Jae Seon. Hong et al.

Patent Trials and Appeals Board

Oct 24, 2019

15034085 - (D) (P.T.A.B. Oct. 24, 2019)

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.
15/034,085 05/03/2016 Jae Seon Hong CPMC 3.3F-058 6115
530 7590 10/24/2019
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
eOfficeAction@ldlkm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAE SEON HONG, MYUNG HWAN KIM, BONG CHUL KIM,
JONG HWA KIM, DUCK KYO SEO, and JAE MUN HWANG,
____________

Appeal 2018-008688
Application 15/034,085
Technology Center 1700
____________

Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1 and 3–8 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Hough, Jr. (US 1,236,937, issued Aug.
14, 1917)2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Corning Precision
Materials Co., Ltd. (Appeal Br. 2).
2 The Examiner withdrew a rejection of these claims under 35 U.S.C. § 112
for being indefinite (Ans. 6).
Appeal 2018-008688
Application 15/034,085

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Claim 1 is illustrative of the appealed subject matter (emphasis added
to identify a key disputed limitation):
1. An apparatus for shaping a glass substrate, comprising:
a molding frame having a cavity, at least one vacuum hole and
at least one decompression hole,
wherein the cavity disposed on one surface of the molding
frame,
the at least one vacuum hole formed in the molding frame
below the cavity, the at least one vacuum hole being connected to an
external vacuum device, and
the at least one decompression hole defined between the cavity
and the at least one vacuum hole such that the cavity communicates
with the at least one vacuum hole, wherein a width of the at least one
decompression hole is greater than a width of the at least one vacuum
hole such that the at least one decompression hole lessens vacuum
pressure applied to the glass substrate disposed on the cavity through
the at least one vacuum hole,
wherein all of the at least one vacuum hole are directly
connected to the at least one decompression hole.

Appeal Br. 14 (Claims Appendix).

PRINCIPLES OF LAW
[U]nless a reference discloses within the four corners of the
document not only all of the limitations claimed but also all of
the limitations arranged or combined in the same way as recited
in the claim, it cannot be said to prove prior invention of the thing
claimed and, thus, cannot anticipate under 35 U.S.C. § 102.

Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci.
Appeal 2018-008688
Application 15/034,085

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Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art. (citations omitted)); Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” (citation omitted)).

ANALYSIS
The Examiner relies only upon Hough’s Figs. 3−5 in the anticipation
rejection (Final Action 3; Ans. 4). Appellant argues that the Examiner has
taken an unreasonably broad interpretation of the recited “wherein all of the
at least one vacuum holes are directly connected to the at least one
decompression hole” and thus, has not shown how Hough’s Figs. 3−5
identically disclose this feature. A preponderance of the evidence supports
Appellant’s position.
Appellant points out that many of the vacuum holes in Hough’s mold
depicted in Figs. 4 and 5 are not connected to any decompression hole and
thus cannot be encompassed by the claimed feature (Appeal Br. 6, 7; Reply
Br. 4, 5). We agree with Appellant that the claim when read in its entirety
and in light of the Specification, requires that all of the vacuum holes be
connected to at least one decompression hole. Hough’s Figs. 5 and 6 do not
show this feature. Indeed the claim itself also defines the at least one
vacuum hole as hole(s) in the mold that are connected to an external vacuum
device, and that the decompression hole is located between the cavity and
Appeal 2018-008688
Application 15/034,085

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the vacuum hole and configured such that it functions to lessen vacuum
pressure applied to the glass substrate disposed on the mold cavity.
We are also mindful that:
[t]he correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is not
simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e. an interpretation that is consistent with the
specification.

In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (internal
quotation omitted); see also In re Baker Hughes, Inc., 215 F.3d 1297, 1303
(Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond that
which was reasonable in light of the totality of the written description” in the
Specification).
Each of the Examiner’s alternative positions, that vacuum holes are
only those holes that are connected to a decompression hole (Ans. 11) or that
the material of the Hough mold directly connects all the holes with each
other and/or “the nothingness which exists in all locations where there is no
mold material directly connects (the nothingness of the) holes” (Ans. 12) are
all unreasonably broad interpretations of the aforementioned claim limitation
when considered in light of the Specification as well as in light of the
entirety of the plain meaning of the claim for the reasons explained in the
Briefs. In doing so, the Examiner erred in finding that Hough’s Figs. 3−5
disclose the claimed subject matter. As such, we cannot sustain the
anticipation rejection.
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Accordingly, the Examiner’s 35 U.S.C. § 102 rejection of claims 1
and 3–8 is reversed.
CONCLUSION

The Examiner’s decision is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1, 3−8 102(a)(1) Hough 1, 3−8

REVERSED