Ex Parte Lamine et al

Patent Trial and Appeal Board

Jan 10, 2018

14382679 (P.T.A.B. Jan. 10, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/382,679 09/03/2014 Driss Lamine 077352-0433598 5890
909 7590 01/12/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRISS LAMINE and SEBASTIEN ROY
Appeal 2018-000848
Application 14/3 82,6791
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections adverse to the patentability of claims 1-10, 15, and 17-21 under
35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellant is the Applicant, SAINT-GOBAIN GLASS FRANCE, and is
identified as the real party in interest. App. Br. 2.
Appeal 2018-000848
Application 14/382,679
SUBJECT MATTER
Sole independent claim 1 is illustrative of the subject matter on
appeal:
1. A glazing unit comprising a glass substrate equipped on one
of its faces, intended to form a face of said glazing unit in the
use position, with a thin-film multilayer comprising, from
said substrate, a film of a transparent electrically conductive
oxide based on indium tin oxide of physical thickness ei
comprised in a range extending from 50 to 200 nm, a silicon-
nitride barrier film of physical thickness G2, then a film based
on silicon oxide, said thicknesses ei and &2, expressed in
nanometers, being such that 0.11 < e2/ei <0.18.
App. Br. 21.
STATEMENT OF THE CASE
The Examiner rejects claims 1-10, 15, and 17-21 under 35 U.S.C.
§ 103(a) as being unpatentable over Durandeau2 alone or in combination
with other references. Final Act. 2-6.
The Examiner finds that the glazing unit disclosed in Durandeau
contains an indium tin oxide (ITO) layer with a thickness of between 40 and
200 nm, and a silicon-nitride barrier layer with a thickness between 2 and 10
nm. Final Act. 3. Based on these findings, the Examiner determines that
Durandeau discloses a thickness ratio of the silicon-nitride barrier layer to
ITO layer of 0.05 to 0.25, which encompasses the claimed range.3 Id. at 3.
2 WO 2012/022876 A2, published February 23, 2012. In the rejections, the
Examiner relies on US 2013/0129945 Al, as an English language translation
of Durandeau, which Appellant does not dispute.
3 As correctly noted by Appellant (App. Br. 11, Reply Br. 2), the thickness
ratio of Durandeau’s layers is actually 0.01 (2/200) to 0.25 (10/40). We treat
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Application 14/382,679
OPINION
We have considered Appellant’s arguments (App. Br. 3-18; Reply Br.
2-7) and are unpersuaded that Appellant has identified any reversible error
in the Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365-66 (Fed. Cir.
2011) (explaining the Board’s long-held practice of requiring an Appellant
to identify the alleged error in the Examiner’s rejection). Therefore, we
sustain the obviousness rejections before us based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer, except as indicated herein. We add the
following comments for emphasis.
Appellant’s arguments against the rejection are not well taken because
they are premised on a rejection that the Examiner did not make.
Specifically, Appellant argues that “the Examiner relies upon an
optimization of a parameter [i.e., the claimed thickness ratio] that is not
disclosed by Durandeau,” a parameter which is not “taught by Durandeau as
being a result effective variable.” App. Br. 9. The Examiner’s rejection,
however, is not based on an optimization theory of the thickness ratio as
Appellant urges, but rather expressly states that Durandeau’s ratio of silicon-
nitride to ITO layer thickness “encompasses the claimed range.” Final Act.
3. Such a finding is sufficient to establish a prima facie case of obviousness
and shifts the burden to Appellant to demonstrate whether the claimed ratio
exhibits unexpectedly superior results. Thus, in the context of the rejection
as actually set forth by the Examiner, it is of no moment whether the recited
ratio range is an art-recognized result effective variable.
this miscalculation as harmless error, however, because the recited ratio of
0.11 < e2/ei < 0.18 is fully encompassed by 0.01 to 0.25.
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Application 14/382,679
It is well-settled that where claimed ranges “overlap or lie inside
ranges disclosed by the prior art,” a prima facie case of obviousness exists.
In re Wertheim, 541 F.2d 251, 267 (CCPA 1976). See also In re Malagari,
499 F.2d 1297, 1303 (CCPA 1974); In re Geisler, 116 F.3d 1465, 1469
(Fed. Cir. 1997). Indeed, where, “as here, the claimed ranges are completely
encompassed by the prior art, the conclusion is even more compelling than
in cases of mere overlap.” In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003).
We therefore conclude that a prior art reference that discloses a
range encompassing a somewhat narrower claimed range is
sufficient to establish a prima facie case of obviousness. That is
not to say that the claimed composition having a narrower range
is unpatentable. Rather, the existence of overlapping or
encompassing ranges shifts the burden to the applicant to show
that his invention would not have been obvious.
Id.
Turning now to the Appellant’s data,4 we share the Examiner’s view
that such data is insufficient to demonstrate the criticality of the rejected
claims. Ans. 4.5
Specifically, “when unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991). Here, Appellant’s Examples are not compared to the closest
4 Declaration of Sebastian Roy under 37 C.F.R. §1.132 dated June 17, 2016
(hereinafter “Decl.”).
5 We do not, however, agree with the Examiner that each of Appellant’s
examples “were based on one thickness of ei, 75nm.” Ans. 4. Paragraph 9
of the Roy Declaration indicates that “the thickness ei of the ITO film was
120 nm” in Example 1.
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Appeal 2018-000848
Application 14/382,679
prior art. The Examiner determines (Final Act. 8; Ans. 4), and Appellant
does not dispute (App. Br. 12-13), that the closest prior art is Durandeau.
Durandeau indicates that the silicon-nitride barrier layer has a thickness of
“at most 10nm.” Durandeau ^ 30. The thickness of the silicon nitride
barrier layer in each of the comparative examples (C1-C4) exceeds
Durandeau’s maximum thickness. Decl. ^ 9.
Furthermore, “objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support.” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971). See also In re Dill,
604 F.2d 1356, 1361 (CCPA 1979). “Commensurate in scope” means that
the evidence provides a reasonable basis for concluding that the untested
embodiments encompassed by the claims would behave in the same manner
as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972) (“Here, only one mixture of ingredients was
tested. . . . The claims, however, are much broader in scope, . . . and we
have to agree with the Patent Office that there is no ‘adequate basis for
reasonably concluding that the great number and variety of compositions
included by the claims would behave in the same manner as the [single]
tested composition.’”) (bracketed material in original).
Here, the tested embodiments are not commensurate in scope with the
claimed subject matter for several reasons. First, we observe that the claims
recite a thickness range of the indium tin oxide layer “extending from 50 to
200 nm,” but Appellant tests only thicknesses of 75 and 120 nm. Decl. ^ 9.
Moreover, as correctly observed by the Examiner (Ans. 4), the tested
embodiments only cover an qTqi thickness range of from 0.12-0.133.
Decl. 9. Such embodiments fail to evince the criticality over the entire
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Application 14/382,679
breadth of the recited ei thickness (50 to 200 nm) or the ratio of e2/ei
thicknesses (0.11-0.18).
SUMMARY
The Examiner’s final decision to reject claims 1-10, 15, and 17-21 is
affirmed.
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).
AFFIRMED
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