 to hold plates 10, 11 together. Id. We are not
persuaded by Appellant’s argument because as Appellant notes, Alts
specifically discloses replacing border 13 with an adhesive. See id. (citing
Alts, col. 2, l. 53). Furthermore, we recognize that the limitation of “a seal
adhesive . . . so as to cover the edges of the stack . . . and hold the stack
together” is a functional limitation. “[W]here the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210, 213
(CCPA 1971). Nevertheless, the Examiner must provide sufficient evidence
or technical reasoning to establish the reasonableness of the Examiner’s
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belief that the functional limitation is an inherent characteristic of the prior
art. In this case, the Examiner is on solid ground, “that any adhesive
connecting two separate parts together will necessarily hold the two pieces
together.” Ans. 2. As such, using an adhesive instead of border 13 would
necessarily cover the edges and hold plates 10, 11 and spacer 12 together.
Appellant has not come forth with any persuasive evidence or technical
reasoning to show that the adhesive of Alts is not capable of performing the
stated function, namely, “to cover the edges of the stack . . . and hold the
stack together.” See Br. 12–13.
Appellant further argues that because the adhesive of Krause is silicon
or glazing type, Kraus’ adhesive is not “selected from the group consisting
of adhesives applied in the form of a liquid and a structural adhesive tape,”
as called for by claim 1. Br. 13 (citing Krause, para. 5). According to
Appellant, silicon adhesive cannot be poured because it is a paste and
glazing tape is not a structural adhesive tape because it does not include the
term “structural” in its description and it is “used for sealing, not structure.”
Id. at 13–14.
At the outset, we agree with Appellant that Krause’s “glazing tape”
does not constitute a “structural adhesive tape” because Krause fails to
describe the glazing tape as a “structural” tape. Claims are construed with
an eye toward giving effect to all terms in the claim. Bicon Inc. v.
Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). However, we agree
with the Examiner that the limitation “applied in the form of liquid” is a
product-by-process limitation and does not distinguish the claimed product
from that of the prior art. Ans. 3. It is well settled that the patentability of a
product does not depend on its method of production. If the product in a
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product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior art product was
made by a different process. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). Once the PTO has made out a prima facie case that the applicant’s
claimed product and the product of the prior art reasonably appear to be the
same, the burden shifts to the applicant to prove otherwise. Id. In this case,
claim 1 merely requires a “seal adhesive . . . to cover the edges of the stack
. . . and hold the stack together.” See Br. 17, Claims App. We agree with
the Examiner’s finding that Alts discloses seal adhesive 14 for covering the
edges and holding together spacer 12 and panes 10, 11. See Final Act. 2; see
also Alts, col. 2, ll. 52–54. However, although Alts fails to disclose the type
of adhesive, the Examiner finds that Krause’s silicone material is used as an
adhesive in a transparent armor. See id. at 3; see also Krause, para. 5. We
thus agree with the Examiner’s conclusion that it would have been obvious
for a person of ordinary skill in the art to use Krause’s silicone material in
Alts’ system as a seal adhesive to cover the edges and hold together spacer
12 and panes 10, 11 in order “to use any commonly known adhesives to seal
the transparent armor.” See id. Appellant has not alleged, much less shown,
that Krause’s silicone material has any structural attributes that would not
allow it to cover the edges and hold together spacer 12 and panes 10, 11 of
Alts. In sum, Appellant has not provided any persuasive evidence or
technical reasoning that establishes that an adhesive “applied in the form of
a liquid,” per se, yields a structure that differs from that of Alts’ system as
modified by Krause, when the silicone material has cured. In other words,
whether Krause’s silicone is a liquid or a paste when applied does not yield a
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different structure when used in the system of Alts to cover the edges and
hold together spacer 12 and panes 10, 11.
Finally, we are not persuaded by Appellant’s arguments that the
claimed invention achieved reduction of areal density by 25% and sales of
$2 million because Appellant has not provided any objective evidence. See
Br. 15. Attorney argument cannot take the place of evidence in the
record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir.
1997).
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Alts, AAPA, and
Krause.

Claims 6 and 7
Appellant relies on the arguments presented supra. Br. 15.
Accordingly, for the same reasons, we like wise sustain the rejections under
35 U.S.C. § 103(a) of claim 6 as unpatentable over Alts, AAPA, Krause, and
Schoofs and claim 7 as unpatentable over Alts, AAPA, Krause, and Richard.

SUMMARY
We affirm the Examiner’s decision to reject claims 1, 6, and 7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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