Guardian Glass, LLC

Patent Trials and Appeals Board

Apr 14, 2020

13784108 - (D) (P.T.A.B. Apr. 14, 2020)

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.
13/784,108 03/04/2013 Duane O. RECKER JAR-3691-2917 1064
124194 7590 04/14/2020
Guardian Glass, LLC
c/o KCPS IP Dept./Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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):
koch_pair@firsttofile.com
pair_nixon@firsttofile.com
ptomail@nixonvan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DUANE O. RECKER and KEITH ALDRICH

Appeal 2019-003061
Application 13/784,108
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–12, 25, and 26.2 We have

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42—namely, “Guardian Industries Corp.” (Application Data
Sheet filed March 4, 2013 at 4). The Appellant identifies “Guardian Glass,
LLC,” as the real party in interest (Appeal Brief filed November 27, 2018
(“Appeal Br.”) at 3).
2 See Appeal Br. 7–21; Reply Brief filed March 7, 2019 (“Reply Br.”) at 2–
5; Final Office Action entered December 27, 2017 (“Final Act.”) at 2–29;
Examiner’s Answer entered January 7, 2019 (“Ans.”) at 3–38.
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Application 13/784,108

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jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments from the
Appellant’s representative on April 1, 2020.
We reverse.
I. BACKGROUND
The subject matter on appeal relates to a transportation vehicle
window in which a moisture-cured adhesive including silanol termination
groups is used as a seal for insulated glass (IG) units that are capable of
surviving extreme temperature swings and high vibrations (Specification
filed March 4, 2013 (“Spec.”) ¶¶ 2, 14–15). Representative claim 1 is
reproduced from the Claims Appendix to the Appeal Brief, as follows:
1. A transportation vehicle window, comprising:
first and second glass substrates in substantially parallel
spaced apart relation to one another;
a spacer system provided at peripheral edges of the first
and/or second substrates, a gap being defined by the first and
second substrates and the spacer system; and
a seal provided around the spacer system and adhering to
the spacer system and the first and second substrates, the seal
being formed from a moisture-cured adhesive including silanol
termination groups, the seal being structured to survive thermal
cycling and thermal shocks associated with alternating and
repeated placement of the transportation vehicle window in (a)
a first environment at 80 degrees C at 80% relative humidity
for 4-5 days, and (b) in a second environment at 0 degrees F
for 1-2 days, for at least 4 weeks.
(Appeal Br. 22 (emphases added)). Claim 8, the only other independent
claim on appeal, is directed to a transportation vehicle insulated glass (IG)
unit having a seal, which is formed from a moisture-cured adhesive
including silanol termination groups, that would be sufficiently strong so
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Application 13/784,108

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that the seal would remain intact upon application of certain specified forces
under certain specified conditions (id. at 24).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA), as follows:
A. Claims 1–7 and 25 as unpatentable over Galbraith et al.3
(“Galbraith”) and Mahdi et al.4 (“Mahdi”);
B. Claims 8–12 and 26 as unpatentable over Wolf et al.5 (“Wolf”)
and Mahdi;6
C. Claims 1–7 as unpatentable over Galbraith and Mowrer et al.7
(“Mowrer”);
D. Claim 25 as unpatentable over Galbraith, Mowrer, and Mahdi;
E. Claims 8–12 as unpatentable over Wolf and Mowrer;8

3 WO 2010/111174 A1, published September 30, 2010. Although this
reference is an English-language document, the Examiner refers to the
corresponding United States published application, US 2012/0009366 A1,
published January 12, 2012 (Ans. 3; Final Act. 2). To avoid confusion, we
also cite to the United States publication.
4 US 2006/0093828 A1, published May 4, 2006.
5 US 2009/0243802 A1, published October 1, 2009.
6 The rejection omits Galbraith, but it appears that this omission was
inadvertent (Ans. 8).
7 US 5,760,155, issued June 2, 1998.
8 The rejection omits Galbraith, but it appears that this omission was
inadvertent (Ans. 14).
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F. Claim 26 as unpatentable over Wolf, Mowrer, and Mahdi;9
G. Claims 1–7 as unpatentable over Galbraith and Roesler et al. 10
(“Roesler”);
H. Claim 25 as unpatentable over Galbraith, Roesler, and Mahdi;
I. Claims 8–12 as unpatentable over Wolf and Roesler;11 and
J. Claim 26 as unpatentable over Wolf, Roesler, and Mahdi.12
(Ans. 3–38; Final Act. 2–29).
III. DISCUSSION
1. The Examiner’s Position
The Examiner finds that Galbraith describes an insulated glass
comprising first and second glass substrates in substantially parallel, spaced-
apart relation to each other, a spacer system provided at peripheral edges of
the first and/or second substrates, a gap defined by the first and second glass
substrates and spacer system, and a seal provided around the spacer system
and adhering to the spacer system and the first and second substrates,
wherein the seal is formed from a moisture-cured adhesive including silanol
termination groups (Ans. 3 (citing Galbraith ¶¶ 8, 92; Fig. 2); see also Final
Act. 3). Regarding the limitation “transportation vehicle window” recited in
claim 1’s preamble, the Examiner states that the limitation is not given any

9 The rejection omits Galbraith, but it appears that this omission was
inadvertent (Ans. 14).
10 US 2005/0137324 A1, published June 23, 2005.
11 The rejection omits Galbraith, but it appears that this omission was
inadvertent (Ans. 19).
12 The rejection omits Galbraith, but it appears that this omission was
inadvertent (Ans. 19).
Appeal 2019-003061
Application 13/784,108

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patentable weight because it is “Nonfunctional Descriptive Material” (Ans.
4; Final Act. 3). According to the Examiner, “the prior art meets the
structural and/or chemical limitations set forth and there is nothing on record
to evidence that the prior art product could not function in the desired
capacity or that there is some additional implied structure associated with the
term” (Ans. 4; Final Act. 3)). As for the thermal cycling and thermal shocks
properties recited in claim 1, the Examiner states that “Galbraith . . .
discloses an insulated glass unit or IG unit, of which is commonly known
designed to keep homes warmer in the winter and cooler in the summer[,]”
and that, “[a]ccordingly, it can also help to keep the transportation vehicle
warmer in the winter and cooler in the summer” (Ans. 4; Final Act. 3–4). In
addition, the Examiner finds that Mahdi discloses using “Betaseal 58402”—
one of the adhesives disclosed in the current Specification as suitable (Spec.
¶ 39)—and “[s]ince the combination of the Galbraith and Mahdi use exactly
the same adhesive as the instant application, the adhesive used in the
combination of the Galbraith and Mahdi is expected to have the same
structure and properties” (Ans. 5; Final Act. 5).
The Examiner advances similar reasoning with respect to claim 8,
relying additionally on Wolf (Ans. 6–9; Final Act. 6–9).
2. The Appellant’s Contentions
The Appellant contends that the “transportation vehicle window”
limitation is recited in both claim 1’s preamble and the body (Appeal Br.
10). The Appellant argues further that Galbraith, Mahdi, and Wolf do not
disclose or suggest the claimed transportation vehicle window, and that
“[t]his is not surprising, given that IG window units are typically not used in
vehicles (i.e., they are typically used in buildings)” (id. at 10–11).
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Application 13/784,108

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Regarding the properties recited in claims 1 and 8, the Appellant argues that
although BETASEAL 58402 is disclosed as a suitable adhesive in the
current Specification, additional factors affect the specified properties, and,
therefore, the Examiner’s inherency position is flawed (id. at 12–13, 14–15).
3. Opinion
As indicated above, the Examiner’s position is that “[s]ince the
combination of the Galbraith and Mahdi use exactly the same adhesive as
the instant application, the adhesive used in the combination of the Galbraith
and Mahdi is expected to have the same structure and properties” (Ans. 5;
Final Act. 5; see also Ans. 9 and Final Act. 8–9). We agree with the
Appellant that the Examiner’s inherency position is not well-founded.
Although Mahdi discloses an adhesive that appears to be the same as
one disclosed as suitable in the current Specification (Mahdi ¶ 37 (disclosing
“BETASEALTM 58402”); Spec. ¶ 39 (disclosing “Dow Betaseal 58402N”)),
Mahdi’s disclosure relates to attaching a plastic component to another
component (e.g., a coated transparent or translucent polycarbonate substrate
connected to a frame) (Mahdi ¶ 6)—not for bonding IG systems. The
Examiner does not direct us to sufficient evidence to indicate that when
Mahdi’s adhesive designed to bond a plastic component to another
component is used in an IG system such as that disclosed in Galbraith, the
properties recited in the claims would inherently or necessarily result. In
this regard, the Examiner does not adequately refute the Appellant’s
argument that additional factors, such as “the energy level of the surfaces of
the substrate[,] also affect[] the quality of bond between the adhesive and the
substrate” (Appeal Br. 12 (citing, e.g., Spec. ¶ 46)). Therefore, the
Examiner’s inherency position based on combining bits and pieces from
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Application 13/784,108

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disparate references constitutes reversible error. PAR Pharm. Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (“[T]he concept of
inherency must be limited when applied to obviousness, and is present only
when the limitation at issue is the ‘natural result’ of the combination of prior
art elements.”); accord In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir.
2017). Cf. In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc)
(explaining that, in certain circumstances, it is not necessary that both a
structural similarity between a claimed and prior art composition be shown
and that there be a suggestion or expectation from the prior art that the
claimed composition will have the same or a similar property as one newly
discovered by the applicant).
The Examiner’s rejections based on Wolf, Mowrer, or Roesler are
flawed for similar reasons as these references are—at most—cumulative to
Galbraith and Mahdi (Wolf ¶¶ 17–18, 30, 35 and Fig. 4; Mowrer Abstract
and col. 5, ll. 40–43; Roesler Abstract and ¶¶ 7, 15, 118). Therefore, we do
not sustain the Examiner’s stated rejections.
IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 25 103(a) Galbraith, Mahdi 1–7, 25
8–12, 26 103(a) Wolf, Mahdi 8–12, 26
1–7 103(a) Galbraith, Mowrer 1–7
25 103(a) Galbraith, Mowrer,
Mahdi
25
8–12 103(a) Wolf, Mowrer 8–12
26 103(a) Wolf, Mowrer,
Mahdi
26
1–7 103(a) Galbraith, Roesler 1–7
Appeal 2019-003061
Application 13/784,108

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
25 103(a) Galbraith, Roesler,
Mahdi
25
8–12 103(a) Wolf, Roesler 8–12
26 103(a) Wolf, Roesler,
Mahdi
26
Overall
Outcome
1–12, 25, 26

REVERSED