Ex Parte Lingle

Board of Patent Appeals and Interferences

Mar 23, 2007

10150014 (B.P.A.I. Mar. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILIP J. LINGLE
____________

Appeal 2007-0408
Application 10/150,014
Technology Center 1700
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Decided: March 23, 2007
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Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals from the Examiner’s decision rejecting claims
11, 13, 14, 16, 18-20, 22-25, 27, and 29-31. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse. However, we also enter a new ground of rejection.
Appeal 2007-0408
Application 10/150,014

I. BACKGROUND
The invention relates to coated glass used in windshields and
windows. According to the Summary of the Invention, the coating includes
at least ten layers (a) through (j) comprised of specific compounds
(Specification 8:15-9:12). Further according to the Summary of the
Invention, layer (e) can be separated into two layers (e1) and (e2) and another
layer (m) imposed between them (Specification 10:3-8; fig. 1A). Other
layers may be added to the ten or twelve layer systems (Specification 28:10-
15). While the Summary of Invention identifies specific compounds for the
layers, the claims more generically identify some of the layers of the system.
Claim 11, to which the layer lettering of Summary of the Invention has been
added, is illustrative of the subject matter on appeal. In parentheses are the
specific compounds recited in the Summary of the Invention.
11. A coated article including a coating supported by a glass
substrate, the coating comprising from the glass substrate outwardly:

a) a first dielectric layer (tin oxide)

b) a layer comprising a metal oxide (titanium oxide or nickel
oxide)

c) a first layer comprising Ag

d) a first layer comprising an oxide of NiCr

e1) another layer comprising a metal oxide (tin oxide)

m) a layer comprising silicon nitride

e2) a layer comprising tin oxide

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f) another layer comprising a metal oxide (titanium oxide or
nickel oxide)

g) a second layer comprising Ag

h) a second layer comprising an oxide of NiCr

i) a layer comprising a metal oxide (tin oxide)

j) a third dielectric layer comprising silicon nitride.

The Examiner presents two rejections under the enablement
requirement of 35 U.S.C. § 112, ¶1:
1. Claims 11, 13, 14, 16, 18-20, 22-25, 27, and 29-31 are rejected
because the Specification does not reasonably provide enablement for
a coated article comprising any conceivable dielectric layer or metal
oxide layer. Instead, the scope of enablement is limited to the use of
the specific compounds recited in the Specification for the layers.
2. Claims 18-20 are rejected because a specific sequence of ten layers or
twelve layers is critical or essential to the practice of the invention,
but certain layers (m) and (f) are missing from the claims.

II. DISCUSSION
A. Issues
The Examiner contends that layers (a) through (j) must be present in
all embodiments of the invention. These layers, according to the Examiner,
are critical or essential to the practice of the invention (Answer 5).
Appellant contends that the Examiner is attempting to limit the claims
to the best mode of the invention and that the Specification provides a clear
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example of how to make and use an example embodiment of the invention
(Br. 12-14).1 Appellant contends that, contrary to the findings of the
Examiner, there is nothing in the Specification which states that any material
is “critical.” (Reply Br. 1-3). Appellant further contends that the Examiner
has confused enablement with written description (Br. 14). Appellant then
contends there is written descriptive support for the claimed subject matter
because the layer system (a) through (j) is merely a preferred embodiment
and the claims do not have to be limited to the preferred embodiment (Br.
14-16). While the Examiner has not directly rejected the claims for lack of
written descriptive support, the Examiner states that Appellant appears to be
correct in recognizing that the claims also lack written descriptive support
(Answer 11).
There are two issues arising out of the dispute: Has the Examiner
advanced acceptable reasoning to establish a prima facie case of lack of
enablement? And: Do the claims satisfy the written description requirement
of the statute?
B. Facts
The claims are directed to highly durable, low-E (low-emissivity),
heat treatable layer coating systems on glass (Specification 1:3-8). The
Specification indicates that layer coating systems are well known in the
architectural and automotive field (Specification 1:10-12). These coating
systems are designed to reflect infrared energy while allowing visible light
to pass through the glass (Specification 1:12-16). The system must also be
heat treatable so that it will not deteriorate when heated for bending,
tempering, or heat strengthening (Specification 2: 3-8). Moreover, the

1 References to the Brief are to the Supplemental Brief filed April 14, 2006.
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coating system must have sufficient mechanical durability to resist
scratching and abrasion during manufacturing (Specification 2:9-3:3).
Chemical durability is also desirable where chemicals are to come into
contact with the coating system (Specification 3:11-14).
The Specification describes several coating systems containing
various dielectric and metal oxide layers which are deficient in one or more
of the desired properties (Specification 6:7-8:3). The Specification states
that in view of the prior art there exists a need in the art for a coating system
which is highly durable, and preferably is also heat treatable, has
significantly low-E qualities, and, in certain embodiments, manifests high
visible transmittances sufficient for automotive windshields (Specification
8:4-11).
The above discussion of needs is directly followed by the Summary of
the Invention which opens with the statement that generally speaking the
invention fulfills the above described needs by providing a glass article with
layers comprising (a) tin oxide, (b) titanium or nickel oxide, (c) silver, (d)
nickel oxide, (e) tin oxide, (f) titanium oxide, (g) silver, (h) nickel oxide, (i)
tin oxide, and (j) silicon nitride (Specification 8:15-9:12). This is the
broadest description of the invention in the specification. There is a further
disclosure of dividing layer (e) and adding another layer of silicon nitride
(Specification 10:3-8). This twelve layer arrangement including (e1), (m),
and (e2) is shown in Fig. 1A. While other layers can be added (Specification
28:10-15), there is no disclosure of subtracting any of the layers (a) through
(j), nor is there any disclosure of substituting other dielectric or metal oxides
for the compounds specifically listed in (a) through (j) as set forth in the
Summary of the Invention.
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The Specification does not use the terminology “metal oxide” or
“dielectric layer” nor does it disclose what characteristics make the
described layer compounds useful in the invention. Furthermore, there is no
description of the functions of the various layers.
The originally filed claims were limited to the layers (a) through (j) as
described in the Summary of the Invention. The present application is a
continuation of Application 09/795,976 which issued as U.S. Patent No.
6,445,503. Claim 1 of the patent is limited to a coating with layers (a)
through (j) as set forth in the Summary of the Invention.
C. Principles of Law
The enablement and written description requirements are separate and
distinct requirements of the statute and a “specification may contain a
disclosure that is sufficient to enable one skilled in the art to make and use
the invention and yet fail to comply with the description of the invention
requirement.” In re Barker, 559 F.2d 588, 591, 194 USPQ 470, 472 (CCPA
1977).
The enablement requirement is often more indulgent than the written
description requirement. The specification need not explicitly teach those in
the art to make and use the invention; the requirement is satisfied if, given
what they already know, the specification teaches those in the art enough
that they can make and use the invention without “undue experimentation.”
Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1334,
65 USPQ2d 1385, 1400 (Fed. Cir. 2003). Whereas, “the purpose of the
‘written description’ requirement is broader than to merely explain how to
‘make and use’; the applicant must also convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
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possession of the invention. The invention is, for the purposes of the
‘written description’ inquiry, whatever is now claimed.” Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991).
To support a rejection under the written description requirement, the
examiner may meet the initial burden by pointing to the fact that the claim
reads on embodiments outside the scope of the description. In re Werthiem,
541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976). However, the
burden is somewhat higher for a rejection based on lack of enablement.
With regard to enablement, the burden is on the examiner to “advance
acceptable reasoning inconsistent with enablement.” In re Strahilevitz,
688 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982). In meeting this
burden, the examiner must take into account the knowledge of those of
ordinary skill in the art and the unpredictable nature of the art. In re Bowen,
492 F.2d 859, 862, 181 USPQ 48, 50 (CCPA 1974). The question is
whether, once imagined, other embodiments could be made without
difficultly and their performance characteristics predicted by resort to known
scientific laws or whether unpredictability is such that it would be difficult
for the ordinary artisan to extend the teaching to other embodiments. Id.
Only if the examiner advances acceptable reasoning inconsistent with
enablement, does the burden shift to appellant “to show that one of ordinary
skill in the art could have practiced the claimed invention without undue
experimentation.” Strahilevitz, 688 F.2d at 1232, 212 USPQ at 563.
D. Analysis
Focusing on the written description requirement first, we find that a
preponderance of the evidence supports a finding of lack of written
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descriptive support under 35 U.S.C. § 112, ¶ 1. As found by the Examiner,
the scope of the claims is broader than the discussion of the invention in the
original written description. The broadest description of the invention
resides in the beginning of the Summary of the Invention and the original
claim 1 which set forth the inclusion of layers (a) tin oxide (b) titanium or
nickel oxide, (c) silver, (d) nickel oxide, (e) tin oxide, (f) titanium or nickel
oxide, (g) silver, (h) nickel oxide, (i) tin oxide, and (j) silicon nitride. While,
according to the Specification, other layers can be added, there is no other
disclosure of any substitutions for layers (a) through (j).
Appellant attempts to cast the description of the (a) through (j) coating
system as the best mode of carrying out the invention or an example
embodiment. The problem is that the “mode” described in the Specification
in the Summary of the Invention is the broadest description of the coating
composition. The further discussion of that coating system with reference to
Figure 1 as “one form of the layer systems” (Specification 25) and another
more narrow embodiment with more layers (Figure 1A, Specification 26) in
the Detailed Description of the Invention does not change that fact.
While a description of the invention which is narrower than the
subject matter encompassed by the claims will not always result in a failure
to fulfill the written description requirement of 35 U.S.C. § 112, first
paragraph, see In re Smythe, 480 F.2d 1376, 1382, 178 USPQ 279, 284
(CCPA 1973), “the case law does ‘not compel the conclusion that a
description of a species always constitutes a description of a genus of which
it is a part’” either. Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473,
1479, 45 USPQ2d 1498, 1503 (Fed. Cir. 1998)(quoting Regents of the Univ.
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405
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(Fed. Cir. 1997)). “It is a truism that a claim need not be limited to a
preferred embodiment. However, in a given case, the scope of the right to
exclude may be limited by a narrow disclosure.” Id. Each case turns on its
own facts. In re Smythe, 480 F.2d at 1382, 178 USPQ at 284.
In the current case, not only does the Specification limit the discussion
to the species (a) through (j), there is no discussion of using other “dielectric
layers” or “metal oxides” for any of the layers. Nor is there any discussion
of particular properties or functions with respect to any of the layers which
would serve to convey to the skilled artisan that Appellant was in possession
of something more than the specific layer system (a) through (j) recited in
the Summary of the Invention. Moreover, there is no discussion of just what
layers are critical or essential to obtain the disclosed desired properties of
high durability, low-E, and heat treatability. Appellant has not conveyed to
one of ordinary skill in the art that the composition of any particular layer is
less critical than the others or that he was in possession of something more
than what is described in the Summary of the Invention.
A preponderance of the evidence supports a finding of lack of written
description sufficient to shift the burden to Appellants to show that, in fact,
the original written description would convey to one of ordinary skill in the
art that Appellants were in possession of the claimed invention as now
broadly claimed.
We, therefore, enter a new ground of rejection pursuant to our
authority under 27 C.F.R. § 41.50(b) on the basis of lack of written
descriptive support under 35 U.S.C. § 112, ¶ 1 against all the pending
claims, i.e., claims 11, 13, 14, 16, 18-20, 22-25, 27, 29-31.
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With respect to the enablement rejections made by the Examiner,
more is required in terms of evidence to support the rejection. As we find
above, the Examiner has established that the scope of the claims is broader
than the description of the invention in the original Specification. The
Examiner contends that “[w]ithout guidance from the prior art or appellant’s
own disclosure, due to the vast number possible material combinations, there
is insufficient information provided to one of ordinary skill in the art to
practice the invention commensurate with the entire scope of the instant
claims.” (emphasis added) (Answer 8). But this statement overlooks the fact
the Examiner must take into account guidance within the prior art when
considering enablement. The inventor need not include in the specification
that which is already known and available to one of ordinary skill in the art.
See In re Howarth, 654 F.2d 103, 105, 210 USPQ 689, 691-92 (CCPA 1981)
(“An inventor need not, however, explain every detail since he is speaking to
those skilled in the art.”). There is a lack of evidence with regard to the
foundation of knowledge of one of ordinary skill in the art of glass coating
on this record. The Examiner has not provided evidence that one skilled in
the art could not select the appropriate metal oxide and dielectric compounds
for use in the coating of the claims.
The Examiner further finds that the Specification teaches that the ten
layers (a) through (j) are critical for obtaining the durability, heat treatability,
and low emissivity desired (Answer 8-9). The Examiner, however, does not
provide any reasoning or evidence in support of this statement. As pointed
out by Appellant, the Specification does not state that any particular layer or
combination of layers is critical. In the face of silence it was incumbent on
the Examiner to provide reasoning or evidence in support of criticality. We
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note that the facts of this case differ from those of In re Mayhew, 527 F.2d
1229, 188 USPQ 356 (CCPA 1976), the case cited by the Examiner. In
Mayhew, the criticality of the cooling bath at the exit side of the bath was
evident from the nature of the process disclosed. Without the cooling zone
at the exit side, high temperatures in the bath would have caused alloying to
continue outside the bath resulting in an inferior alloy. The Examiner here
provides no convincing reasoning supporting a belief that the skilled artisan
could not obtain durable, heat treatable, low-E coated glass with dielectric
layers or metal oxide layers other than those identified in the Specification.
More evidence is required.
The Examiner rejected claims 18-20 for additional reasons.
According to the Examiner the coating of claim 18 is missing layers (m) and
(f). The Examiner has mistakenly compared claim 18 to the twelve layer
embodiment of Figure 1A. When the claim is read in light of the Summary
of the Invention layer system, it becomes clear that claim 18 is not missing
layer (f). Layer (m) is not included, but that layer is not required by the
broad layer system of the Summary of the Invention. We reproduce claim
18 below with the letter designations from the Summary of the Invention for
illustration.
18. A heat treated coated article including a coating supported by a
glass substrate, the coating comprising from the glass substrate outwardly:

(a), (b) a first dielectric layer and a second dielectric layer, one of the
first and second dielectric layers comprising an oxide of titanium;

(c) a first layer comprising Ag;

(d) a first layer comprising an oxide of NiCr provided over and
contacting the layer comprising Ag;
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(e) a third dielectric layer comprising tin oxide, wherein no
metallic layer or metallic layer portion is provided between the first layer
comprising the oxide of NiCr and the third dielectric layer comprising tin
oxide;

(f) a layer comprising a metal oxide;

(g) a second layer comprising Ag provided over and contacting the
layer comprising the metal oxide;

(h) a second layer comprising an oxide of NiCr provided over and
contacting the second layer comprising Ag;

(i) a fourth dielectric layer comprising tin oxide provided over and
contacting the second layer comprising an oxide of NiCr;

(j) a fifth dielectric layer comprising silicon nitride provided over
and contacting the fourth dielectric layer comprising tin oxide; and

wherein the coated article has a visible transmission of greater than
70%.

Therefore, the Examiner’s additional rejection of claims 18-20 for
lack of enablement is based on a faulty claim interpretation and cannot be
sustained for that reason.
E. Conclusion
We conclude that, on the present record, the Examiner has failed to
adequately support the case for lack of enablement under 35 U.S.C. § 112,
¶ 1. However, the facts support a finding of lack of written descriptive
support under 35 U.S.C. § 112, ¶ 1 sufficient to support a rejection on that
basis. Therefore, we enter a new rejection under the written description
requirement of 35 U.S.C. § 112, ¶ 1 pursuant to our authority under
37 C.F.R. § 41.50(b).
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III. DECISION AND ORDER
In summary, we reverse the decision of the Examiner with regard to the
rejections under the enablement requirement, but order the entry of a new
rejection of claims 11, 13, 14, 16, 18-20, 22-25, 27, and 29-31 for lack of
written descriptive support under 35 U.S.C. § 112, ¶ 1.

IV. PROCEDURAL MATTERS
This decision contains a new ground of rejection pursuant to
37 C.F.R.§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED
NEW GROUND OF REJECTION

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