Timothy Michael. GrossDownload PDFPatent Trials and Appeals BoardDec 2, 201914331753 - (D) (P.T.A.B. Dec. 2, 2019) Copy Citation 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. 14/331,753 07/15/2014 Timothy Michael Gross SP13-237 8474 22928 7590 12/02/2019 CORNING INCORPORATED SP-TI-3-1 CORNING, NY 14831 EXAMINER SAMPLE, DAVID R ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 12/02/2019 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 TIMOTHY MICHAEL GROSS Appeal 2019-001623 Application 14/331,753 Technology Center 1700 Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and DEBRA L. DENNETT, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1, 2, and 4–23 under 35 U.S.C. § 103 as unpatentable over Koyama (US 2012/0171497 A1, pub. July 5, 2012).3 1 This Decision includes citations to the following documents: Specification filed July 15, 2014 (“Spec.”); Final Office Action dated Feb. 6, 2018 (“Final”); Appeal Brief filed July 3, 2018 (“Appeal Br.”); Examiner’s Answer dated Oct. 1, 2018 (“Ans.”); and Reply Brief filed Dec. 3, 2018 (“Reply Br.”). 2 We use the word “Appellant” to refer to the “Applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Corning Incorporated. Appeal Br. 1. 3 We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2019-001623 Application 14/331,753 2 We affirm, but denominate the affirmed rejection a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). CLAIMED SUBJECT MATTER The invention “relates to hybrid soda-lime silicate and aluminosilicate glass articles and, more specifically, to ion exchangeable hybrid soda-lime silicate and aluminosilicate glass articles.” Spec. ¶ 2. Claim 1, reproduced below from the Appeal Brief Claims Appendix, is illustrative of the claimed subject matter: 1. A glass article comprising: from greater than or equal to 40 mol% to less than or equal to 68 mol% SiO2; less than or equal to 11 mol% Al2O3; greater than or equal to 14 mol% Na2O; an R2O:R'O molar ratio of from greater than or equal to 1:1 to less than or equal to 2:1; an MgO:CaO molar ratio of from greater than or equal to 0.6:1 to less than or equal to 1.8:1; a compressive stress layer on at least one surface thereof, the compressive stress layer having a compressive stress that is greater than or equal to 800 MPa; a strain point from greater than or equal to 525°C to less than or equal to 575°C; and a coefficient of thermal expansion of less than 97x10-7 °C-1 in the temperature range of 25°C to 300°C. OPINION The Appellant argues in support of patentability of independent claims 1, 17, and 21, and dependent claims 22 and 23. The remaining claims Appeal 2019-001623 Application 14/331,753 3 will stand or fall with claim 1 or claim 17. See 37 C.F.R. § 41.37(c)(iv) (2017). The Appellant contends that the Examiner erred reversibly in finding that Koyama discloses or suggests a glass article that “is free of lithium” (claims 21–23). See generally Appeal Br. 7–8. The Examiner acknowledges that Koyama discloses that Li2O is present in a range of greater than 0 to less than or equal to 2.5%, but asserts that “a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” Final 4 (citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). In the Answer, the Examiner finds that Koyama teaches the benefits and detriments of Li2O, and determines that the ordinary artisan would have omitted Li2O from Koyama’s glass composition due to its detrimental qualities. Ans. 10–11. The Appellant argues that eliminating Li2O would render Koyama’s glass unsuitable for its intended purpose. Appeal Br. 8; Reply Br. 4. The Appellant argues that “Koyama explicitly discloses that the inclusion of Li2O materially changes the properties of the glass, even when present in ‘trace amounts,’” and, therefore, the ordinary artisan would not have expected a glass that is free of lithium to have the same properties as a glass that contains even a trace amount of lithium. Appeal Br. 8 (citing Koyama ¶ 128); see id. (arguing that “the holding in Titanium Metals was based on the presumption that ‘[t]he proportions are so close that prima facie one skilled in the art would have expected them to have the same properties’”). The Appellant’s argument is not persuasive because it is not commensurate in scope with the claims. The Specification defines “[t]he terms ‘free’ and ‘substantially free,’ when used to describe the concentration Appeal 2019-001623 Application 14/331,753 4 and/or absence of a particular constituent component in a glass composition, [as] mean[ing] that the constituent component is not intentionally added to the glass composition,” but may be present “as a contaminant in amounts of less than 0.10 mol%.” Spec. ¶ 12. Koyama discloses that the Li2O content for glass composition (A) “is preferably 0.001% by mole or greater, . . . and particularly preferably 0.5% by mole or less.” Koyama ¶ 132. Koyama’s disclosure of an Li2O range (0.001%–0.5%) that overlaps with the claimed range (0 to less than 0.10%) is sufficient to establish a prima facie case of obviousness. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Although Koyama describes “introducing Li2O in trace amounts” (Koyama ¶ 128 (emphasis added)), we find no indication that these trace amounts cannot be present as a contaminant. Even if Koyama’s disclosure was limited to a glass article containing Li2O that was introduced intentionally, because the claims are directed to a glass article, not its method of manufacture, the burden is on the Appellant to show a difference between the claimed glass article and Koyama’s glass article. The Appellant contends that the Examiner erred reversibly in finding that Koyama discloses or suggests a glass article having an “R2O:R'O molar ratio of from greater than or equal to 1:1 to less than or equal to 2:1” as recited in independent claims 1, 17, and 21. See generally Appeal Br. 3–5. The Appellant argues that “the genus of glass compositions disclosed by Koyama does not provide a finite number of identified predictable solutions that provide motivation for one of [ordinary] skill in the art to arrive at the glass composition of the present claims.” Id. at 5. The Appellant argues that “Koyama provides no guidance regarding which ratios of R2O:R'O are suitable or desired[, and it] would not be possible for one of skill in the art to Appeal 2019-001623 Application 14/331,753 5 select the claimed ratio of R2O:R'O based on the compositional ranges disclosed by Koyama with predictable success.” Id. at 4–5. The Appellant argues similarly that the Examiner erred reversibly in finding that Koyama discloses or suggests a glass article having an “MgO:CaO molar ratio of from greater than or equal to 0.6:1 to less than or equal to 1.8:1” as recited in independent claims 1 and 21. See generally Appeal Br. 6–7. In response, the Examiner provides a table comparing Koyama’s preferred ranges for the glass components with the Appellant’s claimed ranges. Ans. 5. The Examiner finds, and we agree, that there is a substantial overlap between Koyama’s preferred ranges and the claimed ranges. Id.; see also Final 2–3. Below is a table similar to the Examiner’s table, but comparing the claimed glass components with the preferred ranges for Koyama’s cover glass (A) and two of Koyama’s exemplary glass formulations, Examples 36A and 37A.4 COMPONENT CLAIMS KOYAMA 1 17 21 Cover Glass (A) Ex. 36A (Table 1- 6) Ex. 37A (Table 1- 6) SiO2 40–68% 40–68% 40–68% 50–70%, “even more preferably” 63–67% (¶ 104) 65.4% 67.3% Al2O3 ≤ 11% ≤ 11% ≤ 11% 3–20% “particularly preferably” 6–11% (¶ 111) 9.4% 7.8% K2O 1–3.5% (claim 8) 1–3.5% ≤5.5%, “preferably” 1.2– 1.9% (¶ 140) 1.8% 1.5% Na2O ≥ 14% 14–20% (claim 19) ≥ 14% 5–25%, “particularly preferably”14–18% (¶ 124) 15.1% 15.0% MgO 4–9% (claim 4) 0–15%, “preferably” 3– 10% (¶ 177) 3.5% 3.5% 4 All percentages in the table refer to mole %. Appeal 2019-001623 Application 14/331,753 6 COMPONENT CLAIMS KOYAMA 1 17 21 Cover Glass (A) Ex. 36A (Table 1- 6) Ex. 37A (Table 1- 6) CaO 2.5–8% (claim 6) ≥ 2.5% 0–10% (¶ 191) 3.7% 3.6% Li2O Free of lithium (claim 22) Free of lithium (claim 23) Free of lithium >0%, “preferably” ≥ 0.001%, “particularly preferably” ≤ 0.5% (¶ 132) 0.5% 0.7% R2O (“such as Na2O and/or K2O” (Spec. ¶ 13)) 16–21% (≥8% , “even more preferably” 17–20% Na2O + Li2O + K2O (¶ 149)) (Na2O + Li2O + K2O = 17.4%) (Na2O + Li2O + K2O = 17.2%) R'O (“such as MgO, CaO, SrO, BaO, and/or ZnO” (Spec. ¶ 13)) (“SrO and BaO are optional components” (¶ 197)) (“total content by percentage of MgO, CaO, SrO, and BaO is suitably 3% to 20%” (¶ 207)) (“The total content by percentage of SrO, BaO, and ZnO may be, for example, 0% to 10% by mass.” (¶ 201)) MgO:CaO 0.6:1– 1.8:1 0.6:1– 1.8:1 0–15%:0–10% (¶¶ 177, 191) 3.5:3.7 = .95:1 3.5:3.6 = .97:1 R2O:R'O 1:1–2:1 1:1–2:1 1:1–2:1 (≥ 0.11, “preferably 0.2– 1.0” MgO/Na2O + Li2O + K2O = (¶ 185)) (Na2O + Li2O + K2O:MgO +CaO = 17.4:3.5+ 3.7 = 2.42:1) (Na2O + Li2O + K2O:MgO +CaO = 17.2:3.5+ 3.6 = 2.42:1) As is apparent from the comparison in the table above, Koyama discloses embodiments wherein the component concentrations overlap (cover glass (A)) or fall within (Examples 36A, 37A) the claim 1, claim 17, and claim 21 ranges. Although Koyama does not disclose explicitly an R2O:R'O ratio, Koyama discloses a ratio of MgO:Na2O + Li2O + K2O for cover glass (A) that includes 1:1, overlapping the claimed range of 1:1–2:1. As to Koyama’s Examples 36A and 37A, the ratio of components falling Appeal 2019-001623 Application 14/331,753 7 within the definition of R2O (i.e., Na2O, Li2O, and K2O) to components falling within the definition of R'O (i.e., MgO and CaO) is 2.42:1, which is close to the 2:1 upper limit of the claimed range. Though not disclosed explicitly, we calculate the MgO:CaO ratios in Examples 36A and 37A as 0.95:1 and 0.97:1, respectively, using the MgO and CaO contents in these exemplary embodiments. Both ratios fall within the claim 1 and claim 21 range of 0.6:1–1.8:1. A prima facie case of obviousness exists where the prior art and the claimed ranges overlap, as well as in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same properties. Peterson, 315 F.3d at 1329. Thus, contrary to the Appellant’s contention, we find that Koyama provides direction as to which of many possible choices of components and concentrations is likely to be successful. See PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir. 2007). The fact that Koyama may “disclose[] a multitude of effective combinations does not render any particular formulation less obvious,” Merck & Co., Inc. v. Biocraft Labs, 874 F.2d 804, 808 (Fed. Cir. 1989) (citations omitted). Moreover, as found by the Examiner, “Koyama offers ample guidance regarding the inclusion of the R'O and R2O ingredients and their effects on the ion exchange properties of the glass.” Ans. 6–7 (quoting Koyama ¶¶ 147, 181, 189, 198). In other words, Koyama indicates that selecting the proper component amounts and ratios would have required no more than routine experimentation by one of ordinary skill in the art. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Aller, 220 F.2d 454, 456 Appeal 2019-001623 Application 14/331,753 8 (CCPA 1955) (“[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.”)). The Appellant relies on Specification paragraphs 23 and 25 as evidence of unexpected results in the claimed MgO:CaO and R2O:R'O ranges. Appeal Br. 5–7. We agree with the Examiner that the Specification fails to include the type of evidence—e.g., comparison testing with the closest prior art—that would support a finding of unexpected results. Ans. 8–9; see In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994) (“[U]nexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification do[] not suffice.”); In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (explaining that mere conclusory statements of superiority in the specification and/or the brief, unsupported by factual evidence, are of little probative value). In the Reply Brief, the Appellant argues that Koyama fails to recognize the benefits achieved by the claimed MgO:CaO and R2O:R'O ranges. Reply Br. 3. “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 difference would otherwise have been obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). CONCLUSION Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 4–23 103 Koyama 1, 2, 4–23 1, 2, 4– 23 Appeal 2019-001623 Application 14/331,753 9 Because we recognize our Decision relies on facts and reasons not expressly stated by the Examiner, we denominate the affirmed rejection as A NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 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 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation