Nicholas Francis. Borrelli et al.

Patent Trials and Appeals Board

Jun 23, 2020

14660230 - (D) (P.T.A.B. Jun. 23, 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.
14/660,230 03/17/2015 Nicholas Francis Borrelli SP14-067 3693
22928 7590 06/23/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
REMAVEGE, CHRISTOPHER
ART UNIT PAPER NUMBER
1713
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS FRANCIS BORRELLI and ZHIQIANG SHI1
____________

Appeal 2019-002293
Application 14/660,230
Technology Center 1700
____________

Before GEORGE C. BEST, MICHELLE N. ANKENBRAND, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–7, 21, and 22. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of making sound
absorbing panels. E.g., Spec. ¶ 7; Claim 1. Claim 1 is reproduced below
from page 12 (Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Corning Incorporated. Br. 3.
Appeal 2019-002293
Application 14/660,230

2
1. A method of making a sound absorbing panel comprising the
steps of:
a) applying a first mask having a first plurality of features to a
first sheet of transparent photosensitive material to form a
masked material;
b) exposing the masked material to ultraviolet light;
c) heating the first sheet of transparent photosensitive material
to form crystals in exposed portions of the first sheet, the
crystals comprising Li2SiO3 crystals; and
d) etching the crystals to form a second plurality of features in
the first sheet of transparent photosensitive material, wherein
each of the second plurality of features has a diameter of up
to about 60 μm, and wherein the sound absorbing panel has a
perforation ratio σ in a range from about 0.0025 to about 0.10.
ANALYSIS
Claims 1–7, 21, and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Flemming (US 2008/0248250 A1, published Oct. 9,
2008), Fuchs (US 5,700,527, issued Dec. 23, 1997), and Pfaffelhuber
(US 2005/0133302 A1, published June 23, 2005). The Appellant argues the
claims as a group. We select claim 1 as representative, and the remaining
claims will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated October 13, 2017, and in the Examiner’s Answer.
The Examiner finds that Flemming discloses a method of making
glass structures with steps that correspond to the “applying,” “exposing,”
“heating,” and “etching . . . to form . . . features” steps of claim 1. Final
Appeal 2019-002293
Application 14/660,230

3
Act. 4. The Examiner finds, however, that Flemming fails to disclose
(1) that “the method can be utilized to make a sound absorbing panel,” id.,
and (2) the diameter and perforation ratio of claim 1, id. at 6.
The Examiner finds that Fuchs discloses a method of making sound
absorbing panels that include “microperforated holes” (i.e., a plurality of
features). Id. at 5. The Examiner finds that Pfaffelhuber “discloses a
method of producing a sound shielding element” that includes perforations
that fall within the diameter and ratio requirements of claim 1. Id. at 6–7.
The Examiner determines that it would have been obvious to use
Flemming’s feature forming method (i.e., the “applying,” “exposing,”
“heating,” and “etching” steps) to make Fuchs’s sound absorbing panels
because Flemming teaches that its method yields “improved throughput and
accuracy.” Id. at 5; see also Ans. 4 (explaining the proposed combination as
“utilizing the method of forming microstructures of Flemming to form the
hole patterns of Fuchs/Pfaffelhuber”). The Examiner finds that it would
have been obvious to use Pfaffelhuber’s diameter and perforation ratio in the
sound absorbing panels because they are known suitable diameters and
ratios in sound shielding materials and because they are known to “lead[] to
absorption of incident [sound] waves.” Final Act. 7.
The Appellant first argues that Flemming’s glass structures “are
hollow micro-needle arrays for transdermal drug delivery or the withdrawal
of body fluids,” and that it would not have been obvious to modify
Flemming’s needles into sound absorbing panels “because such a
modification would render the glass structures of Flemming unsatisfactory
for their intended purpose of being hollow micro-needles.” Br. 8. The
Appellant also argues that modifying Flemming’s needles to be sound
Appeal 2019-002293
Application 14/660,230

4
absorbing panels “would change the principle of operation of Flemming by
creating features suitable for sound-absorbing functions, as opposed to
creating hollow micro-needles.” Id. at 8–9.
Those arguments are not persuasive. To the extent that the Final
Action lacks clarity as to the Examiner’s proposed modification, see Final
Act. 4–7, the Examiner’s Answer makes clear that the Examiner is
proposing to form the microperforated holes of Fuchs’s sound absorbing
panels using the known method of forming microfeatures that Flemming
discloses. E.g., Ans. 4 (explaining the proposed combination as “utilizing
the method of forming microstructures of Flemming to form the hole
patterns of Fuchs/Pfaffelhuber”). The Examiner is not proposing to convert
Flemming’s needles into sound absorbing panels. The Appellant did not file
a Reply Brief to contest the Examiner’s rationale as clarified in the Answer.
On this record, we are not persuaded of reversible error in the rejection on
the basis of the Appellant’s arguments concerning intended purpose or
principle of operation. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”).
The Appellant also argues that, because neither Fuchs nor
Pfaffelhuber teaches forming holes by masking and etching, “there is no
teaching, motivation, or suggestion” to make the proposed combination, and
“Fuchs and Pfaffelhuber teach away from the method of Flemming.” Br. 9.
Those arguments are not persuasive because they attack the references
individually. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne
cannot show non-obviousness by attacking references individually where, as
here, the rejections are based on combinations of references.”). The
Appeal 2019-002293
Application 14/660,230

5
Examiner finds that a person of ordinary skill would have been motivated to
use Flemming’s method to form Fuchs’s sound absorbing panels because
Flemming teaches increased throughput and accuracy. E.g., Final Act. 5;
Ans. 4. The Appellant does not address or otherwise identify error in that
rationale.
As to the Appellant’s “teach away” argument, see Br. 9, the Appellant
fails to identify any disclosure in any reference that criticizes, disparages, or
otherwise teaches away from Flemming’s method of forming features,
which are recited in claim 1. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004). That Fuchs and Pfaffelhuber do not disclose the same method of
forming features as Flemming or claim 1 does not constitute a teaching
away. See id. (“The prior art’s mere disclosure of more than one alternative
does not constitute a teaching away from any of the[] [disclosed]
alternatives . . . .”).
Finally, the Appellant argues that “none of the references cited
teaches or suggests” the formation of Li2SiO3 crystals, as claim 1 requires.
Br. 9. The Appellant acknowledges that “Flemming teaches forming and
etching crystals,” but argues that Flemming “does not specify the
composition of said crystals.” Id. The Appellant does not argue that it
would not have been obvious to use Flemming’s glass in the panels of Fuchs
or Pfaffelhuber.
Although the Appellant is correct that the Examiner does not
specifically address the formation of Li2SiO3 crystals in the Final Action, in
the Answer the Examiner finds that, because the glass Flemming teaches has
“substantially similar chemical components” as glass the Specification
discloses, and because Flemming teaches a heating step at temperatures that
Appeal 2019-002293
Application 14/660,230

6
encompass temperatures the Specification discloses, the formation of
Li2SiO3 would necessarily flow from practicing Flemming’s method using
glass that Flemming teaches as suitable for its method. Ans. 6–7; cf. Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.”).
Consistent with the Examiner’s findings, Flemming discloses suitable
glasses that include ingredients (e.g., SiO2, Li2O, CeO2, Ag2O) and
quantities of ingredients comparable to those the Specification discloses as
suitable. Compare Flemming ¶ 103 (Table 2), with Spec. ¶¶ 30–31.
Flemming also discloses heating temperatures that encompass exemplary
temperatures the Specification discloses. Compare Flemming ¶ 11, with
Spec. ¶ 31. The Appellant did not file a Reply Brief to contest the
Examiner’s relevant findings, which are consistent with the record.
Accordingly, we are not persuaded of reversible error in the Examiner’s
rejection on the basis of the Appellant’s arguments concerning Li2SiO3. See
Jung, 637 F.3d at 1365.
We affirm the Examiner’s rejection of claim 1. Because we affirm the
rejection of claim 1, we also affirm the rejection of claims 2–7, 21, and 22.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § References Affirmed Reversed
1–7, 21, 22 103 Flemming, Fuchs, Pfaffelhuber 1–7, 21, 22
Appeal 2019-002293
Application 14/660,230

7
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