Ex Parte Wang

Patent Trial and Appeal Board

Apr 16, 2013

11452418 (P.T.A.B. Apr. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte YEI-PING WANG
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Appeal 2010-009983
Application 11/452,418
Technology Center 2800
____________

Before BRUCE R. WINSOR, BARBARA A. BENOIT, and
DANIEL N. FISHMAN, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-5, 8, 12, and 15, which constitute all the claims pending in the
application. Claims 6, 7, 9-11, 13, and 14 have been withdrawn from
consideration, and claims 16-18 have been cancelled. App. Br. 5. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellant’s invention relates to a method of making a mirror, which
may be used, for example, in a solar collector. See generally Abstract;
Spec. ¶ 0002, Fig. 15. Claim 1 is illustrative and reads as follows, with a
key limitation emphasized:
1. A method of making a mirror, the method comprising:
providing a flat glass substrate;
forming a mirror coating on the flat glass substrate, the mirror coating
including a reflective layer and an uppermost film comprising at least one of
tin oxide and silane(s);
after the mirror coating has been formed on the flat glass substrate,
bending the glass substrate together with the coating thereon into a desired
bent shape, the bending being performed when the glass substrate is at a
temperature of no more than about 200 degrees C; and
maintaining the glass substrate and the coating thereon in substantially
the desired bent shape by using a plate that is laminated to the glass substrate
using a polymer based glue layer, so that the polymer based glue layer
directly contacts the uppermost film of the mirror coating which comprises
at least one of tin oxide and silane(s), so that at least the polymer based glue
layer and the mirror coating are provided between the glass substrate and the
plate.
The Rejections
1. The Examiner rejected claims 1-5, 8, 12, and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Kushibashi (JP 57-198403; published Dec. 6,
1982), Jenkinson (US 5,745,291; issued Apr. 28, 1998), and Komiyama (US
5,847,889; issued Dec. 8, 1998). Ans. 3-4.
2. The Examiner also rejected claims 1-5, 8, 12, and 15 under 35
U.S.C. § 103(a) as unpatentable over Fujiwara (JP 59-72401; published
Apr. 24, 1984), Kushibashi, Jenkinson, and Komiyama. Ans. 4-6.

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ISSUES
The Examiner finds that the combination teaches or suggests all of the
limitations of illustrative claim 1, including “the polymer based glue layer
directly contacts the uppermost film of the mirror coating which comprises
at least one of tin oxide and silane(s)” limitation. Ans. 3-4. In particular, the
Examiner relies on Kushibashi as teaching a mirror with a mirror or
reflective coating that includes a reflective layer and an uppermost film, but
not explicitly stating that the uppermost film includes tin oxide or silanes.
Ans. 3. For the feature of the uppermost file including tin oxide or silanes,
the Examiner relies on Jenkinson in concluding it would have been obvious
to modify the uppermost film of Kushibashi to include Jenkinson’s tin oxide
or silanes. Ans. 3-4. The Examiner relies on Komiyama for teaching the
use of polymer based glue layers as an adhesive material in concluding it
would have been obvious to modify the adhesive layer of Kushibashi with
Komiyama’s polymer based glue layer material. Ans. 4.
Appellant contends that none of the applied references individually
teach or suggest a mirror having a “polymer based glue layer [that] directly
contacts the uppermost film of the mirror coating which comprises at least
one of tin oxide [or] silane(s),” as required by claim 1. App. Br. 13-15;
Reply Br. 4, 6. Appellant further contends that the Examiner’s combination
of the references is improper because (1) Appellant has provided evidence of
unexpected results sufficient to rebut the Examiner’s prima facie showing of
obviousness (App. Br. 14-15; Reply Br. 2-3); and (2) the references teach
away from the combination (App. Br. 13-14; Reply Br. 3-4). Other
arguments by Appellant are addressed in the analysis below.
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The issues presented by this appeal are as follows:
1. Under § 103, is Appellant’s evidence of unexpected results
sufficient to rebut the Examiner’s prima facie showing of obviousness
regarding claim 1?
2. Under § 103, is the Examiner’s reason to combine the teachings of
Kushibashi, Jenkinson, and Komiyama supported by articulated reasoning
with some rational underpinning to justify the Examiner’s obviousness
conclusion? This issue turns on whether the references teach away from the
combination.

ANALYSIS
On the record before us, we are not persuaded of error in the
Examiner’s conclusion that claim 1 would have been obvious in light of the
respective teachings of Kushibashi, Jenkinson, and Komiyama.
First, we are not persuaded that Appellant’s evidence of unexpected
results is sufficient to rebut the Examiner’s prima facie showing of
obviousness. Appellant is correct that a failure of the Examiner to consider
Appellant’s proffered evidence of unexpected results would be error. App.
Br. 11-12; see also Stratoflex, Inc. v. Aeroequip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983) (indicating evidence of secondary considerations must
always be considered when making a determination of obviousness). In
response to Appellant’s argument (App. Br. 13-15) that the Examiner failed
to consider the evidence of unexpected results, however, the Examiner
explicitly indicates that the proffered evidence is insufficient to rebut the
prima facie showing of obviousness (Ans. 7). Although failure to consider
proffered evidence of unexpected results is error, secondary considerations
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when present are not always dispositive. See Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1372 (Fed. Cir. 2007) (stating “[a]lthough secondary
considerations must be taken into account, they do not necessarily control
the obviousness conclusion”).
The question before us, then, is whether the evidence offered by
Appellant is sufficient to rebut the Examiner’s showing of obviousness.
Appellant points to paragraphs 57 and 58 of the Specification as evidencing
unexpected results of the superior results of adhesive strength and durability
when the polymer based glue layer directly contacts the uppermost film of
the mirror coating that includes tin oxide or silanes. App. Br. 15; Reply Br.
2-3. The Specification states:
The mirror coating 10 of the Fig. 15 embodiment may be
used in conjunction with any embodiment herein, especially in
connection with the Fig. 11-14 embodiments. In the Fig. 15
embodiment, the backing paint and copper (Cu) layers of a
conventional mirror are removed, or substantially removed, and
replaced with a passivating film of tin oxide and/or silane(s).
The silane(s) and/or tin oxide are better able to couple to
functional groups such as hydroxyls and aldehydes within the
glue layer (e.g., PVB) 20. Thus, the mirror coating 10 of the
Fig. 15 embodiment [is] better able to adhere to the
laminating/glue layer 20 so that a more durable and improved
product is provided.
The mirror coating of the Fig. 15 embodiment may be
made as follows in certain example embodiments of this
invention. . . . This passivating film 50, including the tin oxide
and/or silane, directly contacts the polymer-based glue layer 20
during the laminating phase, and provides an improved bonding
thereto as explained above.
Spec. ¶¶ 57-58; see also Abstract (stating “[i]n certain example
embodiments, the reflective coating is a mirror coating and includes a
passivating film including tin oxide and/or silane(s) for better adhering to the
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polymer based glue/adhesive/laminating layer which may be made of
polyvinyl butyral (PVB) or the like”).
The evidence of the Specification provides conclusory statements
regarding the bonding advantage of the polymer based glue layer (e.g., PVB
or polyvinyl butyral) directly contacting the coating of tin oxide or silanes as
compared with conventional mirror layers of backing paint and copper
layers. It is axiomatic that unexpected results must be established by factual
evidence rather than mere conclusory statements in the Specification. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (stating “[i]t is well settled
that unexpected results must be established by factual evidence. Mere
argument or conclusory statements in the specification does not suffice”).
Conclusory statements, such as those cited by Appellant in the Specification,
are entitled to little weight. In re Lindner, 457 F.2d 506, 508 (CCPA 1972)
(stating “mere conclusory statements in the specification and affidavits are
entitled to little weight when the Patent Office questions the efficacy of
those statements” in considering evidence of nonobviousness).
Moreover, the proffered evidence of the Specification does not
indicate that the bonding advantage was unexpected. See Spec. ¶¶ 57-58;
Abstract. Instead, the only references to unexpected results are attorney
argument. For example, Appellant argued:
Unexpectedly, this specifically claimed arrangement has been
found to be highly advantageous. As explained in the instant
application at paragraphs 57 and 58, for example, it surprisingly
has been found that silane(s) and/or tin oxide are better able to
couple to functional groups such as hydroxyls and aldehydes in
the laminating glue layer 20 when compared to conventional
materials. The mirror coating 10 of the Fig. 15 example
embodiment is thus better able to adhere to the laminating/glue
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layer 20, thereby resulting in a product having much improved
durability.
App. Br. 12. Compare App. Br. 12 with Spec. ¶¶ 57-58, Abstract. Attorney
argument, however, is insufficient to establish unexpected results. In re
Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
Appellant’s evidence of unexpected results consisting of conclusory
statements and attorney argument does not rise to the level of objective
evidence required to demonstrate unexpected results. Thus, after
considering the Specification and Appellant’s arguments, we agree with the
Examiner that there is insufficient evidence to overcome the showing of
prima facie obviousness.
We next turn to Appellant’s contentions that the combination is
improper because Jenkinson and Komiyama each teach away from claim 1.
In particular, Appellant argues that Jenkinson teaches away from having any
intermediary layers between its reflective and protective layers. App.
Br. 13; Reply Br. 4. The question before us is whether a person of ordinary
skill, upon reading Jenkinson’s disclosure, would be discouraged from
including tin oxide or silanes in the uppermost film of Kushibashi. See In re
Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (stating “[a] reference may be said
to teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant” (citation omitted)). The Examiner cites Jenkinson for the limited
purpose of teaching an outermost film of the mirror coating that includes tin
oxide or silanes. Ans. 3-4.
We are not persuaded that Jenkinson criticizes, discredits, or
otherwise discourages investigation into the claimed invention. See DePuy
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Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326-27 (Fed.
Cir. 2009). Rather, Jenkinson, in a portion cited by the Examiner, discloses
that “[a]n outermost layer, of silicon, titania or the above-described
protective layer [of tin oxide], provides chemical durability to the mirrors.”
Jenkinson, col. 5, ll. 26-28; see also Jenkinson, col. 5, ll. 15-16 (identifying
an additional protective layer of a harder material, such as tin oxide, may be
deposited over the outer layer); Ans. 3-4 (citing Jenkinson, col. 5, ll. 13-30).
Contrary to Appellant’s argument that Jenkinson teaches away, Jenkinson
teaches an advantage of an outermost layer including tin oxide.
Appellant also argues that Komiyama teaches away from the claimed
invention because Komiyama’s objective is to provide a flat mirror for an
airplane cabin and Komiyama describes bent mirrors as being
disadvantageous in this context. App. Br. 14; Reply Br. 4. This argument is
likewise unavailing. The Examiner relies on Komiyama’s disclosure for the
limited purpose of the use of polymer based glue layers as an adhesive
material. Komiyama’s disclosure of the preference for using a flat mirror in
the context of a mirror for an airplane cabin does not rise to the level of a
teaching away from using a polymer based glue layer because Komiyama
does not discourage the use of a polymer based glue layer. In fact,
Komiyama indicates the adhesive of an elastic polymer is preferred for
bonding and can prevent the occurrence of mutual peeling. Komiyama,
col. 4, ll. 54-57, 62-67; see also Ans. 4 (citing Komiyama, col. 4, ll. 54-67).
Taken as a whole, then, the mere substitution of the polymer based
glue layer for the adhesive layer of Kushibashi is not discouraged by the
benefits of using a flat mirror over a bent mirror in an airplane cabin.
Accord In re Mouttet, 686 F.3d 1322, 1333-34 (Fed. Cir. 2012) (stating that
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the existence of better alternatives “in the prior art does not mean that an
inferior combination is inapt for obviousness purposes” (citing In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994))).
We also are not persuaded by Appellant’s arguments that are not
consistent with the rejection. Appellant asserts that Jenkinson “is irrelevant
to claim[] 1 . . . [because] Jenkinson does not include a polymer based glue
layer.” App. Br. 13. Appellant’s argument is inconsistent with the rejection
that does not rely on Jenkinson, but rather relies on Komiyama, for teaching
a polymer based glue layer. Jenkinson is cited for teaching tin oxide or
silanes as uppermost films/coatings. Ans. 3-4. Similarly unavailing is
Appellant’s assertion that Komiyama does not teach a polymer based glue
layer that directly contacts the uppermost film of the mirror coating which
includes tin oxide or silanes (App. Br. 14) because the Examiner relies on
Komiyama merely to show that “it is well known to use polymer based glue
layers as an adhesive material” (Ans. 4). For teaching or suggesting a
polymer based glue layer that directly contacts the uppermost film of the
mirror coating which includes tin oxide or silanes, the Examiner relies on the
combination of Kushibashi, Jenkinson, and Komiyama. Appellant cannot
show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981).
The Examiner’s proposed combination of Kushibashi, Jenkinson, and
Komiyama predictably uses prior art elements according to their established
functions—an obvious improvement, and we find the Examiner’s reason to
combine the teachings of the cited references supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
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obviousness conclusion. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
For the foregoing reasons, we therefore will sustain the rejection of
(1) independent claim 1, (2) independent claim 15 reciting commensurate
limitations, and (3) dependent claims 2-5, 8, and 12.

THE REMAINING OBVIOUSNESS REJECTION
For the rejection of the claims over Fujiwara, Kushibashi, Jenkinson,
and Komiyama, the Examiner relies on Fujiwara for teaching a parabolic
mirror having a particular structure. Ans. 4-6. In contesting this rejection,
Appellant refers to the previous arguments regarding claim 1. See App. Br.
15-16. The issues before us, then, are the same as those in connection with
claim 1, discussed above.
Based on the previous explanation, we need not address whether
Fujiwara remedies any purported deficiency of Kushibashi, Jenkinson, and
Komiyama. Nor has Appellant persuaded us of error in the rejection of
claims 1-5, 8, 12, and 15 over Fujiwara, Kushibashi, Jenkinson, and
Komiyama for the reasons discussed above with respect to the rejection of
claim 1 over Kushibashi, Jenkinson, and Komiyama.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1-5, 8, 12,
and 15.

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ORDER
The Examiner’s decision rejecting claims 1-5, 8, 12, and 15 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

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