Thomas Michael. Cleary et al.

Patent Trials and Appeals Board

Aug 11, 2020

14638224 - (D) (P.T.A.B. Aug. 11, 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.
14/638,224 03/04/2015 Thomas Michael Cleary SP14-062 1036
22928 7590 08/11/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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 THOMAS MICHAEL CLEARY,
DOUGLAS EDMON GOFORTH, RICHARD SEAN PRIESTLEY,
CHUANCHE WANG, and ARAMAIS ROBERT ZAKHARIAN
____________

Appeal 2019-001940
Application 14/638,224
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
SHELDON M. McGEE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3–8, 21–24, 33, and 35–37 under 35
U.S.C. § 103 as unpatentable over at least the combined prior art of Hart
(US 2013/0127202 A1, published May 23, 2013), Morris (US 3,396,075,

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). “Corning Incorporated” is identified as the real party in interest
(Appeal Br. 1).
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issued Aug. 6, 1968), and Masaki (EP 1 800 855 A1, published June 27,
2007).2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key disputed limitations):
1. A glass laminate structure comprising:
a non-strengthened external glass sheet;
an internal glass sheet comprising 60-70 mol.% SiO2; and
at least one polymer interlayer intermediate the external and
internal glass sheets,
wherein the internal glass sheet has a thickness ranging from
about 0.3 mm to about 1.5 mm,
wherein the external glass sheet has a thickness ranging from
about 1.5 mm to about 3.0 mm,
wherein the thickness of the internal glass sheet is less than the
thickness of the external glass sheet,
wherein the internal glass sheet is chemically strengthened such
that a surface compressive stress is between about 250 MPa and
900 MPa,
wherein the polymer interlayer has a first edge with a first
thickness and a second edge opposite the first edge with a
second thickness greater than the first thickness, and

2 The Examiner applied additional references in the rejections of dependent
claims 21–24, 33, and 37 as listed in the summary table at the end of this
decision. Discussion of these rejections is not needed for disposition of this
appeal.
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wherein the internal glass sheet further comprises 0-3 mol.%
CaO and at least one of Li2O, Na2O and K2O, where [0]3 12
mol.% ≤ (Li2O + Na2O + K2O) ≤ 20 mol.%.

(Appeal Br. 15 (Claims App.)).

Appellant relies upon the same arguments for all of the claims,
including those claims separately rejected (Appeal Br. 5–14).

OPINION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions as set forth in the Appeal Brief and the
Reply Brief, we determine that Appellant has not identified reversible error
in the Examiner’s rejection (See generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejection for the reasons expressed by the
Examiner in the Final Office Action and the Answer.
We add the following primarily for emphasis.
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–

3 It appears the presence of this 0 is a typographical error in claim 1.
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65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant’s arguments are focused on their belief that there is no
reason to use an inner chemically strengthened glass sheet of less thickness
than the external glass sheet based on Hart’s disclosure, absent use of
impermissible hindsight (See Appeal Br. 5–8). Appellant also argues that
Morris teaches away from and does not fairly suggest the inner sheet glass
composition recited in claim 1, specifically the 0 to 3 mol. % CaO (Appeal
Br. 9–12). These arguments are reiterated in the Reply Brief.
Appellant’s arguments are not persuasive of reversible error as they
fail to consider the applied prior art as a whole and the inferences that one of
ordinary skill would have made. Here, as the Examiner aptly points out, one
of ordinary skill in the art would have readily inferred from the overall
teachings of Hart, especially in light of paragraph 25 therein, that a glass
laminate may indeed be comprised of an inner chemically strengthened glass
sheet that is of less thickness than the outer glass sheet (Ans. 3, 4, relying on
Hart ¶¶ 17, 25, 30; see also Final Act. 2, 3). We also note that the thickness
ranges of the external and internal glass sheets in claim 1 overlap at the
endpoint of about 1.5 mm, and the claim does not require any minimum
dimension that the internal glass sheet be less, such that an internal sheet of,
e.g., .001 mm less is encompassed by the claim language.
The Examiner merely relies upon Morris to exemplify ranges of the
recited components of a glass composition, all of which overlap the claimed
ranges of the components of the glass composition recited in claim 1 (Ans.
5; Final Act. 3, 4).
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Under the flexible inquiry set forth by the Supreme Court, the PTO
must take account of the “inferences and creative steps,” or even routine
steps, that an ordinary artisan would employ. Ball Aerosol & Specialty
Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009).
One of ordinary skill would have readily inferred and appreciated from the
applied prior art as a whole that a glass composition may comprise 0 to 3
mol. % CaO as well as the other components listed in claim 1 as taught in
Morris. The use of such a glass composition as exemplified in Morris in the
glass laminate of Hart would have been within the skill and creativity of one
of ordinary skill in the art.
Likewise, Appellant’s argument that Morris teaches away from use of
0 to 3 mol. % CaO because it also teaches that the amount of CaO used
therein should preferably be 5–15% (Appeal Br. 6) is not persuasive.
Whether the prior art teaches away from the claimed invention is a question
of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). It is well
established that a prior art reference must be considered in its entirety, i.e.,
as a whole, when determining if it would lead one of ordinary skill in the art
away from the claimed invention. W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983). One of ordinary skill in the art
would have readily appreciated that a glass composition including the
recited amounts of the components listed in claim 1 was known. See In re
Susi, 440 F.2d 442, 446 n.3 (CCPA 1971) (Disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments.); Syntex (U.S.A.) LLC v. Apotex,
Inc., 407 F.3d 1371, 1379–80 (Fed. Cir. 2005) (Even a “statement that a
particular combination is not a preferred embodiment does not teach away
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absent clear discouragement of that combination.”). One of ordinary skill
would have expected the known glass composition exemplified in Morris to
be useful in the glass laminate of Hart. Appellant has not sufficiently
explained why the claimed subject matter is “more than the predictable use
of prior art elements according to their established functions.” KSR, 550
U.S. at 417.
Furthermore, the law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. These cases have consistently held that the
Appellant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. See, e.g., In re Peterson, 315 F.3d at 1329 (“In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990). The burden rests with Appellant to establish (1) that the alleged
unexpected results presented as being associated with the claimed invention
are, in fact, unexpected, (2) that the comparisons are to the disclosure of
closest prior art, and (3) that the supplied evidentiary showing is
commensurate in scope with the claimed subject matter. See In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972).
Appellant has not relied upon any evidence of unexpected results for
either the claimed thickness ranges or for the components’ amount ranges of
the glass composition.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, as well as all claims dependent thereon, noting that Appellant relies
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upon the arguments made for claim 1 for all the other claims, including
those claims rejected separately (See Appeal Br. 12–14).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–8, 35,
36

103 Hart, Morris,
Masuki
1, 3–8, 35,
36

21–24 103 Hart, Morris,
Masuki, Chalk
21–24
33 103 Hart, Morris,
Masuki, Reiser
33
37 103 Hart, Morris,
Masuki, Grego
37
Overall
Outcome
1, 3–8,
21–24, 33,
35–37

TIME PERIOD FOR RESPONSE
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