Ex Parte Murnane

Board of Patent Appeals and Interferences

Sep 13, 2008

10232257 (B.P.A.I. Sep. 13, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RAND A. MURNANE
____________

Appeal 2008-0815
Application 10/232,257
Technology Center 1700
____________

Decided: September 12, 2008
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH,
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-6
and 9-22. 35 U.S.C. § 134. Claims 7-8 were objected to by the Examiner,
and are not before us in this appeal. We have jurisdiction under
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35 U.S.C. § 6(b). 1
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The application concerns a multi-step method for making glass.
According to the Specification, in conventional glass making processes, “all
raw materials are pretreated, mixed, optionally with water, to form a single
melting batch” which is subjected to heating and melting to form molten
glass, and the molten glass exits the furnace to form glass products (e.g.,
sheets, tubes, fibers). (Spec. [0002].) When liquid is present in a
conventional glass making process, the gas released from batch materials
can form foam with the liquid, hindering heat transfer and reaction between
the liquid and the solid particles; then, components with higher melting
temperature, such as silica and alumina, may combine with the foam to form
an undesirable scum layer on top of the molten glass. (Spec. [0005] –
[0006].) Scum formation is often addressed by a thermal approach, i.e.,
elevating the melting temperature in glass melters; however, such an
approach is more energy intensive, and requires costly/complex melter
design. (Spec. [0007] – [0008].)
The Specification proposes a chemical approach to address the
problems encountered with conventional thermal approaches. (Spec.
[0009].)

1 Our decision makes reference to the (corrected) Examiner’s Answer
(“Ans.”, mailed Jan. 26, 2007) and Appellant’s Amended Brief on Appeal
(“Br.”, filed May 2, 2006). It is noted that Appellant’s Reply Brief (filed
March 29, 2007) has not been considered by the Office because it contains
new evidence. (See Office communication mailed May 16, 2007.)
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Independent claim 1 is illustrative of Appellant’s claimed process:2
1. A process for producing glass material comprising the
following steps:
(I) producing frits by (i) mixing the starting materials,
collectively referred to as Group A materials, consisting
essentially of materials that outgas under glass-melting
conditions; (ii) heating the resultant mixture of Group A
materials to an outgassing temperature and allowing the
materials to melt and outgas; and (iii) cooling the molten
outgassed materials and forming frits therefrom;
(II) mixing the frits produced in step (I) with other glass
forming materials, collectively referred to as Group B
materials; and
(III) melting the resultant mixture of step (II) under glass
melting conditions to form the glass material with a
predetermined final glass composition.
The Specification indicates that by preparing frits from the Group A
materials and melting the frits together with the Group B materials, gas
release is substantially reduced in the glass melter, which subsequently
reduces foaming and scum formation. (Spec. [0017].)
The Examiner relies upon the following references in rejecting the
appealed claims:
Taniguchi US 5,320,986 Jun. 14, 1994
Dumbaugh US 5,374,595 Dec. 20, 1994
Tooley, F.V, Handbook of Glass Manufacture, Ogden Publishing Co.
(1954).
The Examiner also relies upon Official Notice, first taken at page 8 of
the Office Action of February 17, 2005.
The Examiner rejected the claims as follows:

2 Reproduced from the Claims Appendix to Appellant’s Amended Brief
on Appeal.
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1. Claims 1-6 and 9-22 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1, 2, 4, 5, and 11-14 stand rejected under 35 U.S.C. §
102(b) as being anticipated by Taniguchi.
3. Claim 3 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Taniguchi and Tooley.
4. Claims 6, 9-14, and 19-22 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Taniguchi (and Official Notice for claims 6, 9-
10).3
5. Claims 16-18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Taniguchi and Dumbaugh.

REJECTIONS UNDER § 112, SECOND PARAGRAPH
The Examiner contends that the claims are indefinite for the following
reasons: 4
A. As to claim 1, the Examiner asserts that the term “frits” is
indefinite. (Ans. 4.);
B. Regarding claim 3, the Examiner determines that there is
“confusing antecedent basis” for the limitations “the glass melting
temperature in step (III)” and “a temperature.” (Ans. 4.);

3 The Examiner withdraws a rejection of claims 15-18 under these
grounds. (See Ans. 3.)
4 In the Final Office Action mailed June 9, 2005, the Examiner
concluded “[t]he claims are replete with language which make [sic] the
claims indefinite and confusing,” and identified with particularity the
examples A-D listed in the body of this Decision. No other examples were
identified in the (corrected) Examiner’s Answer.
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C. Concerning claim 6, the Examiner asserts that the phrase
“Group A materials comprises fining agents and non-outgassing materials”
is indefinite because it is inconsistent with the phrase “consists essentially”
in claim 1 (Ans. 5);
D. As to claim 15, the Examiner determines that “Group B
material/materials” is indefinite because it suggests Group B can be just one
material, which is inconsistent with the term “materials” recited in claim 1.
(Ans. 4-5.)
The indefiniteness issue before us is: Has the Examiner reversibly
erred in finding that some and/or all of claims 1-6 and 9-22 are indefinite
under 35 U.S.C. § 112, second paragraph, on the basis of the claim language
“frits” in claim 1; “the glass melting temperature in step (III)” and “a
temperature” in claim 3; “Group A materials further comprise fining agents
and non-outgassing materials” in claim 6; and “Group B material/materials”
in claim 15? We answer this question in the affirmative; i.e., we determine
that the Examiner has not met the burden of establishing that claims 1-6 and
9-22 are indefinite on the basis of any of the aforementioned claim
terms/phrases.
Findings of Fact relating to Indefiniteness
1. The Specification indicates that cooling degassed Group A
batch materials quickly “creates a high thermal stress in the material, which
often breaks the material into small pieces . . . [t]he small pieces can then be
fed into a ball mill or other equipment to make frits of the desired grain
size.” (Spec. [0038].)
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2. The Specification defines “normal glass melting temperature”
as “the temperature at which the batch materials melt to form the molten
glass in a glass melter in a glass melting process.” (Spec. [0030].)
3. The Specification indicates a preference that the melting
temperature for the degassing of the Group A materials is typically 400-
500°C below the normal glass melting temperature, i.e., “for a glass that is
usually produced at a melting temperature of about 1400-1500°C, the
melting temperature of the Group A materials is around 1000°C.” (Spec.
[0037].)
4. The Specification defines the term “consisting essentially of” as
“the materials in question may contain additional components . . . as long as
the additional components do not materially alter the basic and novel feature
of the present invention.” (Spec. [0034].)
Principles of Law Relating to Indefiniteness
The initial burden of presenting a prima facie case of unpatentability,
on any ground, rests with the Examiner. See In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992). In the case of 35 U.S.C § 112, second paragraph, the
relevant inquiry is whether the claims delineate to a skilled artisan the
bounds of the invention. In re Venezia, 530 F.2d 956, 958 (CCPA 1976).
Analysis of Indefiniteness Issue
A. “frits”
The Examiner argues one of ordinary skill in the art would be unable
to tell what is meant by creating “frits,” and thus claim 1 is indefinite. (Ans.
4.) We disagree. As pointed out by Appellant (Br. 10), one of ordinary skill
in the art would look to paragraph [0038] of the Specification to find that
cooling glass material quickly “creates a high thermal stress in the material,
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which often breaks the material into small pieces . . . [t]he small pieces can
then be fed into a ball mill or other equipment to make frits of the desired
grain size.” (See Finding of Fact 1.) Correspondingly, we conclude that the
ordinary artisan would understand that in the context of the Specification,
“frits” are small pieces of glass that are produced, e.g., by rapidly cooling
glass, ball milling, or other appropriate equipment. (See id.) In this context,
we agree with Appellant that “frits” can mean: “(a) frit material bodies with
differing compositions; (b) multiple bodies made from frit material(s) with
differing or essentially the same composition; or (c) both (a) and (b).” (See
Br. 10).
B. “the glass melting temperature in step (III)” and “a temperature”
The Examiner argues there are confusing antecedent basis for the
limitations “the glass melting temperature in step (III)” and “a temperature,”
and therefore, claim 3 is indefinite. (Ans. 4.)
We find that the Examiner has not met the burden of showing that the
claim limitation “the glass melting temperature in step (III)” renders claim 3
indefinite. Specifically, while the Examiner points out that there is “no
mention of any melting temperature in step (III)” (Ans. 4), and further points
out that “there can be at least three melting temperatures” in step (III) (Ans.
14), the Examiner fails to explain why one having ordinary skill in the art
would not recognize which “glass melting temperature” is necessarily
inherent in melting step (III). (Ans. 14-15.) In our view, one of ordinary
skill in the art would understand that in the context of paragraphs [0030] and
[0037] of the Specification (see Findings of Fact 2-3), “the glass melting
temperature in step (III)” refers to the temperature at which the glass is
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melted and produced in step (III), i.e., the temperature to which glass is
necessarily heated in order to form glass melt within the glass melter.
We also find that the Examiner has not met the burden of showing
that the term “a temperature” renders claim 3 indefinite. Rather, we are in
agreement with Appellant that one of ordinary skill in the art would readily
understand that materials may be heated to an outgassing temperature (claim
1, step (I)(ii)), and may also be allowed to melt and outgas at “a
temperature” (claim 3) which temperature may or may not be the same as
the “outgassing temperature” of step (I)(ii). (See Br. 10-11.) In other words,
the “temperature” recited in claim 3 does not (and need not) necessarily refer
back to a previously recited temperature. Accordingly, the claim 3 term “a
temperature” is proper.
C. “Group A materials further comprise fining agents and non-
outgassing materials”
The Examiner argues:
Claim 6 indicates that the Group A comprises fining agents and
other materials. But claim 1 stipulates that Group A “consists
essentially...” This is not understood because when a claim
“consists essentially” it means it is closed to some members.
But “comprises” indicates it is open to additional members.
Thus when claims 1 and 6 are combined, then Group A is both
closed and open to other members. This is essentially
impossible to be both open and closed - one would not be able
to understand what the claim requires.
(Ans. 5.) The Examiner has not met the burden of establishing
indefiniteness with this rejection. As defined in paragraph [0034] of the
Specification, the term “consisting essentially of” means “the materials in
question may contain additional components . . . as long as the additional
components do not materially alter the basic and novel feature of the present
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invention.” (Finding of Fact 4.)5 As the Examiner has not addressed
Appellant’s argument that the limited amounts of materials recited in claim 6
(“each constitutes less than about 5% by mole”) would not “materially alter
the basic and novel feature of the claimed invention” (Br. 11), the burden of
proving indefiniteness is not met.
D. “material” / “materials”
The Examiner argues that if claim 1 indicates that Group B requires
“materials,” it is improper to specify that Group B can comprise a single
“material” within dependent claim 15. (Ans. 4-5.) The Examiner has failed
to establish that claim 15 is indefinite. As suggested by Appellant (Br. 11),
the use of a plural form, in this case “materials,” is broadly interpreted as
“one or more materials” in the absence of contrary evidence. See Dayco
Prods. Inc. v. Total Containment Inc., 258 F.3d 1317, 1327-28 (Fed. Cir.
2001). As the Examiner has not identified any evidence that the term
“materials” does not mean “one or more materials,” the burden of proving
indefiniteness is not met.
Correspondingly, we conclude that the Examiner reversibly erred in
rejecting claims 1-6 and 9-22 under § 112, second paragraph. Therefore, we
do not sustain this ground of rejection.

REJECTION UNDER § 102

5 Appellant’s definition of “consisting essentially of” mirrors the
interpretation of the phrase by the courts. See In re Herz, 537 F.2d 549, 551-
52 (CCPA 1976) (The transitional phrase “consisting essentially of” limits
the scope of a claim to the specified materials or steps “and those that do not
materially affect the basic and novel characteristic(s)” of the claimed
invention. (emphasis in original)).
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Appellant asserts that Taniguchi fails to disclose steps (I), (II), and
(III) of claim 1. (Br. 14, 17.)
Step (I):
(I) producing frits by (i) mixing the starting materials,
collectively referred to as Group A materials, consisting
essentially of materials that outgas under glass-melting
conditions; (ii) heating the resultant mixture of Group A
materials to an outgassing temperature and allowing the
materials to melt and outgas; and (iii) cooling the molten
outgassed materials and forming frits therefrom

Appellant asserts that Taniguchi fails to teach claim 1, step (I) because
Taniguchi adds “large amounts of SiO2 and Al2O3” to the starting materials,
such that the outgassing materials constitute only a small portion of
Taniguchi’s starting materials. (Br. 13-14.). According to Appellant, step
(I) requires that the starting materials, i.e., Group A materials, “consist
essentially of outgassing materials.” (Br. 13-14.) Appellant argues that this
language would not read on a batch having added to it “large amounts of
SiO2 and Al2O3” since these materials would “necessarily alter the basic and
novel feature[s] of the [claimed] invention.” (Br. 14.)
The Examiner contends that Taniguchi discloses producing frits using
a mixture of “materials that outgas (for example, dolomite, limestone and
cerium carbonate),” i.e., Appellant’s claimed “Group A materials.” (Ans. 6.)
The Examiner concedes that Taniguchi includes SiO2 and Al2O3 in the
mixture of materials used to produce frits. (Ans. 6.) However, the Examiner
maintains that use of the term “comprising” in claim 1 opens the claim to the
addition of such non-Group A materials. (Ans. 6.)
Steps (II) and (III):
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(II) mixing the frits produced in step (I) with other glass
forming materials, collectively referred to as Group B
materials; and
(III) melting the resultant mixture of step (II) under glass
melting conditions to form the glass material with a
predetermined final glass composition.

Appellant contends that Taniguchi does not disclose either step (II) or
step (III) of claim 1. (Br. 17.) According to Appellant, Taniguchi’s
inclusion of “substantial amount[s] of outgassing agents” in a second
melting step “clearly frustrate[s]” the purpose of the invention. See id.
Appellant points to a definition of Group B in the Specification, indicating
that outgassing materials disclosed in Taniguchi do not fall within that
definition. (Br. 17-19.)
The Examiner finds that Taniguchi discloses “other glass forming
materials” which are mixed with frits from step (I). (Ans. 7 (“the cullet and
the 70% of raw materials are the ‘other glass forming materials.[’]”).) It is
noted that the Examiner determines that “other glass forming materials” are
open to having outgassing materials mixed therewith. (Ans. 7; see Final
Office Action mailed June 9, 2005 at 10-11.)
The anticipation issues before us are:
Has Appellant shown that the Examiner reversibly erred in finding
that claim 1, step (I) reads on Taniguchi’s method of producing frits which
includes mixing both outgassing and non-outgassing materials? and
Has Appellant shown that the Examiner reversibly erred in finding
that claim 1, steps (II) and (III) read on Taniguchi’s second melting step
which similarly includes mixing both outgassing and non-outgassing
materials?
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We answer both of these questions in the negative.
Findings of Fact Relating to Anticipation
5. The Specification defines Group A materials as consisting
essentially of materials that generate gases (outgas) under normal glass
forming conditions by decomposition or other chemical reactions. (Spec.
[0026]; see Spec. [0025].)
6. The Specification indicates that dissociation of chemically
bound water in batch material is regarded as a chemical reaction in
accordance with the definition of Group A; however, batch materials
containing largely SiO2 and/or Al2O3, both of which may include chemically
bound water (see Spec. [0004]), are excluded from Group A. (Spec. [0026];
see Spec. [0035].)
7. The Specification prefers that Group A materials “consist
essentially of materials selected from naturally occurring, synthetic and
beneficiated naturally occurring nitrates, carbonates, carbohydrates, sulfates,
boric acid, hydroxides, mixtures and compounds thereof, with or without
containing additional chemically bound water, oxides and other materials
that decompose to outgas under normal glass melting temperatures and other
materials that contain chemically bound water.” (Spec. [0012].)
8. The Specification prefers that fining agents and other starting
materials, when used in small amounts in the glass composition, are included
in Group A. (Spec. [0012].)
9. The Specification defines Group B materials as “the group of
batch materials that consist essentially of those that typically do not release
gases by decomposition or other chemical reactions under normal glass
forming conditions.” (Spec. [0027].) The Specification’s definition clarifies
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that materials may release physically bound gases (such as moisture or air).
(Id.) The Specification further clarifies that “starting materials containing
largely SiO2 and/or Al2O3 are included in Group B, even if they include
chemically bound water. (Id.)
10. Taniguchi discloses a glass manufacturing process which uses a
cullet of a previously produced frit glass in a batch of glass composition to
be melted. (Taniguchi, col. 5, ll. 9-35.)
11. The previously produced frit glass of Taniguchi on a weight
basis includes, inter alia, 45-65% SiO2, 3.5-10.0% Al2O3, and 0.25%-0.65%
of TiO2. (Taniguchi, col. 5, ll. 12-17.)
12. To make the previously produced frit glass, Taniguchi discloses
the use of industrial raw materials of glass, such as silica sand, feldspar, soda
ash, dolomite, limestone, red iron oxide (rouge), ilmenite, titanium oxide,
cerium carbonate, zinc oxide, sodium sulfate (Taniguchi, col. 5, ll. 40-44);
the industrial raw materials are weighed and mixed to achieve a desired
glass composition (Taniguchi, col. 5, ll. 44-45).
13. Taniguchi discloses that the mixed raw materials are melted in
an electric furnace. (Taniguchi, col. 5, l. 47.)
14. Taniguchi discloses that following melting, the previously
produced frit glass contains, inter alia, CaO and CeO2. (Taniguchi, col. 5, ll.
50-54.)
15. Taniguchi discloses that “it is suitable that the cullet of the frit
glass amounts to 1-35 wt % of a batch of glass composition to be melted.”
(Taniguchi, col. 5, ll. 25-28.) Such is “favorable for realization of the aimed
degree of reduction of iron in the glass and the aimed green color of the
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glass and also for stable operation of the glass melting furnace and stable
and uniform melting of the glass batch.” (Taniguchi, col. 5, ll. 29-35.)
16. Taniguchi discloses producing glass sheet by using 20 wt%
cullet of the previously produced frit glass, 10 wt% return cullet, and 70
wt% of the raw materials mixed (see Finding of Fact 12) to make the
previously produced frit glass. (Taniguchi, col. 5, ll. 55-59.)

Principles of Law Related to Anticipation
“A claim is anticipated [under 35 U.S.C. § 102] only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union
Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). During examination,
claims are to be given their broadest reasonable interpretation consistent
with the specification, and claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
However, broad claim terms should not be limited solely on the basis of
specification passages. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004).
For the purposes of searching for and applying prior art under § 102, absent
a clear indication in the specification or claims of what the basic and novel
characteristics actually are, “consisting essentially of” will be construed as
equivalent to “comprising.” See PPG Indus. v. Guardian Indus., 156 F.3d
1351, 1355 (Fed. Cir. 1998) (“PPG could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear
in its specification what it regarded as constituting a material change in the
basic and novel characteristics of the invention.”); see also Ex parte
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Hoffman, 12 USPQ2d 1061, 1064 (Bd. Pat. App. & Inter. 1989) (“[I]t is an
applicant's burden to establish that a step practiced in a prior art method is
excluded from his claims by ‘consisting essentially of’ language.”)

Analysis of Anticipation Issues
The contentions of the Examiner and Appellant raise issues of claim
interpretation. Therefore, before we address the anticipation issues, we first
interpret the claim language in dispute. See Panduit Corp. v. Dennison Mfg.
Co., 810 F.2d 1561, 1567-68 (Fed. Cir. 1987) (In making a patentability
determination, analysis must begin with the question, “what is the invention
claimed?” since “[c]laim interpretation . . . will normally control the
remainder of the decisional process.”)
As to step (I), Appellant urges a narrow interpretation which excludes
the addition of large amounts of SiO2 and Al2O3 to the mixture of materials
used to produce the frits. (Br. 13-14.) However, Appellant has not directed
us to a claim limitation which necessarily excludes the presence of large
amounts of SiO2 and Al2O3 in a produced frit; for example, SiO2 and Al2O3
can be added in a step which is separate from step (I)(i) and the “consisting
essentially of” requirement thereof. Accordingly, given its broadest
reasonable construction, claim 1 is open to an additional step of adding other
materials, e.g., SiO2 and Al2O3, to the mixture of “starting materials” formed
in step (I)(i) to form the “resultant mixture” used in heating step (I)(ii). See
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364 (claims are given their
broadest reasonable interpretation consistent with the specification).
Alternatively, as pointed out by the Examiner, Appellant has failed to
carry an applicant’s burden to (1) “clearly” point out the “basic and novel
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characteristics” of the claimed invention and (2) show that Taniguchi’s
materials are excluded by the “consisting essentially of” language of claim
1. (See Ans. 16-17.) We agree. Appellant’s references to Specification
paragraphs [0017], [0035], and [0036] (Br. 14-15), and accompanying
unsupported statements,6 do not meet the burden of “clearly” establishing a
novel and basic characteristic which would require the USPTO to interpret
“consistently essentially of” any more narrowly than the term “comprising.”
See PPG, 156 F.3d at 1355; Hoffman, 12 USPQ2d at 1064. As recognized
by the Examiner, there is nothing in paragraph [0017] which states which
characteristics are basic and/or novel, nor does Appellant clearly point out
the characteristics. (Ans. 16.) Furthermore, as volunteered by the Examiner
(Ans. 16-17), language in the cited paragraphs actually contradicts
Appellant’s assertions.7 In addition, Appellant has not carried the burden of
presenting a showing in support of the argument that Taniguchi’s SiO2
amounts would materially affect the basic and novel characteristics of the
claimed invention. See Herz, 537 F,2d at 551; In re De Lajarte, 337 F.2d
870, 874 (CCPA 1964); Hoffman, 12 USPQ2d at 1064.

6 See Br. 14 (“[t]herefore, the novel and basic characteristic of the
process of the present invention includes the outgassing in step (I) of Group
A materials, which substantially reduces outgassing in step (III)”); Br. 15
(“including SiO2 in large amounts . . . alters the basic and novel
characteristic of the present invention as claimed”).
7 As a further example, we note that paragraph [0036] of the
Specification recites that “other starting materials . . . can be added into
Group A as well, as long as the outgassing materials are included in Group
A.” There is no limit on the proportion of “other starting materials,” other
than mere guidance that such “usually each constitute . . . less than about
5%.” (See Spec. [0036] (emphasis added).)
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Regarding steps (II) and (III), we similarly interpret the steps as being
broadly directed to mixing frits produced in step (I) with other glass forming
materials, and then melting the mixture. While claim step (II) requires the
addition of Group B materials, it does not preclude the addition of other
materials (e.g., materials which outgas under typical melting conditions in a
conventional glass melter) in forming the “resultant mixture” used in step
(III). See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d at 1364.
Based on our analysis above, we are in agreement with the Examiner
that claim 1, step(I) reads on Taniguchi’s method of producing frits using a
mixture which includes outgassing materials (for example, dolomite,
limestone and cerium carbonate), SiO2 and Al2O3. (See Ans. 6; Findings of
Fact 5-8, 10-14.)
Concerning steps (II) and (III), Taniguchi discloses mixing frits (or
cullet) from step (I) with other glass forming materials (see Findings of Fact
15-16), some of which are Group B-type materials (e.g., SiO2 and/or Al2O3)
as defined by the Specification (see Finding of Fact 9).8
Accordingly, we find that a preponderance of the evidence weighs in
favor of the Examiner’s finding that claim 1 is anticipated by Taniguchi.
Appellant has not presented separate arguments directed to any of dependent
claims 2, 4, 5, and 11-14. Therefore, we sustain the Examiner’s rejection of
claims 1, 2, 4, 5, and 11-14 under 35 U.S.C. § 102(b) as anticipated by
Taniguchi.
REJECTIONS UNDER § 103

8 Thus, it is unnecessary to determine whether the Group B
Specification definition (see Br. 16-18; Finding of Fact 9) adds limitations to
claim 1.
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For each of the Examiner’s § 103 rejections, “[Appellant] submits that
a prima facie case of obviousness has not been established, even with regard
to the independent claim, claim 1.” (Br. 22 (emphasis in original); see Br.
19-20.) Argument relating to the prima facie obviousness of claim 1 is moot
in view of our finding that Taniguchi anticipates claim 1.9
Appellant also argues for patentability based on limitations contained
within dependent claim 3 (see Br. 22-23), as well as limitations contained
within dependent claim 6 (see Br. 20). The arguments of Appellant and the
Examiner present two obviousness issues for our review.

First Obviousness Issue
The Examiner rejects claim 3 under 35 U.S.C. § 103(a) as being
obvious over Taniguchi in view of Tooley. 10 (Ans. 11-14.) The Examiner
relies on Tooley for the limited purpose of suggesting typical operating
temperatures for the generically stated glass processing steps of Taniguchi.
(See id.) The Examiner concludes that “[i]t would have been obvious to
perform routine experimentation to determine the optimal temperature for
melting the Taniguchi glass,” and that as taught by Tooley, a melting
temperature of 2600°F would be reasonable, which is 444°C higher than a
temperature at which materials are still melted. (Ans. 12-13.) The Examiner
further notes “that prior to cooling to form frits, the molten glass would have
to be melted to some intermediate temperature – including a temperature that

9 This is particularly relevant to the rejection of claims 16-18 as
obvious over Taniguchi in view of Dumbaugh, as Appellant indicates that
“[c]laims 16-18 all depend from claim 1. Therefore they are not obvious
over Taniguchi [and Dumbaugh] for the same reason.” (See Br. 21.)
10 Note our discussion of claim 3 in the § 112 section, supra.
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is 400-500 C less that [sic] the highest temperature. The claims do not
indicate that the materials are at ‘a temperature’ for any specific period of
time.” (Ans. 14.)
Appellant argues that “[n]either [Taniguchi] nor Tooley disclose[s] or
suggests” that “the Group A materials are melted and allowed to outgas at a
temperature about 400-500°C lower than the glass melting temperature in
step (III)” as required by claim 3. (Br. 22-23.)
Accordingly, the first obviousness issue before us is: Has Appellant
shown that the Examiner erred in concluding that it would it would have
been obvious to have used a glass melting temperature of 2600° in
Taniguchi’s process based on Tooley’s disclosure that this is a conventional
glass melting temperature? We answer this question in the negative.
Findings of Fact Relating to First Obviousness Issue
17. Tooley teaches 2600°F melting temperatures for glass.
(Tooley, p. 245.)
18. Tooley teaches that glass can be worked at a temperature of
1800°F. (Tooley, p. 319.)
Principles of Law Relating to Obviousness
Under 35 U.S.C. § 103(a), a prima facie case of unpatentability
requires that the Examiner show that the differences between the claimed
invention and the prior art “are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art.” The prima facie case of obviousness is a
procedural tool – after the Examiner initially produces evidence sufficient to
support a ruling of obviousness, the burden shifts to the applicant to come
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forward with evidence or argument in rebuttal. In re Piasecki, 745 F.2d
1468, 1475 (Fed. Cir. 1984).
“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276 (CCPA 1980). “Normally, it is to be expected that a change
in temperature, or in concentration, or in both, would be an unpatentable
modification. Under some circumstances, however, changes such as these
may impart patentability to a process if the particular ranges claimed
produce a new and unexpected result which is different in kind and not
merely in degree from the results of the prior art”. In re Aller, 220 F.2d 454,
456 (CCPA 1955); see also In re Schwarze, 536 F.2d 1373, 1377 (CCPA
1976) (affirming an obviousness rejection of a claim to a chemical process
in which the first stage was conducted at 0-50°C when the prior art process
conducted the first stage at 60-90°C); In re Hill, 284 F.2d 955, 958-59
(CCPA 1960) (affirming an obviousness rejection of a claim to a chemical
process conducted at 150-250°C when the prior art disclosed the same
reaction at 300°C).
Analysis of First Obviousness Issue
We find that the facts and reasons relied on by the Examiner provide a
reasonable basis to conclude that it would it would have been obvious to
have used a glass melting temperature of 2600° in Taniguchi’s process based
on Tooley’s disclosure that this is a conventional glass melting temperature.
(Ans. 11-14; see Findings of Fact 17-18.) Appellant makes a general
statement that the limitations of claim 3 are not met by the combination of
Taniguchi and Tooley. (See Br. 22-23.) However, Appellant has not
addressed the facts and reasons relied on by the Examiner in rejecting claim
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3, or otherwise identified a specific error in the Examiner’s rejection. (See
Ans. 17.)
Accordingly, we affirm the decision of the Examiner rejecting claim 3
under 35 U.S.C. § 103(a) as obvious over Taniguchi in view of Tooley.

Second Obviousness Issue
The Examiner rejects claims 6, 9-14, and 19-22 under 35 U.S.C. §
103(a) as being obvious over Taniguchi (in view of Official Notice for
claims 6 and 9-10). (Ans. 3, 8-10.) Appellant argues claims 6, 9-14, and 19-
22 as a group. (Br. 19-20.) We select representative claim 6 to decide the
appeal as to these claims.11 37 C.F.R. § 41.37(c)(1)(vii).
Representative claim 6 depends indirectly from claim 1, and
additionally recites “[a] process in accordance with claim 4, wherein the
Group A materials comprise fining agents and non-outgassing materials
under normal glass melting temperatures, in amounts that each constitutes
less than 5% by mole on an oxide basis of the final glass composition.”
The “Examiner takes Official Notice that fining agents are well-
known adjuncts that aid in the fining of glass.” (Ans. 8.) The Examiner thus
contends that it would have been obvious to the ordinary artisan to have
added multiple well known fining agents to Taniguchi’s mixture of starting
materials and to adjust the amounts thereof depending on the desired final
properties of the glass. (Ans. 8.) The Examiner also finds that Taniguchi
uses iron oxide and titanium oxide, i.e., non-outgassing materials, in
amounts less than 5%. (Ans. 8.)

11 Claim 6 is the only claim in this claim grouping treated separately by
Appellant.
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Appellant does not dispute the rationale behind the Examiner’s
Official Notice. However, Appellant does argue “[c]laim 6 requires that the
non-outgassing materials each constitutes less than about 5% by mole on an
oxide basis of the final glass composition. This is neither taught nor
suggested by Taniguchi.” (Br. 20.) More specifically, Appellant argues
“[a]ll of the exemplary frit glass disclosed in [Taniguchi] comprises large
amounts of SiO2 . . . significantly larger than 5 mol%.” (Br. 20.)
Accordingly, the second obviousness issue before us is: Has
Appellant shown that the Examiner erred in finding that Taniguchi discloses
the use of non-outgassing materials in amounts that each constitutes less
than 5% by mole on an oxide basis of a produced final glass composition?
We answer this question in the negative.
Analysis of Second Obviousness Issue
Appellant argues that amounts of SiO2 used in the production of the
frit glasses in Taniguchi prevents the reference from reading on claim 6,
because the amount of SiO2 used by Taniguchi significantly exceeds 5
mol%. (See Br. 20.) We are not persuaded.
As discussed in our §102 analysis of claim 1, supra, we find it
reasonable that other materials, such as SiO2 may be mixed with starting (or
“Group A”) materials prior to the first recited heating step of claim 1.
Because claim 6 further limits the composition of “Group A”
materials, but does not limit other materials mixed with the starting (or
“Group A”) materials, the presence of SiO2 does not preclude Taniguchi
from reading on the disputed claim element of claim 6.
Appellant does not dispute the Examiner’s finding that Taniguchi
discloses the use of limited amounts of iron oxide and titanium oxide, i.e.,
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non-outgassing materials in amounts that each constitutes less than 5% by
mole on an oxide basis of a produced final glass composition. (See Ans. 8;
Finding of Fact 11; Taniguchi, col. 5, ll. 12-23.) Accordingly, Appellant has
not persuaded us that the Examiner’s evidence is insufficient to support a
prima facie case of obviousness under 35 U.S.C. § 103(a) for dependent
claim 6.

In summary, we sustain the Examiner’s rejection of claim 3 over
Taniguchi in view of Tooley and the Examiner’s rejection of claims 6, 9-14,
and 19-22 as being obvious over Taniguchi (in view of Official Notice for
claims 6 and 9-10). Because Appellant’s arguments directed to claims 16-18
solely concern the prima facie obviousness of claim 1, and because we have
already determined that claim 1 is anticipated by Taniguchi, we sustain the
Examiner’s rejection of claims 16-18 as being obvious over Taniguchi in
view of Dumbaugh.

ORDER
The decision of the Examiner rejecting 1-6 and 9-22 under
35 U.S.C. § 112, second paragraph is reversed.
The decision of the Examiner rejecting claims 1-2, 4-5, and 11-14
under 35 U.S.C. § 102(b) as being anticipated by Taniguchi is affirmed.
The decision of the Examiner rejecting claim 3 under
35 U.S.C. §103(a) as being unpatentable over Taniguchi and Tooley is
affirmed.
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The decision of the Examiner rejecting claims 6, 9-14, and 19-22
under 35 U.S.C. §103(a) as being unpatentable over Taniguchi (and Official
Notice for claims 6 and 9-10) is affirmed.
The decision of the Examiner rejecting claims 16-18 under
35 U.S.C. §103(a) as being unpatentable over Taniguchi and Dumbaugh 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)(1)(iv).

AFFIRMED-IN-PART

tc

CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831

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