Ex Parte Lingle et al

Board of Patent Appeals and Interferences

Jul 20, 2011

10453790 (B.P.A.I. Jul. 20, 2011)

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.
10/453,790 06/04/2003 Philip J. Lingle 3691-562 6342
23117 7590 07/20/2011
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PIZIALI, ANDREW T
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
07/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PHILIP J. LINGLE, ANTON DIETRICH, RONALD E. LAIRD,
and JEAN-MARC LEMMER
____________________

Appeal 2010-010045
Application 10/453,790
Technology Center 1700
____________________

Before CHUNG K. PAK, CHARLES F. WARREN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 52-56 and 82-112 under 35 U.S.C. § 103(a) as
unpatentable over DePauw (US 6,090,481; issued Jul. 18, 2000) in view of
Ebisawa (US 6,340,529 B1; issued Jan. 22, 2002) and claims 107-112 under
35 U.S.C. § 112, first paragraph, as being based on a disclosure that is not
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enabling (i.e., a critical or essential feature is lacking in the claimed
invention). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention relates to heat treatable (low-E) coated articles,
such as vehicle windshields and other glass applications, wherein the heat
treatment does not cause a significant jump in sheet resistance and/or haze
(Spec. 1:6-8, 10:17 to 1:5). Claims 52, 82, 83, and 107 are illustrative:
52. A heat treated coated article comprising:
a coating provided on a glass substrate, said coating
comprising from the glass substrate outwardly:
a) at least one dielectric layer;
b) a first contact layer;
c) a first IR reflecting layer comprising Ag;
d) a second contact layer, said first IR reflecting layer
contacting each of said first and second contact layers;
e) at least one dielectric layer;
f) a third contact layer;
g) a second IR reflecting layer comprising Ag;
h) a fourth contact layer, said second IR reflecting layer
contacting each of said third and fourth contact layers;
i) at least one dielectric layer;
wherein after being heat treated (HT) and laminated in
the form of a vehicle windshield said coated article has a visible
transmittance of at least 70%, a Tsolar no greater than 50%, an
Rsolar of at least 26%, a sheet resistance (Rs) of no greater than
8.0 ohms/sq, and a glass side reflective color coordinate value
a*G (normal viewing angle) in the range of from -2.0 to +2.0;
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and wherein said glass side reflective color coordinate value
a*G does not change by more than 3.0 upon a 60° change in
viewing angle (VA) from normal.
82. A coated article including a multi-layer coating
supported by a glass substrate, the coating comprising from the
substrate outwardly at least the following layers:
a) a layer comprising zinc oxide;
b) a first layer comprising silver;
c) a layer comprising metal oxide;
d) a layer comprising tin oxide;
e) a layer comprising silicon nitride over and in contact
with the layer comprising tin oxide,
f) a layer comprising metal oxide;
g) a second layer comprising silver;
h) a layer comprising metal oxide;
i) a layer comprising zinc oxide;
j) a layer comprising silicon nitride; and
wherein the coated article has a visible transmission of at
least 70%, a Tsolar no greater than 50%, and sheet resistance (RS)
no greater than 8 ohms/square.
83. The coated article of claim 82, wherein the layer d)
comprising tin oxide is thicker than the layer e) comprising
silicon nitride.
107. The coated article of claim 82, wherein the coated
article is heat treated and following heat treatment has a haze
value of no greater than 0.40.
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Regarding the first rejection, Appellants’ Brief contains separate
headings for each of claims 52-56, 82, 83, 85, 86, 88, 91, 93, 94, 96, 97, 99,
102, and 105-112 (Br. 12-33). Appellants present substantive argument with
respect to claims 52, 82, 83, and 107, and we select these claims as
representative of the rejected claims. With respect to claims 85, 86, 93, 94,
96, 97, 105, 106, and 108-112, Appellants present arguments substantially
identical to those put forth with respect to claims 52, 82, 83, and 107.
Regarding claims 53-56, 88, 91, 99, and 102, Appellants present only
general assertions of non-obviousness that fail to address the Examiner’s
finding of fact and/or the Examiner’s rationale for determining obviousness.
Accordingly, we need not address each separately argued claim individually.
Regarding the second rejection, Appellants present arguments for
claims 107-112 as a group (Br. 34), for which we select claim 107 as a
representative claim.
II. DISCUSSION
We adopt the Examiner’s findings in the Answer as our own and add
any additional findings of fact appearing below for emphasis.
A. CLAIM 52
1. ISSUE ON APPEAL
A first issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a coated glass substrate having a*G values
in a normal viewing angle and at a viewing angle of 60º from normal as
recited in claim 52 would have been obvious to one of ordinary skill in the
art based on the teachings of DePauw and Ebisawa? We answer this
question in the negative.
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2. ANALYSIS
Appellants contend that the prior art does not teach the recited a*G
values at normal and 60º to normal viewing angles, but rather teaches away
from a “neutral color,” as Appellants characterize the claimed value of -2.0
to +2.0 (Br. 13-16).
The Examiner finds that DePauw discloses that a tint may be varied
by the thickness of various layers (Ans. 7; see also Final Office Action dated
May 20, 2004, at 6). The Examiner concludes that the tint color is a result
effective variable and that “it would have been obvious to one of ordinary
skill in the art at the time the invention was made to vary the layer thickness
such that the window possesses the claimed color (a*G in the range of
from -2.0 to +2.0), because some applications desire windows possessing
little or no color” (Ans. 7).
We agree with the Examiner that DePauw teaches varying the tint
color by changing the ratio of thickness between subsequent non-absorbing
(i.e., dielectric) layers (see DePauw, col. 4, ll. 3-11, col. 7, l. 55 to col. 2, l.
55). Appellants do not dispute the Examiner’s finding (see generally Br.).
We also note the teachings of Ebisawa as further evidence that it was well
known in the art to adjust glass coating tint by varying the thickness of the
layers and, moreover, that a neutral or slightly green tint is particularly
desirable (see Ebisawa, col. 8, ll. 54-61).
An improvement in the art is obvious if “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR Int’l v. Teleflex
Inc., 550 U.S. 398, 402-403 (2007). Optimization of a variable which is
recognized in the prior art to be a result effective variable would ordinarily
be within the skill in the art. In re Boesch, 617 F.2d 272, 276 (CCPA 1980).
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DePauw and Ebisawa evince that color tint is a result effective variable that
one of ordinary skill in the art would have had the skill to adjust with only
routine experimentation. Thus, from the guidance provided in DePauw and
Ebisawa, one of ordinary skill in the art would have expected to have
achieved any desirable tint color, including a neutral color, merely by
adjusting the thickness of the various dielectric layers.
Moreover, in an obviousness analysis, it is proper to “take account of
the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR, 550 U.S. at 418. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421. Mere color
selection would be prima facie obvious for a person of ordinary creativity.
It is true that a routine variable change sometimes causes an
unexpected effect. In such a situation, the claimed subject matter will be
unobvious under the law if Appellants present a showing of criticality of the
range for unexpected beneficial results. See Boesch, 617 F.2d at 276; see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220
F.2d 454, 456 (CCPA 1955). Appellants present no convincing evidence of
unexpected results as to the particularly claimed color tint on this record.
Appellants assert that the Examples of DePauw, teaching a broad
range of tint colors, and the Examples of Ebisawa, teaching a* values of -5
and -6, teach away from the claimed “neutral” a*G value range of -2.0 to
+2.0 (Br. 14 and 16). We are not persuaded that a disclosure of particular
tint colors in the prior art would render the claimed range unobvious.
Disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure or non-preferred embodiments. In re Susi,
440 F.2d 442, 446 n.3 (CCPA 1971).
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The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
B. CLAIM 82
1. ISSUE ON APPEAL
A second issue on appeal arising from the contentions of Appellants
and the Examiner is: does the evidence support the Appellants’ view that
the Examiner erred in concluding that a coating for a glass substrate having
the following layers in order from the substrate: . . . silver (Ag) . . . tin
oxide/silicon nitride . . . metal oxide . . . silver (Ag) . . . , as recited in claim
82, would have been obvious to one of ordinary skill in the art based on the
teachings of DePauw and Ebisawa? We answer this question in the
negative.
2. ANALYSIS
Appellants contend that the references fail to disclose the presence of
silicon nitride positioned in this location and that any prima facie case of
obviousness established by the Examiner is overcome by the unexpected
results of a reduction in haze and an increase in thermal stability during a
heat treatment (Br. 21-23).
The Examiner agrees with Appellants that neither DePauw nor
Ebisawa include an example in which silicon nitride is provided in the
claimed location. However, without reiterating the Examiner’s entire
rationale for concluding obviousness, we agree with the Examiner that,
based on the Examiner’s findings regarding the teachings of DePauw and
Ebisawa, a coating having substantially identical layers on a glass substrate
would have been prima facie obvious to one of ordinary skill in the art
having the teachings of DePauw and Ebisawa for the reasons of record (Ans.
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3-5 and 11-12). Appellants do not dispute the Examiner’s findings or
present any arguments for considering the Examiner’s rationale as being
untenable (see generally Br. 21-23).1
Appellants can rebut a prima facie case of obviousness by showing
“unexpected results,” i.e., showing that the claimed invention possesses a
superior property or advantage that a person of ordinary skill in the art
would have found surprising or unexpected. See In re Geisler, 116 F.3d
1465, 1469 (Fed. Cir. 1997). However, an examination for unexpected
results is a factual inquiry which must be supported by sufficient evidence.
In re De Blauwe, 736 F.2d 699, 705 (Fed.Cir.1984) (“[i]t is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”).
Neither Appellants’ Brief nor Appellants’ Reply Brief direct us to any
factual evidence of unexpected results (see Br. 21-23; Reply Br. 5).
Although Appellants’ Reply Brief cites “pages 12-13 of Applicant’s
specification” (Reply Br. 5), such pages of Appellants’ Specification contain
no factual evidence that the location of silicon nitride as claimed causes
superior benefits that are surprising or unexpected. Rather, Appellants’
Specification contradicts Appellants’ position that the claimed location of

1 Not until the Reply Brief do Appellants argue that DePauw’s teaching of
titanium “sacrificial layers ‘to protect the silver or silver ally”’ addresses the
ion and oxygen diffusion problem, casting doubts on the Examiner’s
rationale for the introduction of Ebisawa (Reply Br. 5-6). The arguments
presented in the Reply Brief, which for the first time presents specific
arguments directly addressing the Examiner’s reasoning, were not timely
presented and, therefore, are not properly before us. See Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“the reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
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silicon nitride is critical in haze reduction in stating that “[o]ther materials
may also be used for haze reducing layer 5” (Spec. 12:11-12).
Moreover, Appellants must provide evidence of unexpected results
commensurate in scope with the claimed subject matter. See, e.g., In re
Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005) (“Even assuming that the
results were unexpected, Harris needed to show results covering the scope of
the claimed range. Alternatively Harris needed to narrow the claims.”); In
re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or
a small number of) species gives unexpected results is inadequate proof, for
‘it is the view of this court that objective evidence of non-obviousness must
be commensurate in scope with the claims which the evidence is offered to
support.’”) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Appellants’ Specification only evinces the allegedly improved haze
reduction using layers of silicon-rich silicon nitride (see Spec. 12:13-17 and
Examples 1-3, Spec. 27:11-13). Since claim 82 is not limited to silicon-rich
silicon nitride, but only recites “silicon nitride,” the data provided in
Appellants’ Specification is not commensurate in scope with claim 82.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
C. CLAIM 83
1. ISSUE ON APPEAL
A third issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a coating for a glass substrate with an
oxide layer thicker than the adjacent silicon nitride layer would have been
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obvious to one of ordinary skill in the art based on the teachings of DePauw
and Ebisawa? We answer this question in the negative.
2. ANALYSIS
The Examiner contends that the thickness of the layers is a result
effective variable affecting transmittance, emissivity and color, and, as such,
it would have been obvious to one of ordinary skill in the art to vary the
thickness of the layers because discovering the optimum value of a result
effective variable involves only routine skill in the art (Ans. 5).
We are not persuaded by Appellants’ conclusory contention that the
claimed layer thickness relation is not a routine matter (Br. 23).
We agree with the Examiner that DePauw provides sufficient
evidence that one of ordinary skill in the art would have routinely adjusted
the thickness of the various dielectric layers to achieve a desired
transmittance, emissivity and color (see DePauw, col. 7, l. 55 to col. 8, l. 9).
Appellants do not dispute the Examiner’s findings or present any arguments
for considering the Examiner’s rationale as being untenable.
The weight of the evidence taken as a whole supports the Examiner’s
conclusion of obviousness under the law.
D. CLAIM 107 – § 112, first paragraph rejection
1. ISSUE ON APPEAL
A fourth issue on appeal arising from the contentions of Appellants
and the Examiner is: does the evidence support the Appellants’ view that
the Examiner erred in concluding that claim 107, which recites a haze value
of no greater than 0.40, is not enabled by the Specification? We answer this
question in the affirmative.
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2. ANALYSIS
The Examiner contends that Appellants’ Specification teaches the
presence of a silicon-rich silicon nitride layer is essential or critical to
achieving the haze values recited in claim 107. Thus, according to the
Examiner, claim 107 is not enabled because it is not limited to a silicon-rich
silicon nitride. (Ans. 3 and 17.) We are not persuaded that the Examiner
has met the burden of proof in calling into question the enablement of
Appellants’ Specification.
[A] specification disclosure which contains a teaching of the
manner and process of making and using the invention in terms
which correspond in scope to those used in describing and
defining the subject matter sought to be patented must be taken
as in compliance with the enabling requirement of the first
paragraph of § 112 unless there is reason to doubt the objective
truth of the statements contained therein which must be relied
on for enabling support.
In re Armbruster, 512 F.2d 676, 677 (CCPA 1975) (quoting In re
Marzocchi, 439 F.2d 220 (CCPA 1971)).
The Examples in Appellants’ Specification contain express instruction
as to how one of ordinary skill in the art would have arrived at the haze
value reciting in claim 107, specifically by using silicon-rich silicon nitride
as the silicon nitride layer recited in claim 82 (see Spec. 26:1 to 34:18 and
35:1). The Examiner has put forth no reason to doubt the objective truth of
the Appellants’ Examples.
Accordingly, the Examiner has not shown that claim 107 is not
sufficiently enabled by Appellants’ Specification.
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E. CLAIM 107 – Obviousness rejection
1. ISSUE ON APPEAL
A fifth issue on appeal arising from the contentions of Appellants and
the Examiner is: does the evidence support the Appellants’ view that the
Examiner erred in concluding that a coated glass substrate having a haze
value of no greater than 0.40, as recited in claim 107, would have been
obvious to one of ordinary skill in the art based on the teachings of DePauw
and Ebisawa? We answer this question in the affirmative.
2. ANALYSIS
The Examiner contends that the combined teachings DePauw and
Ebisawa suggest to one of ordinary skill in the art a glass coating having the
identical layer sequence and identical layer material as the claimed
invention, and, thus, the claimed haze value would have been an inherent
property of the coating suggested by the prior art (Ans. 4 and 15).
Appellants contend that the cited art fails to disclose or suggest a
coating having the claimed haze value required by the claim because the
haze value is not an inherent feature (Br. 26). We agree with Appellants that
the Examiner has failed to show that the combined teachings of DePauw and
Ebisawa necessarily teach a coating having the recited haze value.
When the Examiner relies upon a theory of inherency, “the
[E]xaminer must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (emphasis omitted).
As discussed above, Appellants’ Specification indicates that haze
values of less than 0.45 can be obtained only in glass coatings using a
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silicon-rich silicon nitride layer (see Spec. 12:13-17 and Examples 1-3; see
also Reply Br. 6 (interpreting Spec. 12:13-17 as requiring silicon-rich silicon
nitride to achieve a haze value of no greater than 0.40)).
Yet, the Examiner has not demonstrated that DePauw and/or Ebisawa
teach a silicon-rich silicon nitride. DePauw, for example, provides a
teaching of only Si3N4, which is not a silicon-rich silicon nitride (DePauw,
col. 5, ll. 23-25). Nor has the Examiner explained why one of ordinary skill
in the art would have been led to employ a silicon-rich silicon nitride from
the collective teachings of DePauw and Ebisawa.
Accordingly, on this record, the Examiner has failed to show factual
and/or technical reasoning to reasonably support the determination that the
claimed haze value necessarily flows from the teachings of the applied prior
art.
III. CONCLUSION
On the record before us and for the reasons discussed above, we
sustain the rejection of claims 52-56 and 82-106 under 35 U.S.C. § 103(a) as
unpatentable over DePauw in view of Ebisawa. We do not sustain the
rejection of claims 107-112 either under 35 U.S.C. § 103(a) as unpatentable
over DePauw in view of Ebisawa or under 35 U.S.C. § 112, first paragraph,
as being based on a disclosure that is not enabling.
IV. DECISION
We affirm-in-part the Examiner’s decision.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED-IN-PART

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