10494573 (B.P.A.I. Jul. 16, 2009)

Ex Parte Kriltz et al

Board of Patent Appeals and InterferencesJul 16, 2009

10494573 (B.P.A.I. Jul. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte UWE KRILTZ, GUNTHER HELLHAMMER, and GERT BEILICKE ____________ Appeal 2009-000864 Application 10/494,573 Technology Center 1700 ____________ Decided:1 July 16, 2009 ____________ Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge COLAIANNI. Opinion Dissenting filed by Administrative Patent Judge TIMM COLAIANNI, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. Â§ 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-000864 Application 10/494,573 2 DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134 from the Examinerâ€™s final rejection of claims 1 through 8, 10, and 11. Claim 9, the other claim pending in this application, stands withdrawn from consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C. Â§ 6. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a fire-resisting glass. Claim 1 is illustrative: 1. Fire-resisting glass fulfilling at least the requirements of fire- protection class G30 and consisting essentially of: a. a first laminated glass pane comprising two float-glass panes connected by means of an intermediate organic layer; b. a second laminated glass pane of the fire-resisting glass comprising two float-glass panes connected by means of an intermediate organic layer; c. an airtight clearance between the two laminated glass panes being evacuated and/or filled with a gas, and d. a thermal insulation layer comprising an infrared (IR) reflecting metal layer is provided on at least one of the sides of the float-glass panes, facing the intermediate organic layers, and wherein the fire-resistant glass fulfills at least the requirement of fire-protection class G30. The Examiner rejects claims 1-8, 10, and 11 under 35 U.S.C. Â§ 103(a) over Jacquemin (US 3,974,316, published Aug. 10, 1976) in combination with Ando (US 5,264,286, published Nov. 23, 1993), de Moncuit (US Appeal 2009-000864 Application 10/494,573 3 5,154,953, published Oct. 13, 1992), Bond (US 5,834,103, published Nov. 10, 1998), Yang (US 6,030,671, published Feb. 29, 2000), and/or Szczyrbowski (US 6,180,247 B1, published Jan. 30, 2001). The Examiner determines that the transitional phrase "consisting essentially of" recited in claim 1 does not exclude Jacquemin's additional layer or material, which may be hydrated aluminum phosphate or hydrated sodium silicate. (Ans. 3-5 and 9-10). Alternatively, the Examiner determines that it would have been obvious to remove Jacquemin's additional layer or material. (Ans. 9-10). Appellants disagree with both determinations. (Br. 9-13). ISSUES Have Appellants shown reversible error in the Examiner's determination that the transitional phrase "consisting essentially of" recited in claim 1 does not exclude Jacquemin's additional layer or material, which may be hydrated aluminum phosphate or hydrated sodium silicate? If so, then have Appellants shown reversible error in the Examiner's determination that it would have been obvious to remove Jacquemin's additional layer or material? We decide these issues in the affirmative. RELEVANT FINDINGS OF FACT (FF) 1. The Specification states that [t]he invention is based on the surprising realization that the combination of a known insulating glass made of two laminated glass panes having alone not sufficient fire-resisting properties Appeal 2009-000864 Application 10/494,573 4 with a thermal insulation layer being sufficiently effective also at high temperatures leads to a glass which can be used as a fire-resisting glass. . . (Spec. 3, ll. 16-20). 2. The Specification states that Surprisingly, the fire test . . . showed . . . [that the fire-resisting glass of the present invention], i.e., a laminated insulating glass with thermal insulation layer without a special layer of water- containing alkali silicate or the like . . . fulfills at least the requirements of the fire-protection class G 30. (Spec. 6, ll. 24-29) (emphasis added). 3. Jacquemin states that an "object of the present invention is to provide a panel . . . [to be] able to withstand the effects of fire." (Jacquemin, col. 1, ll. 53-56). Jacquemin teaches a glazing panel, having, inter alia, a heat convertible layer, which may be composed of a hydrated aluminum phosphate or a hydrated sodium silicate and may be converted to form a thermally insulating barrier layer upon sufficient heating (e.g., exposure to fire). (Jacquemin, col. 11, ll. 14-36, col. 7, ll. 60-68, and col. 5, ll. 5-25). Jacquemin states that the heat convertible layer, when exposed to fire, "gives rise to a porous body which forms an efficacious barrier against fire . . . and this helps to limit the increase in the temperature of the panel." (Jacquemin, col. 7, ll. 17-25). PRINCIPLES OF LAW "[T]he phrase 'consisting essentially of' limits the scope of a claim to the specified ingredients and those that do not materially affect the basic and novel characteristic(s) of a composition." In re Herz, 537 F.2d 549, 551-52 Appeal 2009-000864 Application 10/494,573 5 (CCPA 1976)(emphasis omitted)(quoting In re Janakirama-Rao, 317 F.2d 951 (CCPA 1963)). Appellants have the burden of showing that the additional layer or material taught by the prior art reference affects the basic and novel characteristic of the claimed invention. See In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). If a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). ANALYSES AND CONCLUSIONS Issue (1): Have Appellants shown reversible error in the Examiner's determination that the transitional phrase "consisting essentially of" recited in claim 1 does not exclude Jacquemin's additional layer or material? Appellants argue that claim 1, by virtue of reciting the transitional phrase "consisting essentially of," excludes Jacquemin's additional layer or material. (Br. 11). In this regard, Appellants state that "an object [of Appellants' invention] is to provide a fire-resistant glass that meets the requirements of fire-protection class G30 without needing such materials . . ." (Br. 11). In other words, Appellants argue that the basic and novel characteristic of their invention is a fire-resisting glass recited in claim 1, which has no additional layer/material that contributes to fire-resistance. Therefore, Appellants contend that the Examiner's rejection is improper because Jacquemin's hydrated aluminum phosphate and hydrated sodium Appeal 2009-000864 Application 10/494,573 6 silicate are additional layers that claim 1 excludes because they contribute to fire-resistance. We agree. The basic and novel characteristic of Appellantsâ€™ claimed invention is a fire-resisting glass without, inter alia, an additional layer or material that contributes to fire-resistance (FF 2). Therefore, the transitional phrase "consisting essentially of" recited in claim 1 excludes Jacquemin's hydrated aluminum phosphate and hydrated sodium silicate, each forming a thermally insulating barrier layer upon heating, since the addition of either of these layers materially affect the basic and novel characteristic of Appellants' claimed invention. In fact, the Specification specifically excludes a layer containing water containing alkali silicates, which includes Jacqueminâ€™s hydrated (i.e., water-containing) sodium silicate, from the invention. (FF 2). Thus, it follows that Appellants have shown reversible error in the Examiner's determination that the transitional phrase "consisting essentially of" recited in claim 1 does not exclude Jacquemin's additional layer or material, which may be hydrated aluminum phosphate or hydrated sodium silicate. Issue (2): Since Appellants have shown reversible error in the Examiner's determination that the transitional phrase "consisting essentially of" recited in claim 1 does not exclude Jacquemin's additional layer or material, then have Appellants also shown reversible error in the Examiner's determination that it would have been obvious to remove Jacquemin's additional layer or material? Appeal 2009-000864 Application 10/494,573 7 The Examiner argues that it would have been obvious to remove Jacquemin's additional layer/material because the "omission of an element and its function is obvious if the function of the element is not desired." (Ans. 9). However, as correctly stated by Appellants, removing Jacquemin's aluminum phosphate or hydrated sodium silicate "would cause Jacquemin's product to no longer be fire resistant (i.e., the purpose and goal of Jacquemin's product would be destroyed)." (Br. 12). Indeed, Jacquemin states that an "object of the present invention is to provide a panel . . . [to be] able to withstand the effects of fire." (FF 3). In that regard, Jacquemin further teaches that the hydrated aluminum phosphate or the hydrated sodium silicate forms an effective barrier against fire (FF 3). Thus, we agree with Appellants that the Examiner's proposed modification (i.e., to remove Jacquemin's hydrated aluminum phosphate or hydrated sodium silicate) would render Jacquemin's panel unsatisfactory for its intended purpose (i.e., to withstand the effects of fire). Thus, it follows that Appellants have shown reversible error in the Examiner's determination that it would have been obvious to remove Jacquemin's additional layer or material. Because the Examiner relies on, inter alia, the findings and determinations discussed above in the other rejections on appeal, we reverse all of the Â§ 103 rejections made by the Examiner. ORDER In summary, all of the rejections made by the Examiner are reversed. REVERSED Appeal 2009-000864 Application 10/494,573 8 TIMM, Administrative Patent Judge Because I disagree with my colleagues regarding the interpretation of â€œconsisting essentially ofâ€, I respectfully dissent from the decision of my colleagues. cam NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203