Shandon Dee. Hart

Patent Trials and Appeals Board

Nov 27, 2019

13655968 - (D) (P.T.A.B. Nov. 27, 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.
13/655,968 10/19/2012 Shandon Dee Hart SP11-294 8598
22928 7590 11/27/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SHANDON DEE HART
____________________

Appeal 2018-003228
Application 13/655,968
Technology Center 1700
____________________

Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
February 26, 2016 decision rejecting claims 1–21, 23, and 29–34 (“Non-
Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Corning Incorporated as the real party
in interest (Br. 2).
Appeal 2018-003228
Application 13/655,968

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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to glass laminates with asymmetric
impact resistance (Spec. ¶ 2). According to the Specification, in some
applications it is desirable to have glass laminates that exhibit a different
impact resistance depending on which side of the glass is impacted (Spec.
¶ 3). The Specification states that, for example, in automotive applications it
may be desirable for a glass laminate to exhibit a higher impact resistance for
external objects such as falling trees, while exhibiting a lower resistance
against interior impact, such as a passenger's body during a collision (id.).
Thus, the disclosure is generally directed to strengthened glass laminates
comprising at least one layer of strengthened glass having a first surface and a
second surface disposed opposite the first surface, with one or more coatings
adhered to the first surface of the strengthened glass, where the coating(s)
impart(s) an asymmetric impact resistance to the glass laminate (Abstract).
Details of the claimed structure are set forth in representative claim 1, which
is reproduced below from the Claims Appendix to the Appeal Brief:
1. A strengthened glass laminate comprising:
at least one layer of strengthened glass having a first
surface and a second surface disposed opposite the first surface;
and
one or more coatings comprising silica adhered to the
first surface of the strengthened glass,
wherein the one or more coatings impart an asymmetric
impact resistance to the at least one layer of strengthened glass,
and
wherein the one or more coatings do not show evidence
of delamination when inspected under an optical microscope
after indentation with a Berkovich diamond indenter with a load
of from about 4 grams to about 40 grams.
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REJECTIONS
1. Claims 1–4, 10–16, and 30 are rejected under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. §103(a) as
unpatentable over, Amin I.2
2. Claims 5–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Amin I in view of Blackwell.3
3. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Amin I in view of Kim.4
4. Claims 18, 19, 23, and 29 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Amin I in view of Kimura.5
5. Claims 20, 21, and 31–34 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Amin I in view of Amin II.6
6. Claims 1, 2, 10–15, 18, 19, 23, 29, and 30 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kimura in view of Amin I.
7. Claims 3, 4, 16, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kimura in view of Amin I and Amin II.
8. Claims 5–9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kimura in view of Amin I and Blackwell.

2 Amin et al., US 2009/0197048 A1, published August 6, 2009.
3 Blackwell et al., WO 00/00855 A1, published January 6, 2000.
4 Kim, US 2004/0201883 A1, published October 14, 2004.
5 Kimura, US 5,928,793, issued July 27, 1999.
6 Amin et al., US 2010/0047521 A1, published February 25, 2010.
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9. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kimura in view of Amin I and Kim.

DISCUSSION
Appellant does not separately argue any claim or rejection (see Br.
19–20). Accordingly, our analysis will focus on the § 102/§ 103 rejection of
claim 1 over Amin I. The Examiner’s findings underlying this rejection are
set forth at pages 2 and 5 of the Non-Final Action.
The Examiner finds that Amin I discloses a strengthened glass
laminate made of alkali aluminosilicate having an antireflective layer on it
(Non-Final Act. 4, citing Amin I, FIG. 3 and ¶ 66). The Examiner further
finds that Amin I’s antireflective coating is made of SiO2 (Non Final Act.,
citing Amin I ¶¶ 63, 64).
The Examiner finds that although Amin I does not disclose that its
SiO2 coating would impart impact resistance to the glass, the presence of the
SiO2 coating would inherently impart such a property and, because the
coating is applied to only side of the glass, “it is inherent that the impact
resistance impart[ed] by the coating is asymmetric” (Non-Final Act. 4). The
Examiner also finds that Amin I does not explicitly disclose the final
limitation in claim 1 (“wherein the one or more coatings do not show
evidence of delamination when inspected under an optical microscope after
indentation with a Berkovich diamond indenter with a load of from about 4
grams to about 40 grams”), but that because Amin I’s coating “is identical”
to the claimed coating, that property would be inherent in Amin I’s coating
(Non-Final Act. 5).
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Thus, the rejection relies on a finding of inherency for two of the
claim limitations. “[I]n order to rely on inherency to establish the existence
of a claim limitation in the prior art in an obviousness analysis[,] the
limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” PAR Pharm.,
Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014). To
properly rely on the doctrine of inherency in a rejection, “the examiner must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990).
Appellant first argues that information presented in the Specification
shows that simply because the claimed coating and the coating in Amin I
have the same chemical composition is not sufficient to show that Amin I’s
compositions necessarily impart the claimed asymmetric impact properties
and/or adhesion properties (Br. 13). In particular, Appellant points to
Examples 1 and 2 in the Specification as showing that coatings comprising
silica produced using RF sputtering provided good adhesion and imparted
asymmetric impact resistance while silica coatings produced using E-bean
evaporation did not impart asymmetric impact resistance and did not show
good adhesion (Br. 13, citing Spec., Example 1, ¶¶ 30–32), and curing
identical polymer coatings at different temperatures can either provide
asymmetric impact resistance, or not provide asymmetric impact resistance
(Br. 13, citing Spec., Example 2, ¶ 36).
The Examiner states that the evidence provided by Appellant in the
Specification as demonstrating that the impartment of asymmetric impact
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resistance and adhesion properties of the coating are not inherent in the use
of silica as a coating on one side of a glass substrate is not persuasive (Ans.
24–25). The Examiner finds that:
Regarding Example 1 (see paragraphs 0030-0031 of published
application) and comparative example (see paragraphs 0032 of
published application), these examples are not proper side-by-
side comparisons given that Example 1 comprises a 4-layer
coating which includes SiO2 and Nb2O5 whereas comparative
example comprises a single layer SiO2 coating. Therefore, it is
not clear if it is the different process or the different coating that
is causing the difference in properties and thus, the data is not
persuasive. Regarding Example 2, the data is not persuasive
given that the data is not commensurate in scope with scope of
present claims given that present claim recite silica coating
(SiO2 coating) and Example 2 is drawn to polymer coating
(siloxane film) (see paragraphs 0033, 0036, 0037). Therefore,
there is no evidence how silica coating (SiO2 coating) cured at
different temperatures (higher, lower) will affect asymmetric
impact resistance and other properties such as delamination.
(Ans. 24–25).
Thus, the determinative issue in this appeal is whether the Examiner
has adequately shown that Amin I inherently teaches the claimed
asymmetric impact resistance and adhesion properties.
As discussed above, to rely on the doctrine of inherency, “the
examiner must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.”
Levy, 17 USPQ2d at 1464. In this instance, the Examiner’s basis for
determining that Amin I’s coating provides the claimed properties to the
claimed glass laminate is that Amin I’s coating is made of the same material
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(SiO2) as is described as being used in claimed invention (Ans. 4–5).7 In
view of the fact that the claim does not provide any specific structural details
about the coating, we conclude that the Examiner has a sound basis for
believing that the coatings of Amin I would impart the claimed properties to
Amin I’s glass laminate. Such a basis is sufficient to shift the burden to
Appellant to demonstrate that the claimed properties would not inherently be
present in Amin I’s glass laminate. See In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990) (“[W]hen the [US]PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not” (citation omitted). As stated by the
predecessor of our reviewing court:
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
Whether the rejection is based on ‘inherency’ under 35 U.S.C.
§ 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively,[] the burden of proof is the same, and its
fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (internal citations omitted).
As noted at page 5, supra, Appellant has sought to meet this burden
by reference to Examples 1 and 2 from the Specification, which were said to

7 Appellant argues that the Examiner has provided no evidence to support
the “allegation” that the prior art and claimed coatings are the same (Br. 14;
see also Br. 16). However, the Examiner has found, and Appellant has not
disputed, that both teach coatings made of SiO2. Thus, it is not accurate to
say that the Examiner has not “provid[ed] any evidence supporting this
allegation” (id.) (emphasis omitted).
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show that different methods of application and/or curing temperatures would
affect the final properties of the glass laminate, specifically the asymmetric
impact and adhesion properties. However, Appellant’s reliance on this data
is insufficient to meet its burden to prove that the prior art product (the glass
laminate of Amin I) does not inherently have the claimed asymmetric impact
resistance and adhesion properties.
This is because, in the case of the data from Example 1, the
comparison relied on by Appellant is between a 4-layer coating which
includes SiO2 and Nb2O5 and a coating made of a single layer of SiO2 (Amin
I ¶¶ 30–32). Thus, as discussed by the Examiner, the comparison does not
allow for a determination as to whether the different properties between the
example and the comparative example is because of different processes used
to create the coatings, or different coatings. Accordingly, it does not provide
persuasive evidence that glass laminates of Amin I would not inherently have
the claimed properties. In the case of Example 2, the coatings are not made
of silica, but instead are made of a siloxane film (Amin I ¶¶ 33, 36, and 37).
Hence, the results are not probative of the effect of temperature on the
properties imparted by a silica coating, and do not provide persuasive
evidence that Amin I’s glass laminates would not inherently have the claimed
properties.
Appellant has simply not pointed to factual evidence in the
Specification which adequately supports an argument that different methods
of applying and/or curing SiO2 coatings onto glass substrates would result in
glass laminates having different properties.

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Appellant also cites to evidence from the Rule 132 Declaration of Dr.
Shandon Hart (“Hart Decl.”) to support the argument that the claimed
properties are not inherent in Amin I’s glass laminates (Br. 16–17). This
argument is not persuasive of reversible error because, as articulated by the
Examiner (Ans. 32–34), the Declaration does not specifically address the
glass laminate of Amin I, which appears to be identical (i.e. the same glass
and the same coating) to the claimed glass laminate. To overcome the
findings of inherency, Appellant bears the burden of showing that Amin I’s
glass laminate does not have the claimed properties. In re Best, 562 F.2d at
1255. By not showing that glass laminates prepared as taught by Amin I do
not have the claimed asymmetric impact resistance and adhesion properties,
the Declaration fails to persuasively show that those glass laminates do not
inherently have the claimed properties.
Because in this instance, based on the holding of In re Best, Appellant
bears the burden of showing that the prior art products do not necessarily or
inherently possess the characteristics of the claimed product, Appellant’s
failure to meet this burden prevents a showing of reversible error in the
rejections.

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CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 10–
16, 30
102(b)/103(a) Amin I 1–4, 10–
16, 30

5–9 103(a) Amin I, Blackwell 5–9
17 103(a) Amin I, Kim 17
18, 19,
23, 29
103(a) Amin I, Kimura 18, 19,
23, 29

20, 21,
31–34
103(a) Amin I, Amin II 20, 21,
31–34

1, 2, 10–
15, 18,
19, 23,
29, 30
103(a) Kimura, Amin I 1, 2, 10–
15, 18,
19, 23,
29, 30

3, 4, 16,
20, 21
103(a) Kimura, Amin I,
Amin II
3, 4, 16,
20, 21

5–9 103(a) Kimura, Amin I,
Blackwell
5–9
17 103(a) Kimura, Amin I,
Kim
17
Overall
Outcome
1–21, 23,
29–34

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