Ex Parte Maschmeyer et al

Patent Trial and Appeal Board

Dec 2, 2016

14814181 (P.T.A.B. Dec. 2, 2016)

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.
14/814,181 07/30/2015 Richard Orr Maschmeyer SP15-237TZ 1575
22928 7590 12/06/2016
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
12/06/2016 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD ORR MASCHMEYER,
JOHN CHRISTOPHER THOMAS, and KEVIN LEE WASSON1
Appeal 2017-000536
Application 14/814,181
Technology Center 1700
Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—9, 22, and 25—32.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Coming
Incorporated. App. Br. 1.
2 Claims 10—21 were canceled in an amendment following the Final Action.
See Claims dated May 3, 2016. The Examiner entered the amendment. See
Amendment initialed by Examiner dated May 18, 2016.
Appeal 2017-000536
Application 14/814,181
BACKGROUND
The subject matter on appeal relates to “glass or glass-ceramic that
has a stress profile for strengthening exterior portions thereof.” E.g.,
Spec. 12; Claim 1. Claim 1 is reproduced below from pages 12—13 (Claims
Appendix) of the Appeal Brief (emphasis added to identify the limitation
focused on by the Appellants in this appeal):
1. A strengthened glass or glass-ceramic article, comprising:
a first surface, a second surface, and a body extending
therebetween, wherein the second surface is on an opposite side
of the body from the first surface such that a thickness of the
strengthened glass or glass-ceramic article is defined as a
distance between the first and second surfaces, a width of the
strengthened glass or glass-ceramic article is defined as a first
dimension of one of the first or second surfaces orthogonal to the
thickness, and a length of the strengthened glass or glass-ceramic
article is defined as a second dimension of one of the first or
second surfaces orthogonal to both the thickness and the width;
wherein the length of the strengthened glass or glass-ceramic
article is greater than or equal to the width;
wherein at least one of the first or second surfaces has a
relatively large surface area, that being at least 5000 mm2;
wherein the strengthened glass or glass-ceramic article is thin
such that the width is greater than five times the thickness;
wherein at least one of the first and second surfaces is flat
such that a 1 cm lengthwise profile therealong, measured in
the thickness direction, stays within 2 pm of a straight line
and a 1 cm widthwise profile therealong stays within 2 pm of
a straight line; and
a stress profile of the strengthened glass or glass-ceramic article,
wherein, at room temperature of 25° C and standard atmospheric
pressure, an interior portion of the strengthened glass or glass-
ceramic article is under positive tensile stress and portions of the
strengthened glass or glass-ceramic article exterior to and
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Application 14/814,181
adjoining the interior portion are under negative tensile stress,
whereby the negative tensile stress at least in part fortifies the
strengthened glass or glass-ceramic article by limiting initiation
and/or propagation of cracks therethrough;
wherein a difference in peak values of the positive and
negative tensile stresses is at least 200 MPa; and
wherein, despite the relatively large surface area and thin
thickness of the strengthened glass or glass-ceramic article,
tensile stress in the stress profile sharply transitions between
the positive tensile stress of the interior portion and the
negative tensile stress of the portions exterior to and adjoining
the interior portion such that a rate of change of the tensile
stress is at least 200 MPa divided by a distance of 500 pm;
and
composition of the strengthened glass or glass-ceramic article,
wherein the composition comprises (a) an amorphous, non­
crystalline solid or (b) a polycrystalline solid comprising an
amorphous phase and one or more crystalline phases; and
wherein the composition comprises silicon dioxide;
wherein the composition of the strengthened glass or glass-
ceramic article located in at least a part of the portions of the
strengthened glass or glass-ceramic article exterior to and
adjoining the interior portion, under the negative tensile
stress, is the same in terms of ion content and chemical
constituency as the composition located in at least a part of
the interior portion, under the positive tensile stress, such that
at least some of the negative tensile stress of the stress profile
is independent of a change in the composition of the
strengthened glass or glass-ceramic article.
ANALYSIS
Claims 1—9, 22, and 25—32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Isono et al. (US 2014/0050912 Al, published Feb. 20,
2014, claiming priority to an application filed June 30, 2011) in view of
Rieser et al. (US 3,558,415, issued Jan. 26, 1971), with evidence from Beall
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Application 14/814,181
et al. (US 3,931,438, issued Jan. 6, 1976), further in view of Kitayama et al.
(US 5,654,057, issued Aug. 5, 1997). Final Act. 6. The Appellants present
arguments concerning a limitation appearing in claim 1. We select claim 1
as representative of the rejected claims, and we limit our discussion to
claim 1. The remaining claims on appeal will stand or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejection. Accordingly, we affirm the rejection for reasons set forth below,
in the Final Action, in the Advisory Action, and in the Examiner’s Answer.
See generally Final Act. 6—11; Advisory Act. 2; Ans. 2—3.
The Examiner finds, and the Appellants do not dispute, that the
combination of Isono, Rieser, and Beall teaches or suggests a strengthened
glass or glass-ceramic article comprising each element of claim 1, except
that those references do not expressly disclose the claimed surface flatness
of 2 pm over 1 cm. Final Act. 6—8. The Examiner finds that Kitayama
teaches a method of manufacturing a disk-shaped glass substrate possessing
the claimed flatness. Id. at 8. The Examiner concludes that it would have
been obvious to modify Isono’s disk-shaped substrate “to include the high
flatness of Kitayama . . . because non-flat surfaces used in magnetic disk
applications interfere^ with the function of the disk in read/write
applications.” Id.
The Appellants argue that use of Kitayama’s flattening method in
combination with Isono would render the glass of Isono unsuitable for its
intended purpose because it would “remove the thermal temper formed by
the ‘press forming’ process of Isono et al.” App. Br. 8. The Appellants’
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Application 14/814,181
argument appears to presume that, if Kitayama’s flattening method were
combined with Isono’s tempering method, tempering must occur first,
followed by Kitayama’s flattening process. See id. at 8—10.
We are not persuaded by the Appellants’ arguments for reasons
consistent with those stated by the Examiner. See Ans. 2—3. As the
Examiner explains, see id., the Appellants provide no persuasive evidence to
establish that Kitayama’s flattening method would render Isono’s glass
unsuitable for its intended purpose. They do not, for example, persuasively
explain why glass with no or reduced thermal tempering could not be used in
magnetic disk applications such as those of Isono. Kitayama’s disks are also
used in magnetic disk applications, indicating that disks subject to
Kitayama’s process are suitable for use in magnetic disk applications. See,
e.g., Kitayama at Abstract.
Nor do the Appellants identity a temperature range at which the
thermal tempering of Isono’s glass would be removed or explain whether
that temperature range would be achieved by Kitayama’s flattening method.
The Appellants identify temperatures at which Kitayama’s process operates
(i.e., “higher than the transition temperature of glass”) and assert, without
persuasive explanation, that such temperatures would remove Isono’s
thermal tempering. See App. Br. 8. However, the Appellants subsequently
concede that the use of Kitayama’s process with Isono’s glass may not
remove Isono’s thermal tempering. See id. at 9 (“[T]he flattening process of
Kitayama et al. would reduce or eliminate the thermal tempering of Isono et
al. . . .” (emphasis added)).
On this record, the actual effect of Kitayama’s flattening process on
Isono’s glass appears to be speculative, and the Appellants’ position is based
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principally on attorney argument. “Attorney’s argument in a brief,”
however, “cannot take the place of evidence.” See In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Similarly, the Appellants provide no persuasive
technical reasoning or evidence to support their assertion that Kitayama’s
disclosure of chemical tempering somehow suggests that its flattening
process is incompatible with thermal tempering. See App. Br. 8; see also
Ans. 2 (“The fact that Kitayama uses chemical strengthening is not sufficient
evidence to show that the stresses imparted by thermal tempering would
necessarily be removed by the flattening step of Kitayama.”); cf. In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere
disclosure of more than one alternative does not constitute a teaching away
from any of the[] [disclosed] alternatives . . . .”). Accordingly, we are not
persuaded of reversible error in the Examiner’s rejection.
Even if the Appellants had established that Kitayama’s method could
reduce or remove the thermal tempering of Isono’s glass, we would not be
persuaded of reversible error. The Appellants explain that Isono teaches that
rapid cooling of outer glass layers results in thermal tempering. See App.
Br. 8. There is no persuasive basis in the record to conclude that it would
have been beyond the ordinary level of skill in the art to combine
Kitayama’s flattening process with the teachings of Isono in a way that
would have been expected to maintain thermal tempering, if desired. For
example, it appears that Kitayama’s flattening method could precede Isono’s
cooling/tempering process, or that Kitayama’s cooling step could itself be
operated to produce glass that is thermally tempered. See, e.g., Kitayama at
8:24—25.
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Moreover, even assuming that the combination of Isono and Kitayama
necessarily and inevitably would reduce the thermal tempering of Isono’s
glass, the Appellants do not explain why that would have discouraged a
person of ordinary skill, motivated to achieve glass with a high level of
flatness, from combining the references. “The fact that the motivating
benefit [i.e., flatness] comes at the expense of another benefit [i.e., thermal
tempering] . . . should not nullity its use as a basis to modify the disclosure
of one reference with the teachings of another. Instead, the benefits, both
lost and gained, should be weighed against one another.” Winner Int 7
Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). Isono and
Kitayama both concern disk-shaped glass substrates for use, for example, in
computer hard drives. See Isono ]fl[ 1—2; Kitayama at 1:20—30. Both
references teach that substrates having a flat surface are desirable. E.g.,
Isono ]f3 (discussing read errors and flatness); Kitayama at 4:45—55, 13:1—5.
Isono teaches that “the flatness required for a substrate for magnetic disk as
a final product is, for example 4 pm or less.” Isono]] 33. Isono discloses
methods for achieving disks “excellent in flatness.” Id. ]f 34; see also id.
]flf 33, 79, 81, 83, 86. Kitayama teaches an embodiment having a flatness of
“2 pm or less [o]n average.” Kitayama at 11:39. A preponderance of the
evidence of record supports the Examiner’s determination that a person of
ordinary skill in the art would have been motivated to combine Isono and
Kitayama to achieve a magnetic disk having a flatness falling within the
scope of claim 1 to achieve improved properties, such as reduced read
errors, even if a person of ordinary skill in the art may have expected the
combination to result in reduced thermal tempering of the glass.
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In that regard, we additionally note that the Appellants’ Specification
appears to disclose a variety of methods for forming glass articles having
“smooth surfaces and consistent thickness,” and does not appear to attribute
particular significance to how the glass is flattened. E.g., Spec. H 88—95.
While the Specification does express a preference for cooling glass “by
conduction more than by convection,” e.g., id. 110, it does not suggest that
high dimensional consistency cannot be achieved by convection-based
methods, by solid/liquid quenching, id. H 73—74, or by methods disclosed
by Isono, see, e.g., Isono H 67—68. Rather, it suggests that such methods
involve certain additional considerations (e.g., “cooling plate alignment
and/or surface irregularities,” Spec. 173) for which a person of ordinary
skill in the art would account to achieve high dimensional consistency. See
id. 1173-74.
In view of the arguments presented, we are not persuaded of
reversible error in the Examiner’s findings and conclusions. A person of
ordinary skill in the art would have been motivated to achieve a high level of
flatness, including the claimed flatness, by Isono and Kitayama.3 The
Appellants provide no persuasive argument or evidence that combining
Isono and Kitayama would remove thermal tempering, or that achieving
such a flatness while maintaining thermal tempering, if desired, would have
been beyond the ordinary level of skill in the art.
3 The Appellants do not attribute unexpected results to the claimed flatness.
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CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—9, 22, and 25—32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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