Ex Parte Mauro et alDownload PDFPatent Trial and Appeal BoardAug 31, 201813684632 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/684,632 11/26/2012 22928 7590 09/05/2018 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 FIRST NAMED INVENTOR John Christopher Mauro 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. SPll-334 8950 EXAMINER SAMPLE, DAVID R ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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 JOHN CHRISTOPHER MAURO and MARCEL POTUZAK Appeal 2017-011029 Application 13/684,632 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and MARK NAGUMO, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision finally rejecting claims 1-3, 6, 8-11, and 28-30 under 35 U.S.C. § 112, first paragraph, based on the enablement requirement. Claims 12-23, 26, and 27 are also pending but have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The real party in interest, and the Applicant, is said to be Coming Incorporated. Appeal Brief dated February 7, 2017 ("Br."), at 2. Appeal 2017-011029 Application 13/684,632 The Appellants disclose that Coming GORILLA® glass, a clear alkali almninosilicate glass, has high strength, is damage resistant, and is primarily used for applications that require transmission of visible light. Spec. ,r 4. The Appellants disclose colored glass compositions that are said to combine the ion exchangeability characteristics of Coming GORILLA® glass with the depth and breadth of colors found in stained glass, wherein the colored glass compositions substantially maintain their original color following ion exchange treatment. Spec. ,r 5. Claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated February 7, 2017 ("Br."). 1. A colored glass comprising: from about 40 mol% to about 70 mol% Si02, from about 5 mol% to about 15 mol% Ab03, and from about 5 mol% to about 35 mol% Na20, wherein a sum of the mol% ofR20[2J+Ab03+MgO+ZnO comprises at least about 25 mol%; wherein a preselected color is imparted to the colored glass using one or more metal containing dopants formulated to impart the preselected color, the one or more metal containing dopants selected from the group consisting of Au, Ag, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, and Lu; wherein following an ion exchange treatment (IOX) up to about 64 hours, the colored glass has at least one surface under a compressive stress ( Gs) of at least about 500 MP a, wherein the 2 Claim 1 does not define "R." But see Br. 27 (reciting, in claim 2, that "R comprises one or more of Li, Na, K, Rb, and Cs; and one or more of B20 3, K20, MgO, ZnO, and P20s"). Thus, it is not possible to determine whether a colored glass satisfies the limitation "wherein a sum of the mol% of R20+Ab03+MgO+ZnO comprises at least about 25 mol%." In the event of further prosecution, the Examiner should consider rejecting at least claim 1 under 35 U.S.C. § 112, second paragraph, as indefinite. 2 Appeal 2017-011029 Application 13/684,632 at least one surface under the compressive stress ( Gs) exhibits a depth of layer (DOL) of at least about 15 µm; and wherein a color difference (L'iE) in the CIELAB color coordinates space of the preselected color of the colored glass after IOX treatment and before IOX treatment determined from specular transmittance measurements using a spectrophotometer comprises: a. from 0.18 to up to about 8.2 when measurement results obtained between about 200nm-2500nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant A; or b. from 0.13 to up to about 9.1 when measurement results obtained between about 200nm-2500nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant F02; or c. from 0.15 to up to about 8.4 when measurement results obtained between about 200nm-2500nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant D65; or d. from 0.09 to up to about 5.2 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant A; or e. from 0.07 to up to about 6.3 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant F02; or f. from 0.07 to up to about 6.5 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant D65. 3 Appeal 2017-011029 Application 13/684,632 Br. 26-27. B. DISCUSSION 1. Enablement rejection Enablement requires that a specification "teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation."' In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993). Factors to be considered in determining whether a disclosure would require undue experimentation include "( 1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims." In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). The claims on appeal are rejected under the first paragraph of 35 U.S.C. § 112 "because the specification, while being enabling for the glass compositions A-F, does not reasonably provide enablement for the genus of glasses encompassed by the claims." Final Act. 2. 3 More specifically, the Examiner concludes that the specification does not teach one of ordinary skill in the art how to make the full scope of colored glass encompassed by the claims on appeal wherein: a color difference (L'iE) in the CIELAB color coordinates space of the preselected color of the colored glass after IOX treatment and before IOX treatment determined from specular transmittance measurements using a spectrophotometer comprises: a. from 0.18 to up to about 8.2 when measurement results obtained between about 3 Final Office Action dated August 10, 2016. 4 Appeal 2017-011029 Application 13/684,632 Br. 26-27. 200mn-2500mn are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant A; or b. from 0.13 to up to about 9.1 when measurement results obtained between about 200nm-2500nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant F02; or c. from 0.15 to up to about 8.4 when measurement results obtained between about 200nm-2500nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant D65; or d. from 0.09 to up to about 5.2 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant A; or e. from 0.07 to up to about 6.3 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant F02; or f. from 0.07 to up to about 6.5 when measurement results obtained between about 3 60nm-7 50nm are presented in CIELAB color space coordinates for an observer angle of 10° and a CIE illuminant D65. For the reasons set forth in the Examiner's Answer dated May 19, 2017, the Examiner's conclusion is supported by a preponderance of the evidence, and for that reason, the enablement rejection is sustained. We add the following for emphasis. 5 Appeal 2017-011029 Application 13/684,632 2. Wands factors The Examiner makes specific findings regarding the Wands factors. We summarize several of those findings below. First, the Examiner finds that claim 1 covers "a very large genus of glass compositions." Final Act. 3. The Appellants do not appear to dispute that claim 1 is broad. Rather, the Appellants argue that "the breadth of claim 1 is not as broad as the Examiner asserts because the Examiner has ignored several elements ... recited by claim 1." Br. 12-13 (emphasis added). Second, the Examiner finds that "[t]he state of the art with respect to ion exchanged glasses is mature." Final Act. 4. The Examiner, however, finds that "[t]he use of colorants in ion exchanged glasses has not been investigated significantly; only a few patents have been found (see, e.g., US 2011/0071012; US 6,413,892; US 6,518,211) and none of these discuss any information about how color changes before and after ion exchange." Final Act. 4. The Appellants "agree[] with the Examiner that the state of the art with respect to ion exchanged glasses is mature" but do not address the Examiner's finding that "[ t ]he use of colorants in ion exchanged glasses has not been investigated significantly."4 Br. 13. Third, the Examiner finds that "[t]he art is unpredictable as to what combination of ingredients will result in a glass having the optical properties recited in the present claims and which combination of ingredients will have properties that satisfy the claimed LJE properties." Final Act. 4 ( emphasis added). For support, the Examiner directs our attention to the Appellants' 4 Final Act. 4. 6 Appeal 2017-011029 Application 13/684,632 response (dated February 12, 2016, at 12-13) to an anticipation rejection, 5 wherein the Appellants stated that "'[t]he teachings of the present application demonstrate that seemingly similar compositions, such as Composition B and Composition C ... , exhibit differing, exclusive properties, such as L'iE values of 0.67 and 1.60, respectively."' Final Act. 5 ( emphasis added). In response, the Appellants argue that "one of ordinary skill in the art could make a glass composition including the recited components falling within the ranges recited in claim 1 and having a compressive stress [ Gs] and depth of layer [DOL] recited in claim 1." Br. 14. Then, according to the Appellants, "using the tests disclosed in the specification, one of ordinary skill in the art could readily determine whether the glass composition has the LJE properties recited in claim 1." Br. 14 ( emphasis added). Fourth, the Examiner finds that claim 3 recites a colored glass composition that "works with the present invention."6 Final Act. 5. The Examiner, however, finds that the Specification provides no further guidance as to how manipulating the claimed ingredients "may impact the resultant L'iE properties of the ion exchanged glass, or how different colorants may impact the ability of a glass to meet ... the L'iE properties." Final Act. 5. 5 The Examiner found that "the composition [ disclosed in Kawai (US 2005/0096210 Al, published May 5, 2005)] is identical to the presently claimed glass and very similar to the composition recited in the inventive examples, and identical compositions cannot have mutually exclusive properties. For these reasons, the cited properties are presumed to be inherent to the glass of Kawai." Office Action dated November 13, 2015, at 4. 6 The Examiner concludes that claim 3, which depends from claim 1, recites a "smaller sub-genera of glass compositions [ than recited in claim 1]." Final Act. 3. 7 Appeal 2017-011029 Application 13/684,632 Likewise, the Examiner finds that the Specification provides no guidance as to what factors in the glass process impact the claimed L'iE properties. Final Act. 7. The Examiner finds that "[t]he skilled artisan is left to prepare individual glasses and test them to determine which might have the appropriate L'iE properties and which do not." Final Act. 5. In response, the Appellants argue that "specific instructions on how the manipulation of each ingredient in the glass composition impacts the resultant L'iE properties are not required to enable the claims." Br. 15. The Appellants argue that the Specification "provides numerous examples of glass compositions that produce the recited properties and explicitly sets forth tests that may be conducted to determine whether the glass composition has the properties recited in claim 1." Br. 15 ( emphasis added). In particular, the Appellants contend that paragraphs 70 and 71 and Figures 5-10 in the Specification "discuss the determination of L'iE based on transmittance spectra, as well as suitable analytical software and the spectroscopy method used." Br. 15. Fifth, the Examiner finds there are 61 working examples based on six inventive glass compositions (glass compositions A-F) and one comparative glass composition (glass composition G). The Examiner finds that the six inventive glass compositions employ six colorants (i.e., Au, Co, Cr, Cu, Fe, and V) but only Au is encompassed by the claims on appeal. Final Act. 5; see also Br. 16 (agreeing with the Examiner's findings). The Examiner finds there is "no discussion or guidance in the examples as to the variables that affect the L'iE properties." Final Act. 6. Moreover, the Examiner states that he "was unable to ascertain any trends in the data [in the Appellants' examples] to aid the skilled artisan in predicting 8 Appeal 2017-011029 Application 13/684,632 which glass compositions within the claimed species would have the claimed L'iE properties and which would not." Final Act. 6. Sixth, the Examiner finds that "[ t ]he amount of experimentation needed to make the invention commensurate in scope with the present claims would be great." Final Act. 5. The Examiner finds that "[i]n view of the unpredictability in the art, the skilled artisan would need to make each species of glass having greater than 40 mole percent silica[7J and one of the colorant[ s] and then ... experimentally determine whether the glass has the L'iE properties as a result of ion exchange." Final Act. 5-6; see Ans. 12 (finding that claim 1 encompasses 9.45 x 106 species of glass). The Appellants do not dispute that one of ordinary skill in the art would need to experimentally determine whether a glass has a L'iE within the claimed range. Rather, the Appellants argue that the Specification details how to measure and calculate the L'iE of the glass once it is made. Br. 20. Therefore, the Appellants argue that "the determination of the L'iE of the glass samples is well within the capabilities of a skilled artisan as routine processing." Br. 20; see also Br. 18 ( contending that a considerable amount of experimentation is permissible if it is merely routine ( citing Wands, 858 F.2d at 737)). 7 Claim 1 recites that the colored glass comprises "from about 40 mol% to about 70 mol% Si02" in combination with additional ingredients. Br. 26. We understand the Examiner to find that one of ordinary skill in the art would need to make numerous colored glass compositions comprising each of the claimed ingredients within the amounts claimed, wherein the compositions have a compressive stress ( Gs) of at least about 500 MPa and a depth of layer (DOL) of at least about 15 µm. Br. 26; see Ans. 10-11. 9 Appeal 2017-011029 Application 13/684,632 3. Analysis The claims on appeal, and especially claim 1, are very broad and encompass a large number of colored glass compositions. Moreover, the evidence of record establishes that the art of ion exchanged colored glass compositions 8 is unpredictable. See Response dated February 12, 2016, at 12 (stating that "[t]he teachings of the present application demonstrate that seemingly similar compositions, such as Composition B and Composition C ... exhibit differing, exclusive properties, such as L'iE values of 0.67 and 1.60, respectively" ( emphasis added)). Based on the unpredictability in the art, we also find that a great amount of experimentation would be required to make colored glass compositions within the scope of the claims. We recognize that "[ e ]nablement is not precluded by the necessity for some experimentation." Wands, 858 F.2d at 736. Even "a considerable amount of experimentation is permissible." Id. at 737. However, the experimentation must be routine or the Specification must provide "a reasonable amount of guidance with respect to the direction in which the experimentation should proceed." Id. In this case, the Examiner finds that the Appellants' Specification provides no guidance with respect to making a colored glass composition having a color difference (L'iE) within one of the claimed ranges. Final Act. 5, 7. In response, the Appellants do not direct us to any evidence establishing that nothing more than routine experimentation would be necessary to make a glass composition as recited in claim 1 having a L'iE as claimed. Likewise, the Appellants do not show that the Specification 8 The Appellants "agree[] that the invention relates to 'an ion exchanged (IOX) colored glass composition."' Br. 13. 10 Appeal 2017-011029 Application 13/684,632 provides a reasonable amount of guidance as to the direction in which experimentation should proceed to make the claimed colored glass having a L'iE within the scope of the claims. We are aware that the Appellants' Specification provides a formula to determine L'iE of a colored glass once it is made. However, the Appellants do not direct us to any disclosure in the Specification showing how to make a glass composition as recited in claim 1, comprising the claimed dopants (with the exception of Au9) and having a L'iE within one of the claimed ranges. Likewise, the Appellants do not direct us to any evidence showing that making an ion exchanged colored glass having a L'iE as claimed was known in the art at the time of the Appellants' invention. See In re Buchner, 929 F.2d 660, 661 (Fed. Cir. 1991) ("In order to be enabling under 35 U.S.C. § 112, a patent application must sufficiently disclose an invention to enable those skilled in the art to make and use it. The specification need not disclose what is well known in the art."); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (a specification "need not teach, and preferably omits, what is well known in the art"). Based on the breadth of the claims, the unpredictability in the art, and the minimal guidance provided in the Appellants' Specification with respect to the direction in which experimentation should proceed to make a colored glass having a L'iE as claimed, the evidence of record weighs in favor of the 9 As for Au, we find that the Appellants' Specification provides some amount of guidance with respect to the direction in which experimentation should proceed to make the claimed colored glass comprising Au. The claims on appeal, however, are not limited to a colored glass comprising Au as a dopant. Moreover, the argued unpredictability in the art indicates that the results for Au would not have guided one of ordinary skill in the art in the selection of conditions for other metal dopants. 11 Appeal 2017-011029 Application 13/684,632 Examiner's conclusion that claim 1 is not enabled. The Appellants do not present arguments in support of the separate patentability of any of dependent claims 2, 3, 6, 8-11, and 28-30. Therefore, the enablement rejection of claims 1-3, 6, 8-11, and 28-30 is sustained. C. DECISION The Examiner's decision 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)(l ). AFFIRMED 12 Copy with citationCopy as parenthetical citation