13605439 (P.T.A.B. Jul. 16, 2018)

Ex Parte Langensiepen et al

Patent Trial and Appeal BoardJul 16, 2018

13605439 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/605,439 09/06/2012 22928 7590 07/18/2018 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR Ralph Alfred Langensiepen 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. SP12-206 2951 EXAMINER HOFFMANN, JOHN M ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 07/18/2018 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 RALPH ALFRED LANGENSIEPEN, Y ANXIA ANN LU, and WEIGUO MIAO Appeal2017-009335 Application 13/605,439 Technology Center 1700 Before BEYERL Y A. FRANKLIN, JENNIFER R. GUPTA, and LILAN REN, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 26-32. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 In this Decision, we refer to the Specification filed September 6, 2012 ("Spec."), the Final Office Action dated July 28, 2016 ("Final Act."), the Advisory Action dated December 13, 2016 ("Adv. Act."), the Appeal Brief filed January 30, 2017 ("Appeal Br."), the Examiner's Answer dated April 24, 2017 ("Ans."), and the Reply Brief filed June 24, 2017 ("Reply Br."). 2 Appellants identify the real party in interest as Coming Inc. Appeal Br. 2. Appeal2017-009335 Application 131605,439 The subject matter of the claims on appeal relates to a method for manufacturing glass using downstream rolls. Spec. ,r,r 1-2. Claim 26, reproduced below from the Claims Appendix of the Appeal Brief with emphasis added to highlight key disputed limitations, is illustrative of the claims on appeal. 26. A method for manufacturing a glass ribbon, the method comprising the steps of: (I) forming a glass ribbon; and (II) engaging a first edge portion of the glass ribbon with at least one roll; wherein the roll comprises: a non-infiltrated portion comprising millboard, the millboard having a compressed density between 0.85 glee and 0.97 glee; and an outer peripheral portion comprising millboard infiltrated with ceramic particles, the outer peripheral portion having a depth between about 1 mm and about 10 mm; wherein the ceramic particles are selected from the group consisting of Si 02, Ab03, Zr02, and mixtures thereof, wherein the roll comprises between about 1 wt% and about 5 wt% of ceramic particles, wherein a shore D hardness of the non-infiltrated portion is less than 41 and a shore D hardness of the outer peripheral portion is greater than 45, and wherein the roll has a spring constant of less than about 4450 Nlmm. Appeal Br. 19 (Claims App.). 2 Appeal2017-009335 Application 13/605,439 DISCUSSION The Examiner maintains the rejection of claims 26-32 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Ans. 2-3. 3 Appellants canceled original claims 1-20, and added new independent claim 26 in an Amendment filed May 26, 2015. Appeal Br. 9. Appellants contend that new claim 26 included the features of original claim 6. Id. Original claim 6 is reproduced below. 6. The downstream roll of claim 1, wherein the infiltrated outer peripheral surface has a Shore D hardness of less than about 41. Spec. 16. As shown above, original claim 6 recites "the infiltrated outer peripheral surface has a Shore D hardness of less than about 41." New independent claim 26, however, recites "a shore D hardness of the non- infiltrated portion is less than 41 and a shore D hardness of the outer peripheral portion is greater than 45." The Examiner finds that "[ t ]here is no support for the limitation that the shore D hardness of the non-infiltrated portion is less than 41" in claim 26. Ans. 2-3 ( emphasis added). Appellants contend that one of ordinary skill in the art would recognize that original claim 6 included an obvious error-"the infiltrated outer peripheral surface has a Shore D hardness of less than about 41 "-and would also recognize the appropriate correction-"the non-infiltrated portion is less than 41 "-which is implicitly described in the Specification. 3 The rejection of claims 26-32 under 35 U.S.C. Â§ 112, second paragraph was withdrawn by the Examiner. Ans. 3; see also Adv. Act. 1. 3 Appeal2017-009335 Application 13/605,439 Appeal Br. 16. Therefore, Appellants argue that independent claim 26, which incorporates a corrected amended version of the language of claim 6, does not introduce new matter. Id. We agree with Appellants that one of ordinary skill in the art would recognize that claim 6 included an obvious error, and would also recognize the appropriate correction; however, as discussed below, we determine that the appropriate correction is slightly different than the one proposed by Appellants. Nevertheless, we conclude that there is adequate written description support for the subject matter recited in independent claim 26. "a shore D hardness of the outer peripheral portion is greater than 45" Appellants' Specification discloses that a downstream roll must "be hard enough to allow continuous operation while simultaneously soft enough to minimize the stresses resulting from cast off glass particles." Spec. ,r 4. Standard rolls, according to the Specification, are comprised of millboard containing mica, ceramic powder (fillers) and ceramic fibers, which is softly and loosely packed. Id. ,r 46. To achieve the necessary hardness and wear resistance, standard rolls are tightly compressed during the assembly process. Id. The compression serves the dual purposes of imparting hardness (standard rolls have a Shore D hardness value of about 45 or greater) and attempts to minimize ceramic powder or fiber cast off. Id. Like the standard roll, Appellants' downstream roll, according to the Specification, is comprised of millboard. Id. In addition to millboard, however, the outer peripheral surface of the millboard comprising Appellants' downstream roll is infiltrated with dilute concentrations of ceramic particles "to provide a hardened surface to counter wear conditions 4 Appeal2017-009335 Application 13/605,439 that may otherwise shorten the use of life of downstream rolls, without the need for highly compressed mill board." Id. Appellants' Specification also includes a Table, Table 1, comparing surface properties ( e.g., Shore D hardness) of a standard roll with inventive rolls (rolls whose outer peripheral portion is infiltrated with ceramic particles). For convenience, Table 1 is reproduced below from paragraph 53 of Appellants' Specification. 100531 Table I: Avtc~rage surface properties: of standard rolls:, low density rolls... and low density infilhÂ·ated rolls Spring Constant (lbfJmm) Standard density roll, densi(y = l.09 g/cc 1206 Low density roU#l 657 Roll #l Â·with Low silicone density infiltration roll #2