Ex Parte Sharma et alDownload PDFPatent Trial and Appeal BoardAug 26, 201613349029 (P.T.A.B. Aug. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/349,029 01112/2012 23117 7590 08/30/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Pramod K. SHARMA 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. JAR-3691-2560 5895 EXAMINER MELLOTT, JAMES M ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 08/30/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PRAMOD K. SHARMA and NATHAN P. MELLOTT Appeal2015-001615 Application 13/349,029 Technology Center 1700 Before PETER F. KRATZ, CHRISTOPHER L. OGDEN, and MICHAEL G. MCMANUS, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1, 2, 4, 5, 8, 9, and 19. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a method of producing a coated article including disposing a single-layer UV-reflective coating on a substrate either directly or indirectly and disposing a photocatalytic layer, such as a layer containing titanium dioxide, over the UV-reflective coating. According to Appellants, "a coating may be considered 'on' and 'supported by' a surface even if other layer(s) are provided between [coating] layer(s) and the substrate" (Spec. i-f 30). Claim 1 is illustrative and reproduced below: Appeal2015-001615 Application 13/349,029 1. A method of making a coated article, the method compnsmg: disposing a single-layer UV-reflecting coating, directly or indirectly, on a substrate to be coated; and disposing a photocatalytic layer over the UV-reflecting coating, wherein the photocatalytic layer is configured to absorb at least some incident UV light, and at least some of any UV light that is not initially absorbed in the activation of the photocatalytic layer and otherwise would pass into the substrate is reflected back towards the photocatalytic layer by the UV- reflecting coating, wherein the coated article has a visible transmission of at least about 90%. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Hood Simmons, Jr. (Simmons) Hildenbrand Krisko us 5,071,206 US 6,154,311 A US 6,906,463 B2 US 2007 /0264494 A 1 Dec. 10, 1991 Nov. 28, 2000 Jun. 14,2005 Nov. 15, 2007 The Examiner maintains the following grounds of rejection: Claims 1, 2, 4, 5, 8, 9, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Simmons in view of Krisko, Hood and Hildenbrand or, in the alternative, over Krisko in view of Simmons, Hildenbrand and Hood. After review of the opposing positions articulated by Appellants and the Examiner and the evidence of obviousness applied by the Examiner, we determine that the Appellants' arguments are insufficient to identify reversible error in the Examiner's obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). 2 Appeal2015-001615 Application 13/349,029 Accordingly, we affirm the stated obviousness rejections for substantially the fact findings and the reasons set forth by the Examiner in the Examiner's Answer and in the Final Office Action. We offer the following for emphasis only. Concerning the Examiner's rejection of the appealed claims under 35 U.S.C. § 103 (a) as being unpatentable over the combined teachings of the applied prior art regardless of the differences in the order of the four applied references in the two stated rejections, Appellants argue the rejected claims together as a group with the exception of claims 8, 9, and 19. Accordingly, we select claim 1 as the representative claim on which we decide this appeal as to both grounds of rejection as to claims 1, 2, 4, and 5. We consider claims 8, 9, and 19 separately to the extent separate substantive arguments are presented. Concerning the rejection as to representative claim 1 over Simmons in view of Krisko, Hood and Hildenbrand, Appellants argue that Simmons is directed to a multi-layer dielectric combiner including a plurality of deposited alternating layers of different indices of refraction so as to furnish the requisite UV reflectivity for its purposes (App. Br. 9-1 O; Reply Br. 2--4; Simmons, col. 5, 11. 22--47). Appellants urge that one of ordinary skill in the art would not have been led to employ a single-layer approach or arrangement of a UV reflective under-layer corresponding to the requirements of representative claim 1 in Simmons notwithstanding the additional teachings of Hildenbrand because such a modification as proposed by the Examiner would have changed the principle of operation of Simmons and there would have been no reason for one of ordinary skill in 3 Appeal2015-001615 Application 13/349,029 the art to pursue the proposed modification (App. Br. 11-12; Reply Br. 4---6; see Final Act. 6). Moreover, Appellants contend that Hildenbrand is drawn to a different field of endeavor (UV reflective coating layer for use on a discharge lamp) than Simmons, and that Hildenbrand is directed to solving a different problem (good UV reflection properties and good visible light transmission properties for its lamp) than Simmons is directed to (plural layers having refractive indexes adequate to furnish light reflecting properties) (App. Br. 13-14; Reply Br. 5---6; Hildenbrand, col. 2, 11. 8-15; Simmons, col. 4, 11. 17- 20). Furthermore, Appellants maintain that while Simmons and the additionally applied Krisko may teach or suggest using a photocatalytic coating for a window/windshield, Krisko does not explicitly discuss furnishing UV reflective properties for its coating as Simmons is directed to (App. Br. 12-13; Reply Br. 6-7). Accordingly and from Appellants' perspective, one of ordinary skill in the art would not look to Hildenbrand for a UV reflective layer that could be employed in Simmons as an alternative to the plural UV reflective layers of Simmons based on the combined teachings of Simmons, Krisko, and Hildenbrand (App. Br. 14; Reply Br. 6-7). These arguments do not persuade us of substantive error in the Examiner's first stated obviousness rejection of representative claim 1 substantially for reasons as set forth by the Examiner in the Final Office Action and in the Examiner's Answer (Final Act. 4---6, 13-15; Ans. 5-11). In this regard, Appellants do not specifically dispute the Examiner's determination that Simmons teaches or suggests that its UV reflective photocatalytic dielectric combiner includes a substrate, a reflecting layer 4 Appeal2015-001615 Application 13/349,029 including a plurality of alternating dielectric layers for reflecting UV light and transmitting other light, and a photocatalytic layer disposed over the UV reflective (dielectric layers) layer, wherein the substrate can be a window (Final Act. 4; Simmons, claim 1, col. 1, 11. 5-20, col. 2, 11. 22-23, col. 2, 1. 66-col. 3, 1. 29; col. 3, 1. 65---col. 4, 1. 25, col. 4, 11. 43--46). Moreover, the thrust of Appellants' argument appears to be hinged on a construction of representative claim 1 that would exclude other UV reflective coating layers by the "disposing a single-layer UV-reflecting coating" step of claim 1. However, the argument to the extent it is based on such a narrow claim construction is unavailing. This is because the method of claim 1 is not so limited given the open "comprising" language and the full recitation of the aforementioned disposing step of claim 1, which step provides for other layers being present by the "directly or indirectly, on a substrate" recitation therein. In this regard, the Specification is consistent with a broadest reasonable construction of claim 1 that is open to the inclusion of other layers being disposed, including other layers that may have UV-reflecting characteristics (Spec. i-fi-127, 30, 31). Also and for reasons set forth by the Examiner and above, the visible light transmissivity and UV-reflective characteristics of the UV reflective layer taught by Hildenbrand are reasonably pertinent to the combiner of Simmons and its method of preparation given that Simmons reasonably suggests making a combiner having UV light reflective and visible light transmission properties as maintained by the Examiner (Ans. 9-11 ). Moreover, we concur with the Examiner that it would have been obvious to one of ordinary skill in the art to form the combiner of Simmons with visible light transmission properties such that it would be suitable for a 5 Appeal2015-001615 Application 13/349,029 window or windshield application and, in so doing, arrive at a visible light transmission property of at least about 90 percent based on the combined teachings of the applied references, including Hood, which latter reference evinces that a normal incident visible light transmission property of at least 70 percent is required for an automobile windshield (Final Act. 5; Hood, col. 2, 11. 27-30). Concerning this latter obviousness determination of the Examiner, we observe that Appellants' argument to the effect that Hood is directed to a Fabry-Perot interference filter is off the mark given that the Examiner relies on Hood for its disclosure of a minimum visible light transmission standard for an automobile windshield, a determination which is not refuted by Appellants' argument (App. Br. 14--15; Reply Br.7-8; see Ans. 11-12). Regarding Appellants' additional argument presented with respect to dependent claims 8 and 9, and independent claim 19, we concur with the Examiner that the applied prior art would have reasonably suggested a UV- reflective coating that has the capability of reflecting at least 90 percent of any light useful for the photocatalytic surface layer of Simmons (App. Br. 16-18; see Final Act. 7, Simmons, col. 5, 11. 52-57; Ans. 9, 10, 12). In this regard, we observe that Appellants identify the UV-reflective coating taught by Hillenbrand (U.S. Patent No. 6, 906,463) as a useful prior art coating for their article underlayer (Spec. i-f 26). Consequently, Appellants' argument is insufficient to expose reversible error in the Examiner's first stated obviousness rejection. Accordingly, we shall sustain the Examiner's rejection of the appealed claims under 35 U.S.C. § 103(a) as being unpatentable over Simmons in view of Krisko, Hood and Hildenbrand. 6 Appeal2015-001615 Application 13/349,029 For substantially similar reasons and those set forth by the Examiner in the Final Office Action and in the Answer, Appellants' corresponding argument presented against the Examiner's second stated rejection is insufficient to identify reversible error in the Examiner's second stated obviousness rejection over the same combination of references, wherein the references were applied in a different order. Hence, we shall likewise sustain the Examiner's second rejection of the appealed claims under 35 U.S.C. § 103(a) as being unpatentable over the same reference combination albeit expressed, in the alternative, as over Krisko in view of Simmons, Hildenbrand and Hood. CONCLUSION The Examiner's decision to reject the appealed claims 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation