Ex Parte Kudva et al

Patent Trial and Appeal Board

Feb 11, 2015

12732597 (P.T.A.B. Feb. 11, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GAUTAM NARENDRA KUDVA, CHIH YUAN LU,
WEIWEI LUO, YOSHIHIRO NAKAMURA, and TETSUZOU YAMADA
__________

Appeal 2013-003573
Application 12/732,597
Technology Center 1700
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 13–27. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to a glass sheet having an average
surface roughness of between 0.5 to 1.1 nm (claim 13) and an intra-surface
standard deviation of less than or equal to 0.05 nm (claim 21). The glass
sheets are formed by a fusion process and are etched (Spec. ¶ 1). The glass
sheets may be used to make liquid crystal displays (LCDs). Id. The surface
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roughness of the sheet is important in order to reduce the probability of
electrostatic discharge (Spec. ¶ 4).
Claims 13 and 21 are illustrative:
13. A glass sheet, produced by a fusion process, having a fusion line
and having first and second major surfaces, each of the first and second
major surfaces has an area greater than five square meters wherein at least
one of the first and second major surfaces has an average surface roughness
over at least the central 90% of its area which is in the range of 0.5
nanometers to 1.1 nanometers.

21. A glass sheet produced by a fusion process having first and
second major surfaces each of which has an area greater than five square
meters wherein at least one of the first and second major surfaces has an
average surface roughness over at least the central 90% of its area which is
in the range of 0.5 nanometers to 1.1 nanometers, and wherein at least one of
the first and second major surfaces has an intra-surface standard deviation of
its surface roughness over at least the central 90% of its area which is less
than or equal to 0.05 nanometers.

Appellants appeal the following rejections:
1. Claims 13–17 and 20 are rejected under 35 U.S.C. § 102(b) as being
unpatentable over Yanase et al. (JP 2008-001589, published Jan. 10
2008 wherein the Examiner uses US 2009/0226671 A1, published
Sept. 10, 2009 as the translation of the Japanese document (hereinafter
“Yanase”)).
2. Claims 18, 19, and 21–27 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yanase in view of Bi et al. (US
2005/0019504 A1, published Jan. 27, 2005 (hereinafter “Bi”)).

Appellants’ arguments focus solely on independent claims 13 and 21
(App. Br. 9–12, and 17–20).
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FINDINGS OF FACT AND ANALYSES
REJECTION (1): § 102(b)
The Examiner finds Yanase teaches a glass sheet made by a fusion
method having an average surface roughness of 1 nanometer or less over at
least 90% of its area (Final Act. 2). The Examiner finds that Yanase’s
disclosure at paragraph 66 includes several surface roughness ranges that
include 1 nm or lower (i.e., “10 [Angstroms] or lower”) and 0.7 nm or lower
(i.e., “7 [Angstroms] or lower”) that disclose specific values within the
claimed range (i.e., 1.0 nm and 0.7 nm) and that are sufficiently specific so
as to anticipate the claimed surface roughness range of 0.5 to 1.1 nm (Ans.
4).
Appellants argue that under Atofina v. Great Lakes Chemical Corp.,
441 F.3d 991 (Fed. Cir. 2006), the endpoints of Yanase’s surface roughness
ranges do not constitute a disclosure of the endpoints of that range (App. Br.
9–10). Appellants contend that the endpoints of Yanase’s disclosed surface
roughness ranges do not disclose values within Appellants’ claimed range of
an average surface roughness of 0.5 to 1.1 nm (Reply Br. 4). Appellants
contend that in light of Atofina Yanase’s disclosures regarding the surface
roughness are not sufficiently specific to anticipate the claimed surface
roughness range (App. Br. 10–11; Reply Br. 4).
Contrary to Appellants’ arguments, the facts of Atofina are
distinguishable from the facts of the present appeal. In Atofina the prior art
disclosed a temperature range (i.e., “100 to 500°C”) which was broader and
fully encompassed the claimed temperature range (i.e., “330 to 450°C”).
The court found that the prior art and claimed ranges were considerably
different and no reasonable fact finder could conclude that the prior art
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described the claimed range with sufficient specificity to anticipate the
claimed invention. Atofina, 441 F.3d at 999. The court further found that
the disclosure of a range of “150 to 350°C” does not constitute a specific
disclosure of the endpoints of that range (i.e., 150°C and 350°C). Id. at
1000. The court explained that the prior art disclosure is only that of a
range, not a specific temperature in that range, and the disclosure of the
range is no more a disclosure of the endpoints of the range than it is each of
the intermediate points. Id.
In contrast, Yanase discloses that the average surface roughness of the
glass substrate is “10 Å or lower” (i.e., 1 nm or lower) and preferably is “7
Å or lower” (0.7 nm or lower) (emphasis added). In other words, Yanase
discloses embodiments that include two distinct average surface roughness
values; 1 nm or another lower value, or 0.7 nm or another lower value. We
do not find that Yanase discloses a range like the one considered by the
court in Atofina.1 Accordingly, we do not find that Atofina is controlling
here.
Rather, the Examiner correctly finds that Yanase teaches
embodiments (i.e., 1 nm and 0.7 nm) where the average surface roughness
falls within the claimed surface roughness range (i.e., 0.5 to 1.1 nm).
Titanium Metals Corp. v. Banner, 778 F.2d 775 (Fed. Cir. 1985) (“[W]hen
by recitation of ranges or otherwise, a claim covers several compositions, the
claim is ‘anticipated’ if one of them is in the prior art.”). Accordingly,

1 Though we find that Yanase teaches average surface roughness values that
fall within the claimed range so as to anticipate, in the event of further
prosecution the Examiner may also want to consider that our reviewing court
has held that overlapping ranges are prima facie obvious. In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003).
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Yanase anticipates the subject matter of claim 13 and so we affirm the
Examiner’s § 102(b) rejection of claims 13–17 and 20 over Yanase.

REJECTION (2): § 103
The Examiner finds that Yanase teaches the subject matter of claim
21, except for the standard deviation of the surface roughness being less than
or equal to 0.05 nanometers, a requirement of all claims under this rejection
including claims 18 and 19 which depend from claim 13 (Final Act. 5–6).
The Examiner finds that Bi discloses a glass optical coating with Ra and Rq
values less than about 5 nm, which results in a standard deviation of zero
based on an equation stated on page 6 of the Final Office Action. The
Examiner finds that Bi discloses high uniformity along the surface of the
optical coating results in high optical quality (Final Act. 6). The Examiner
concludes that it would have been obvious for the surface roughness of the
glass sheet disclosed in Yanase to have a standard deviation of less than 0.05
in order to provide high uniformity, which results in high optical quality
(Final Act. 6).
Appellants argue that Yanase and Bi fail to teach or suggest “at least
one of the first and second major surfaces has an intra-surface standard
deviation of its surface roughness over at least the central 90% of its area
which is less than or equal to 0.05 nanometers” as required by claim 21
(App. Br. 17). Appellants contend that the Examiner’s reliance on the
values of Ra and Rq in Bi as being the same so that the standard deviation is
zero is mistaken because Bi does not disclose that the Ra and Rq are the
same (App. Br. 18). Appellants argue that Bi does not disclose any specific
teachings regarding the standard deviation of the surface roughness and the
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Examiner mistakenly relates surface roughness with “high uniformity” (App.
Br. 19). Appellants contend that Bi only discusses standard deviations of the
index of refraction and coating thickness, not surface roughness. Id.
Appellants contend that a high uniformity in coating thickness and index of
refraction does not necessarily mean that the surface roughness is uniform.
Id.
The Examiner agrees with Appellants that Ra and Rq are not
necessarily equal (Ans. 5). The Examiner finds that Bi discloses that
uniformity in the coating thickness and index of refraction affects optical
quality (Ans. 5). The Examiner concludes that it would have been obvious
that achieving uniform thickness is related to minimizing the standard
deviation of the surface roughness. Id.
The preponderance of the evidence favors Appellants. The Examiner
has not established where the applied prior art teaches or suggests the
surface roughness standard deviation is less than 0.05 nm as required by
claim 21. The Examiner’s reliance on the general teaching of uniform
properties such as index of refraction and thickness as the basis for finding
that Bi would have suggested the claimed standard deviation of the surface
roughness is unsupported. Indeed, the Examiner has not provided any
credible evidence to substantiate the assertion that “to achieve a uniform
index of refraction, surface roughness deviations would also need to be
minimized since deviations in index of refraction is directly dependent on
surface roughness” (Ans. 5).
On this record, the Examiner has not dispensed with the initial
burden of providing a prima facie case of obviousness. We reverse the
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Examiner’s § 103 rejection of claims 18, 19, and 21–27 over Yanase in view
of Bi.

DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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