Ex Parte Polcyn et al

Patent Trial and Appeal Board

Feb 28, 2017

13072866 (P.T.A.B. Feb. 28, 2017)

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.
09006598A1 6915
EXAMINER
COLGAN, LAUREN ROBINSON
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
13/072,866 03/28/2011
144411 7590 0:
Vitro Flat Glass LLC
Legal - IP
400 Guys Run Road
Cheswick, PA 15024
Adam D. Polcyn
02/28/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM D. POLCYN,
ANDREW V. WAGNER, HARRY BUHAY, ABHINAV BHANDARI,
JAMES J. FINLEY, PAUL R. OHODNICKI JR.,
DENNIS J. O’SHAUGHNESSY, JEFFREY A. BENIGNI,
PAUL A. MED WICK, and JAMES P. THIEL
Appeal 2015-007335
Application 13/072,866
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4, 13, 14, 18, and 19 of
Application 13/072,866 under 35 U.S.C. § 102(b) as anticipated. Final Act.
(May 30, 2014). The Examiner also rejected claims 2, 3, 5—12, 15, 16, and
18—20 under 35 U.S.C. § 103(a) as obvious. Id. Appellants1 seek reversal
1 PPG Industries Ohio, Inc. is identified as the real party in interest. Appeal
Br. 2.
Appeal 2015-007335
Application 13/072,866
of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’886 Application describes solar control coatings. Spec. 12.
Such coatings reduce the amount of solar energy entering a vehicle or
building equipped with windows made from a coated transparent material by
blocking or filtering selected ranges of electromagnetic radiation. Id. 13. In
particular, the Specification describes a solar control coating having
increased absorbance and asymmetrical reflectance. Id. 12.
Claim 1 is representative of the ’886 Application’s claims and is
reproduced below from the Claims Appendix:
1. A coated article, comprising:
a substrate;
a coating stack over at least a portion of the substrate, the
coating stack comprising a first dielectric layer over at least a
portion of the substrate, a subcritical metallic layer having a
discontinuous metallic region over at least a portion of the first
dielectric layer, a primer layer over at least a portion of the
subcritical metallic layer, and a second dielectric layer over at
least a portion of the primer layer.
Appeal Br. 8 (emphasis added).
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Application 13/072,866
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 13, 14, 18, and 19 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Nakamura2 as evidenced by
thefreedictionary.com.3 Final Act. 2.
2. Claims 2, 16, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nakamura as evidenced by
thefreedictionary.com. Final Act. 4.
3. Claims 3, 5—12, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Nakamura and Thielsch4 as
evidenced by thefreedictionary.com. Final Act. 6.
DISCUSSION
Appellants state: “The issue to be decided on appeal is whether
Nakamura teaches the recited primer layer. The claims each require a
‘primer layer’ or a ‘first primer layer.’” Appeal Br. 4. In view of
Appellants’ position, we limit our discussion to claim 1 with the
understanding that our analysis applies equally to claims 2—16 and 18—20.
In rejecting claim 1, the Examiner found that
Nakamura does not explicitly recite a “primer layer” as
claimed, however, applicants do not define what is meant by
primer layer. As such, any material that could be reasonably
considered to be a primer would meet the claim. In the instant
2 JP 2001-353810, published December 25, 2001.
3 primer—definition of primer by the Free Online Dictionary, Thesaurus and
Encyclopedia, thefreedictionary.com,
http://www.thefreedictionary.com/primer (accessed May 22, 2014).
4 US 2007/0242359 Al, published October 18, 2007.
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Application 13/072,866
case, a primer is defined as a substance applied to a surface to
act as a base, etc. or even as an undercoat used to prepare a
surface (see thefreedictionary.com). As shown above,
Nakamura has four layers present between the metal layer and
second dielectric and not only do each of these layers function
as a base for the second dielectric but they are each an
undercoat prepared surface for the second dielectric. For these
reasons, each of Nakamura's four layers are considered to be
“primer layers” in as much as the term has been defined.
Final Act. 2—3.
The Examiner further concluded that
In the instant case, a primer is defined as a substance
applied to a surface to act as a base, etc. or even as an undercoat
used to prepare a surface (see thefreedictionary.com). It was
discussed in the above action that Nakamura clearly teaches
layers in the orientation claimed that act as a base or underlayer.
As such, applicants' limitation of a primer in the majority of
their claims is considered to be met by Nakamura.
Id. at 13.
Appellants argue that the Examiner misconstrued the term “primer.”
See Appeal Br. 4—5 (citing Spec. Tflf 38—39). In particular, Appellants argue
that a person having ordinary skill within the relevant art would understand a
primer layer to be a layer that captures oxygen during the deposition process
to prevent degradation or oxidation of other layers in the multilayer solar
control stack. Id. at 4; see also Reply Br. 3 (“[A] person having ordinary
skill in the art] would understand the claim term to mean that the primer
must be an oxygen capturing material.” (emphasis added)). Relying upon
this interpretation, Appellants argue that Nakamura’s metal oxide layers
cannot be the claimed “primer layer” because, being already oxidized, they
cannot absorb oxygen. Appeal Br. 6.
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Application 13/072,866
We are not persuaded by Appellants’ argument. The portion of the
Specification upon which they rely reads, in relevant part:
A first primer layer 48 is located over the first reflective
layer 46. The first primer layer 48 can be a single film or a
multiple film layer. The first primer layer 48 can include an
oxygen-capturing material that can be sacrificial during the
deposition process to prevent degradation or oxidation of the
first reflective layer 46 during the sputtering process or
subsequent heating processes. The first primer layer 48 can
also absorb at least a portion of electromagnetic radiation, such
as visible light, passing through the coating 30. Examples of
materials useful for the first primer layer 48 include titanium,
silicon, silicon dioxide, silicon nitride, silicon oxynitride,
nickel-chrome alloys (such as Inconel), zirconium, aluminum,
alloys of silicon and aluminum, alloys containing cobalt and
chromium (e.g., Stellite®), and mixtures thereof.
Spec. 139 (emphasis added).
As the Examiner correctly concluded, this portion of the Specification
does not define the terms “primer” or “primer layer.” See, e.g., Answer 13.
Furthermore, contrary to Appellants’ position, the Specification does not
require the primer to be an oxygen-capturing material. Rather, it merely
states that the primer might be such a material.
Because we disagree with Appellants’ claim interpretation, we do not
discern reversible error in the Examiner’s rejection of claim 1. Thus, we
affirm the rejection of claims 1—16 and 18—20.
CONCLUSION
For the reasons set forth above, we affirm the Examiner’s rejection of
claims 1—16 and 18—20 of the ’886 Application.
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Application 13/072,866
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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