Ex Parte Smith et al

Patent Trial and Appeal Board

May 31, 2016

11760194 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111760, 194 24959 7590 PPG Industries, Inc. IP Law Group One PPG Place 39th Floor Pittsburgh, PA 15272 06/08/2007 05/31/2016 FIRST NAMED INVENTOR Charlene S. Smith 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. 1797Cl 7642 EXAMINER LAZORCIK, JASON L ART UNIT PAPER NUMBER 1741 MAILDATE DELIVERY MODE 05/31/2016 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 CHARLENE S. SMITH and GEORGE A. PECORARO Appeal2014-008368 Application 11/760,194 Technology Center 1700 Before CHUNG K. PAK, KAREN M. HASTINGS, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal 1 under 35 U.S.C. § 134 from the Examiner's decision2 finally rejecting claims 1-8, 11-17, and 19-23. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. To give Appellants a fair and full opportunity to respond, we designate portions of our affirmance as constituting NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 1 Appellants identify the real party in interest as PPG Industries Ohio, Inc. Appeal Brief filed May 1, 2014 ("App. Br."), 2. 2 Final Office Action mailed November 4, 2013 ("Final Act."). Appeal2014-008368 Application 11/760,194 The claims are directed to methods for making float glass with reduced defect density. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A method for making float glass with reduced defect density comprising: melting a glass composition to form a glass melt; and pouring the glass melt into a float glass chamber having a molten metal bath, the float glass chamber comprising: an inlet and an outlet; an upper plenum and a lower plenum, with a horizontal refractory roof separating the upper and lower plenums; a plurality of gas inlets and gas outlets in the upper plenum and lower plenums; and a first chamber section adjacent the inlet and a second chamber section adjacent the first chamber section, wherein an open space between the molten metal bath and the refractory roof is uniform between the first and second chamber sections, wherein the method further includes, delivering a gas to the lower plenum of the first chamber section having less than 1 volume percent hydrogen, and delivering a gas to the lower plenum of the second chamber section having less than 10 volume percent hydrogen, and wherein a temperature of the molten glass in the first chamber section is higher than the temperature of the molten glass in the second chamber section, and molten glass moves along and in contact with the top of molten tin in each of said first chamber section and said second chamber section, and controlling the atmosphere in the first and second chamber sections such that the volume percent of hydrogen in the second chamber section is higher than that in the first chamber section. App. Br. 20 (Claims Appendix) (emphasis added). 2 Appeal2014-008368 Application 11/760,194 REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1-8, 11-17, and 19-23 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; 2. Claims 1, 4--8, 11, and 12 are rejected under 35 U.S.C. § 103(a) as obvious over Taylor (US 3,337,322, issued August 22, 1967); 3. Claims 2, 3, 14--17, 19, and 20 are rejected under 35 U.S.C. § 103(a) as obvious over Taylor in view of Nelson (US 5,364,435, issued November 15, 1994) and Kobayashi et al. (US 6,532,771 Bl, issued March 18, 2003) (hereinafter "Kobayashi"); 4. Claim 13 under 35 U.S.C. § 103(a) as obvious over Taylor in view ofNelson and Landa et al. (US 2002/0059811 Al, published May 23, 2002) (hereinafter "Landa"). Examiner's Answer mailed June 3, 2014 ("Ans."), 2. 3 Rejection 1 Independent claim 1 recites "an open space between the molten metal bath and the refractory roof is uniform between the first and second chamber sections." Independent claims 14 and 20 include a similar recitation. Appellants contend that the Specification (i-f 19) and Figure 1 provide written description support for this recitation. See App. Br. 6-7; see Reply Brief filed August 4, 2014 ("Reply Br."), 2--4. Figure 1 is described in paragraph 18 of the Specification. Figure 1 depicts a float glass chamber with a refractory roof 3 that divides the 3 The rejection of claims 21-23 under 35 U.S.C. § 112, second paragraph was withdrawn in the Examiner's Answer mailed June 3, 2014. Ans. 2. 3 Appeal2014-008368 Application 11/760,194 chamber into an upper plenum 1 and a lower plenum 2. Spec. 18; Fig. 1. The lower plenum contains the glass 4 and the tin 5. Id. A controlled atmosphere is maintained in the chamber via gas inlets 6 and a gas outlet 7. Id. As the Examiner correctly finds, Figure 1 does not depict first and second chamber sections. Ans. 4. Paragraph 19 of the Specification describes hot and cold sections and does not provide any further information regarding the location of the first and second chamber sections within the float chamber. Nor does the Specification ever mention an open space between the first and second chamber sections or that the space is uniform. Accordingly, we sustain the rejection of claims 1-8, 11-17, and 19-23 under 35 U.S.C. § 112, first paragraph. Rejection 2 Appellants argue for patentability of claims 1, 4--8, 11, and 12, subject to the second ground of rejection, as a group. See App. Br. 6-18. Claims 4-- 8, 11, and 12 depend from claim 1. Appellants have not presented substantive arguments for patentability of dependent claims 4--8, 11, and 12, each of which depends from claim 1. Thus, we choose independent claim 1 as representative of this group, and claims 4--8, 11, and 12 stand or fall with claim 1. Appellants argue that the Examiner errs in finding that Taylor teaches or suggests a float gas chamber that includes a second chamber adjacent to a first chamber and "delivering a gas to the lower plenum of the first chamber section having less than 1 volume percent hydrogen, and delivering a gas to the lower plenum of the second chamber section having less than 10 volume percent hydrogen ... wherein a temperature of the molten glass in the first 4 Appeal2014-008368 Application 11/760,194 chamber section is higher than the temperature of the molten glass in the second chamber section," as recited in claim 1. See App. Br. 10-15; see also Reply Br. 5-8. Taylor discloses a method of manufacturing flat glass (1: 10). The apparatus used to manufacture flat glass includes an inlet 21 through which a formed ribbon of glass is delivered to the bath (4:66---69) and an outlet 23 where a cooled ribbon of glass is taken unharmed from the bath (4:9-12). Taylor teaches that a protective atmosphere consisting of 0.5 volume percent hydrogen is fed into the "first" chamber section, adjacent the inlet, via duct 20a ( 4:24--26). 4 Taylor teaches that a protective atmosphere consisting of 5 volume percent hydrogen is fed into the "second" chamber section via duct 20b (4:34--36). The "second" chamber section is adjacent to the "first" chamber section. Thus, the volume percent of hydrogen in Taylor's "second" chamber section is higher than in the "first" chamber section. Taylor further teaches that the temperature at the inlet end of the bath is in order of 1000°C (5:4--5). Taylor teaches that the glass is continually advanced in ribbon form along the bath and is cooled as it is advanced until at the outlet end of the bath, where the temperature is about 600°C, the glass is taken unharmed from the bath ( 5 :40-44 ). This disclosure in Taylor implies that the temperature of the molten glass in the "first" chamber 4 Because the Specification does not define the term "adjacent," we begin by giving the term its broadest reasonable ordinary meaning. One dictionary provides the following definition: "1 a: not distant: nearby [;] b: having a common endpoint or border [;] c: immediately preceding or following." Adjacent, Merriam- Webster.com, http://www.merriam-webster.com/dictionary/adjacent. Thus, we find the broadest reasonable interpretation of the word adjacent is "not distant" or "nearby." 5 Appeal2014-008368 Application 11/760,194 section (at duct 20a) is higher than the temperature of the molten glass in the "second" chamber section (at duct 20b ). We, therefore, are not persuaded that Taylor fails to teach or suggest a float gas chamber that includes a second chamber section adjacent to a first chamber section and "delivering a gas to the lower plenum of the first chamber section having less than 1 volume percent hydrogen, and delivering a gas to the lower plenum of the second chamber section having less than 10 volume percent hydrogen ... wherein a temperature of the molten glass in the second chamber is higher than the temperature of the molten glass in the second chamber," as recited in claim 1 . Appellants next argue that the Examiner errs in finding Nelson teaches or suggests "a plurality of gas inlets and gas outlets in the upper plenum and lower plenum," as recited in claim 1. See App. Br. 16-18; see also Reply Br. 5. Nelson teaches a glass floating chamber 8 with a horizontal roof structure 32 separating the chamber into an upper plenum and a lower plenum (2:42---65; Fig.). Nelson teaches that it is common practice to control the amount of protective gas in the upper and lower plenums of the float gas chamber (1 :35--40). Although Nelson does not disclose a plurality of gas inlets and gas outlets in the upper plenum and lower plenum, Appellants have admitted that it is conventional in the art to maintain the atmosphere in the float glass chamber using gas inlets and gas outlets in the upper plenum and lower plenum. Spec. 17-18; Fig. 1 (described as a conventional float glass chamber). See Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is binding on the applicant and patentee for determinations of 6 Appeal2014-008368 Application 11/760,194 anticipation and obviousness."); see also In re Nomiya, 509 F.2d 566, 570- 71 (CCPA 1975) (Appellants representations in their Specification may be used in determining the patentability of a claimed invention). Even though Figure 1 in Appellants' Specification depicts a single gas outlet in the lower plenum, based on Nelson's teachings, one of ordinary skill in the art reasonably would have been led to include a plurality of gas inlets and gas outlets in either or both of the upper and lower plenums to better control the amount of protective gas along the length of the chamber. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) ("[D]iscovery of an optimum value of a variable in a known process is usually obvious."). We sustain the Examiner's rejection of claims 1, 4--8, 11, and 12, but because our fact finding deviates somewhat from that of the Examiner, we designate such as a new ground of rejection. Rejections 3 & 4 Appellants argue that claims 2, 3, 14--17, 19, and 20 are patentable over Taylor in view of Nelson and Kobayashi, and claim 13 is patentable over Taylor in view of Nelson and Landa for the same reasons that claim 1 is patentable over the combination of Taylor and Nelson. See App. Br. 18. Appellants argue that claims 2, 3, 14--17, 19, and 20 are patentable over Taylor in view of Nelson and Kobayashi, and claim 13 is patentable over Taylor in view of Nelson and Landa for the same reasons that claim 1 is patentable over the combination of Taylor and Nelson. See App. Br. 18. For the same reasons expressed above with respect to claim 1, we sustain the rejection of claims 2, 3, 14--17, 19, and 20 as obvious over the combination of Taylor, Nelson, and Kobayashi, and the rejection of claim 13 as obvious over Taylor, Nelson, and Landa. However, because we rely upon facts and 7 Appeal2014-008368 Application 11/760,194 reasoning that differ from the Examiner, we designate each as a new ground of rejection. DECISION The rejection of claims 1-8, 11-17, and 19-23 under 35 U.S.C. § 112, first paragraph is affirmed. The rejections under 35 U.S.C. § 103(a) of claims 1, 4--8, 11, and 12 over Taylor, claims 2, 3, 14--17, 19, and 20 over Taylor in view ofNelson and Kobayashi, and claim 13 over Taylor in view of Nelson and Landa are affirmed. Because our affirmance of these rejections relies upon finding of fact and reasoning that differ from the Examiner, we designate our affirmance of these rejections as constituting new grounds of rejection. In addition to affirming the Examiner's rejections of one or more claims, this decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 CPR§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... 8 Appeal2014-008368 Application 11/760,194 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(l) provides "[a]ppellant may file a single request for rehearing within two months from the date of the original decision of the Board." If the appellant elects prosecution before the examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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; NEW GROUNDS OF REJECTION PURSUANT TO 37 C.F.R. § 41.50(b) 9