Ex Parte Ruedinger et al

Patent Trial and Appeal Board

May 11, 2017

13288064 (P.T.A.B. May. 11, 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.
13/288,064 11/03/2011 Bernd Ruedinger 0008025USU/4422B 2587
27623 7590 05/11/2017
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
05/11/2017 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 BERND RUEDINGER, FRIEDRICH SIEBERS,
GERHARD LAUTENSCHLAEGER, and MATTHIAS BAESEL
Appeal 2016-003508
Application 13/288,064 1
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 1—4, 7, 8, and 20—27 of Application
13/288,064 under 35 U.S.C. § 103(a) as obvious. Appellants seek reversal
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 ’064 Application describes a method of ceramicizing a floated
glass in an atmosphere comprising water vapor in an amount of 3% by
1 Schott AG is identified as the real party in interest. Appeal Br. 1.
Appeal 2016-003508
Application 13/288,064
volume or higher and/or molecular hydrogen in an amount of 2% by volume
or higher to obtain glass ceramic material with high stability. Spec, H 2, 16;
Appeal Br. 2. Glasses of the system L^O-ACCh-SiCC in particular are
known to be converted into glass ceramics (LAS glass ceramics) by
controlled crystallization. Spec. 13. Li+ ion is incorporated in the glass
ceramic in a high percentage rate, changing the crystal properties and the
coefficient of thermal expansion, causing stress, and resulting in cracks
leading to substantial lowered surface strength of the glass ceramic. Id. ^ 8.
During crystallization of the glass, the non-crystallized surface layer has a
considerably higher coefficient of thermal expansion compared with the
predominantly crystallized interior zone. Id. 1 12. According to the
Specification, “[t]he influence of a forming gas atmosphere in the floating
bath onto the later microstructure of the glass ceramic has not yet been
described in literature.” Id. 114.
Claim 1 is representative of the ’064 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief
(paragraphing added):
1. A method for the ceramicization of a float glass,
comprising:
ceramicizing the float glass to provide a glass ceramic in an
hydrogen containing atmosphere,
wherein the atmosphere comprises water vapor and/or molecular
hydrogen,
wherein hydrogen is present in the atmosphere in an amount
higher than or equal to 3 % by volume when the atmosphere
comprises water vapor or is present in an amount higher than or
equal to 2 % by volume when the atmosphere comprises
molecular hydrogen,
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Application 13/288,064
wherein the float glass has upper and lower surfaces that are
exposed to the atmosphere during the ceramicizing in such a way
that a first Li depleted layer at the upper surface and a second Li
depleted layer at the lower surface are formed,
wherein the glass ceramic is an LAS glass ceramic, and
wherein the first and second Li depleted layers have a thickness
of less than 2000 nm.
Id. at 11.
REJECTIONS
On appeal, the Examiner maintains the following rejections:2
1. Claims 1—4, 7, 8, 20, and 21 are rejected under 35 U.S.C. § 112,
12 as being indefinite in using the term “Li depleted layer.” Final
Act. 3.
2. Claims 1—3, 7, 8, and 20-24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Emsberger,3 Pilkington,4
Yamada,5 and Appellants’ Admitted Prior Art (AAPA).6 Final
Act. 6.
2 The rejection of claims 1—4, 7, 8, 20, and 21 under 35 U.S.C. § 112,12 as
being indefinite for using the term “and/or” (Final Act. 2) stands withdrawn
by the Examiner. Ans. 2.
3 US 3,756,798, issued Sept. 4, 1973.
4 US 3,083,551, issued Apr. 2, 1963.
5 US 6,358,869 Bl, issued Mar. 19, 2002.
6 Spec. 14. Final Act. 6.
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Application 13/288,064
3. Claims 4 and 25—27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Emsberger, Pilkington,
Yamada, AAPA, and Pirooz.7 Final Act. 10.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—4, 7, 8, 20, and 21
under 35 U.S.C. § 112,12, as being indefinite for using the term “Li
depleted layer.” Final Act. 3. The Examiner finds that the term is unclear
because (1) it reads on layers where there is no Li depletion if it is defined as
“a nearly completely glassy (thus amorphous) surface region adjacent to the
predominately crystalline interior zone of the glass ceramic” as stated in 124
of the Specification, with no mention of depletion and lithium in the
definition, and (2) 15 of the Specification, on the other hand, suggests that
“some of the lithium is absent” such as described in Yamada. Final Act. 3.
Appellants contend that the ordinary and customary meaning of
depletion of lithium is “a lower or depleted concentration of lithium” and
layer means the layers described in paragraph 24 of the Specification. App.
Br. 6. Appellants argue that paragraph 5 of the Specification describes
Yamada’s lithium depleted region, which the source document states is a
result of “reducing the Li+ concentration on the surface of a crystallized
glass as compared with the inside.” Id. (citing Yamada 2:1—8). Paragraph
24 of the Specification, on the other hand, Appellants contend, describes
layers having depleted lithium. Id. (quoting Spec. 124 “the term Li depleted
layer means a nearly completely glassy (thus amorphous) surface region
7 US 3,779,856, issued Dec. 18, 1973.
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Application 13/288,064
adjacent to the predominantly crystalline interior zone of the glass
ceramic.”).
The Examiner responds that because paragraph 5 does not include the
term “region” within quotes along with “lithium depleted,” the description in
paragraph 5 explains what “lithium depleted” means, but is not limited to
regions. Ans. 12—13. The Examiner also finds that “the normal and
customary meanings of claim terms are generally not applicable when an
applicant is acting as their own lexicographer” implying that the inventors
chose to be their own lexicographers of the term “lithium depleted layer” in
paragraph 24 of the Specification. Id. at 12. The Examiner further finds that
paragraph 24, makes no mention of depleted lithium or that it must be
depleted of lithium. Id. at 13.
In the Reply Brief, Appellants assert that “layer” is not amenable to a
reasonable constmction other than the layers described in paragraph 24 and
that “depletion” is not amenable to a definition other than its normal and
customary meaning as reflected in paragraph 5. Reply Br. 2.
We agree with Appellants that the broadest reasonable interpretation
of “lithium depleted layer” is a surface layer having a lower or depleted
concentration of lithium. The definiteness of a claim depends on whether
one skilled in the art would understand the bounds of the claim when read in
light of the specification. Howmedica Osteonics Corp. v. Tranquil
Prospects, Ltd., 401 F.3d 1367, 1371 (Fed. Cir. 2005). Paragraph 5 of the
Specification precedes paragraph 24 and explains, in the context of the prior
art ceramicized float glass, what lithium depleted means. Paragraph 24 then
describes the location, thickness, and appearance of its layers that are lithium
depleted, i.e. on the floating upper side opposite the floating bath (also the
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Application 13/288,064
lower side), having a thickness lower than 2000 nm, and being completely
glassy (amorphous).
As noted by the Examiner (Final Act. 4), the USPTO “employ[s] a
lower standard of ambiguity when reviewing a pending claim for
indefmiteness than those used by post-issuance reviewing courts.” Ex parte
Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential). However,
under that lower standard, we do not find that paragraphs 5 and 24 create an
ambiguity in the term “lithium depleted layer” merely because paragraph 24
does not carry over or repeat the meaning of lithium depleted already
expressed in paragraph 5. As the Examiner observes, if paragraph 24 is
setting forth a definition for the term “Li depleted layer” that does not
include lithium depletion, then it would “suggest [a] very different thing[]”
from paragraph 5 which suggests that lithium depleted “means that some of
the lithium is absent such as described in [Yamada].” Ans. 3. Such a
definition for the claim term would not be reasonable in view of the
Specification, specifically when read in context with paragraph 5.
Furthermore, the claims all require the presence of lithium (i.e., the glass
ceramic is an LAS glass ceramic (as defined in Spec. 13)), which also
provides context for a lithium depleted layer.
Therefore, in light of the Specification as a whole, the claim term
“lithium depleted layer” is not indefinite. Accordingly, we reverse the
rejection of claims 1—4, 7, 8, 20, and 21 under 35 U.S.C. § 112,12.
At the same time, however, because independent claims 1 and 20 do
not recite a lower limit for the thickness of the lithium depleted layer, the
affirmatively recited “lithium depleted layer” requires no measurable or a de
minimis thickness.
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Application 13/288,064
We further find, as discussed below, that the Examiner’s construction
of the term for purposes of the prior art rejections not to be harmful error.
Rejections 2 and 3. The Examiner rejected claims 1—3, 7, 8, and 20-
24 under 35 U.S.C. § 103(a) for the reasons stated on pages 6—10 of the
Final Action. The Examiner’s rejection of claims 4 and 25—27 under 35
U.S.C. § 103(a) additionally relies on the disclosure in Pirooz that a mixture
of hydrogen and nitrogen can be used instead of steam for nucleating glass
bodies and that such mixtures are commercially available for making the
same glass type as Emsberger. Final Act. 10-11.
Appellants argue the claims as a group. App. Br. 7. In accordance
with 37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments
directed to the subsidiary rejection, claims 2—4, 7,8, and 20-27 will stand or
fall together with independent claim 1.
Appellants contend that the Examiner erred in combining the
teachings of Emsberger with Yamada because Emsberger’s ceramicizing
method is not a float glass method and requires a stmcture with a crystalline
surface and an interior with crystals of substantially uniform composition
throughout. App. Br. 8. According to Appellants, because Emsberger
discloses a crystalline surface, it teaches away from lithium depleted layers
and amorphous regions (id.) and any modification of its crystalline surface
would make it unsuitable for its intended purpose (id. at 9). Appellants also
contend that a skilled artisan would not look to Emsberger to improve upon
a float glass process because Emsberger teaches a different process and none
of the problems associated with such a process. Id. at 8.
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According to Appellants, Yamada, on the other hand, uses a float
glass process for ceramicizing, but describes reducing microcracks in
crystallized glass when exposed to an H2SO4 containing atmosphere and
does not disclose reducing cracks during the cool-down period of the
ceramicization process. Id. at 9. Appellants further argue that the
combination of Emsberger and Yamada “teaches the skilled person away
from the specific atmosphere claimed in favor of a specific temperature
regime.” Id. (emphasis omitted). Appellants further contend that AAPA,
Pilkington, and Pirooz do not cure the deficiencies of the Emsberger and
Yamada combination because AAPA describes Yamada, Pilkington “fails to
teach or suggest any ceramicization,” and Pirooz discloses the use of
hydrogen and nitrogen in conventional glass of the same type as Emsberger.
Id. at 9—10.
For purposes of the prior art rejections, the Examiner constmes the
term “lithium depleted layer” as not requiring a depletion step. Ans. 12
(“the claims do not refer to ‘depletion’ and the rejection is not based on the
term ‘depletion.’”). The Examiner also responds that the combination of the
rejection relates to improving the Emsberger process, therefore it is not
relevant that Emsberger does not disclose using a float glass or that one
would have looked to Emsberger to improve a float glass process such as
Yamada. Id. at 13. Regarding the crystalline surface of Emsberger, the
Examiner “fails to see how this or any other portion of Emsberger
criticize[s], discredits], or otherwise discourage[s] the invention or the
combination.” Id. at 14. The Examiner finds that “Emsberger clearly
indicate[s] that one can have an ‘uncrystallized . . . surface region’ and that
this may be a problem if it results in tension at the surface.” Id. (citing
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Emsberger 5:58—63). The Examiner further finds that it would be
understood from Emsberger that “one would be free to have an amorphous
(i.e. non-crystalline) surface as long as it is not in tension.” Id. Because
Emsberger desires resistance to cracks and Yamada is directed to
eliminating cracks, the Examiner finds that the modification of Emsberger
with Yamada would not make Emsberger unsuitable for its purpose. Id.
The Examiner also responds that the claims do not recite any purported
solution or associated problem to distinguish the cited prior art and that,
while a specific temperature may be an obvious modification, it is not the
basis for the rejection. Id. at 14—15.
In the Reply Brief, Appellants argue that the positively recited step of
“ceramicizing the float glass,” when properly constmed in the independent
claims, is patentable over the cited prior art. Reply Br. 2—\. Specifically,
Appellants contend that the Examiner erred in looking at portions of each
reference in a vacuum without consideration of the teachings as a whole
because (1) Emsberger does not suggest an improvement upon a float glass
process and (2) the Examiner’s proposed modification of Emsberger to
provide the surface required by the claims, rather than a crystalline surface
and uniform composition throughout, would not be suitable for Emsberger’s
purpose. Id. at 4.
We find Appellants’ arguments unpersuasive of reversible error. As
discussed above in connection with the indefmiteness rejection based on the
term “lithium depleted layer” recited in independent claims 1 and 20, we
agree with Appellants that the broadest reasonable interpretation of “lithium
depleted layer” is a surface layer having a lower or depleted concentration of
lithium, however, the independent claims require no minimum thickness for
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the lithium depleted layer. Similarly, independent claims 22 and 25, which
recite first and second “nearly completely amorphous region[s]” at the upper
and lower surfaces, likewise recite “a thickness of less than 2000 nm” with
no minimum thickness for the claimed regions.
Appellants do not dispute that Emsberger’s Example 1 explicitly
discloses ceramicizing an LAS glass in the atmosphere of hydrogen in an
amount higher than or equal to 3% when the atmosphere comprises water
vapor as required by claim 1 (Final Act. 6; Emsberger 9:15—32). In
addition, Appellants do not dispute that Pilkington discloses advantages of
using a float process for glass ceramic processes, namely to eliminate the
need to grind the glass and to accelerate the speed of making the glass plates
(Final Act. 6; Pilkington 8:29-34). Appellants also do not dispute that both
Emsberger and Yamada disclose ceramicizing an LAS glass and that
Emsberger and Yamada each disclose resisting or eliminating cracks in a
glass ceramic (Ans. 14). Moreover, Appellants do not dispute that Yamada
teaches that the occurrence of microcracks is “easily suppressed” in
conditions where “the Li+ concentration at the surface is lowered and the
crystal amount at the surface is reduced” (Final Act. 7; Yamada 3:12—14).
Therefore, the Examiner’s further combination of Emsberger and Pilkington
with Yamada for the reason of improving the ceramicization of an LAS
glass by resisting or eliminating cracks (Final Act. 7; Ans. 14) is supported
by the record.
The problem with Appellants’ arguments against the combination,
that Emsberger either teaches away or would be rendered unsuitable, is that
these arguments are based on Emsberger’s theory of how its moist
atmosphere improves the surface of the ceramicized glass. Emsberger
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discloses “retardation of crystallization at the surface may have serious
consequences if the crystallization is accompanied by a decrease in thermal
expansion coefficient” (Emsberger 5:57—60, emphasis added). Emsberger
“theorizefs] . . . that the moist furnace atmosphere required for the practice
of [its] invention has the effect of preventing” the generation of cracks on
the surface by preventing the surface retardation of crystallization. (Id. at
5:66—71, emphasis added). The theories of Emsberger predate the
disclosure of Yamada by almost thirty years. Appellants do not explain
adequately why a person having ordinary skill in the art would be led in a
divergent path from lowering the lithium ion concentration at the surface, as
taught by Yamada, in view of Emsberger’s theoretical explanation for the
benefit of the moist atmosphere decades beforehand. In re Gurley, 27 F.3d
551, 553 (Fed. Cir. 1994). Therefore, the preponderance of the evidence in
the cited record on appeal supports the Examiner’s decision to reject claim 1
under 35 U.S.C. § 103(a).
In view of the foregoing, we affirm the Examiner’s rejections of
claims 1—4, 7, 8, and 20—27 under 35 U.S.C. § 103(a).
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—4,
7, 8, 20, and 21 under 35 U.S.C. § 112,12, and we affirm the rejections of
claims 1—4, 7, 8, and 20-27 under 35 U.S.C. § 103(a).
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).
AFFIRMED
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