CORNING INCORPORATED

Patent Trials and Appeals Board

Jun 16, 2020

14053093 - (D) (P.T.A.B. Jun. 16, 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.
14/053,093 10/14/2013 Heather Bossard Decker SP13-307 2296
22928 7590 06/16/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
FIGG, LAURA B
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
06/16/2020 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 HEATHER BOSSARD DECKER, SHANDON DEE HART,
GUANGLI HU, JAMES JOSEPH PRICE, and PAUL ARTHUR
SACHENIK
Appeal 2019-003682
Application 14/053,093
Technology Center 1700
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
Appeal 2019-003682
Application 14/053,093

2
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–10, 28, and 30–32. Appeal Br. 7.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to articles including a glass
substrate that has a film disposed on its surface, and a modified interface
between the film and glass substrate. Spec. ¶ 2. Claim 1, the only
independent claim on appeal, is illustrative of the claimed subject matter and
reproduced below with emphasis in order to highlight key disputed claim
terms (Appeal Br., Claims Appendix 19):
1. An article comprising:
a glass substrate having opposing major surfaces and having
a first average strain-to-failure;
a crack mitigating layer disposed on a first major surface of
the glass substrate, the crack mitigating layer comprising a first
elastic modulus, wherein the crack mitigating layer comprises an
inorganic material; and

1 This Decision includes citations to the following documents: Specification
filed October 14, 2013 (“Spec.”); Final Office Action mailed May 3, 2018
(“Final Act.”); Appeal Brief filed October 1, 2018 (“Appeal Br.”);
Examiner’s Answer mailed February 7, 2018 (“Ans.”); and Reply Brief filed
April 8, 2019 (“Reply Br.”).
2 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
Incorporated. Appeal Br. 3.
Appeal 2019-003682
Application 14/053,093

3
a film disposed on the crack mitigating layer having a second
average strain-to-failure that is less than the first average strain-
to-failure and a second elastic modulus that is greater than the
first elastic modulus,
wherein the crack mitigating layer reduces the stress intensity
factor of a crack having a stress intensity factor and originating
in the film, as the crack bridges into one or more of the crack
mitigating layer and the glass substrate.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Amin et al.
hereinafter “Amin”
US 8,187,987 B2 May 29, 2012
Fang et al.
hereinafter “Fang”
US 2009/0142790 A1 June 4, 2009
Lemmer et al.
hereinafter
“Lemmer”
US 2011/0212311 A1 September 1, 2011
Rimsza et al.
hereinafter “Rimsza”
“Structural and Mechanical
Properties of Nanoporous
Silica” Journal of the American
Ceramic Society, Abstract
November 2013
MEMSnet Material: Niobium Oxide
(Nb2O9) film
Accessed March
2016
REJECTIONS
1. The Examiner rejected claims 1–10, 28, and 30 under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Fang, Rimsza, Amin, and
as evidenced by MEMSnet. Ans. 3–6.
Appeal 2019-003682
Application 14/053,093

4
2. The Examiner rejected claims 1, 7–10, 28, and 30–32 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Lemmer in view of
Amin. Ans. 6–7.
OPINION
Rejection 1
We limit our discussion to claim 1, which is sufficient to dispose of
the issues related to this rejection.

The Examiner’s Rejection
The Examiner found Fang discloses a glass bottom support (glass
substrate), a nanoporous silica layer (crack mitigating layer), and a film of
niobium pentoxide (film). Ans. 3, citing Fang, ¶ 9; Fig. 5. The Examiner
relied on MEMSnet to show the Young’s Modulus (modulus of elasticity) of
the niobium pentoxide layer ranges from 68–102 GPa. Id. The Examiner
found Fang is silent as to the strain-to-failure values, the porosity and elastic
modulus of nanoporous silica, and certain properties of the crack mitigating
layer recited in the claims. Id. at 4.
The Examiner relied on Rimsza’s disclosure that the porosity of silica
is directly related to elastic modulus and determined that it would have been
obvious to select the porosity of nanoporous silica so as to obtain the desired
elastic modulus including the relationship between the elastic modulus of the
crack mitigating layer and film layer recited in claim 1. Id. The Examiner
relied on Amin’s disclosure of chemically strengthened glass substrates to
determine that the compressive stress and stress depth values recited in the
claims (see claim 10) would have been obvious. Id. at 4–5.
Appeal 2019-003682
Application 14/053,093

5
The Examiner determined that because Fang as evidenced by
MEMSnet, Rimsza, and Amin teaches the same structure as claimed, it
would have been expected to have the same properties recited in the claims
including the differences between the first and second strain-to-failures
recited therein. Id. at 5–6.

Appellant’s Contentions
Appellant argues, inter alia, the Examiner’s position that the
relationship of strain-to-failure of the glass substrate and film would be
inherent based on the composition of the materials disclosed in the prior art
is not sufficiently supported. Appeal Br. 10. In particular, Appellant
contends the Specification describes strain-to-failure as a controllable
mechanical property that not only depends on the materials, but also other
factors such as deposition techniques. Id. at 11–12, citing Spec. ¶¶ 56, 85,
86, 100, 115. Appellant argues none of the references discloses a glass
substrate having a first average strain-to-failure that is greater than the
second average strain-to-failure of a film. Id. at 13.

Issue
The dispositive issue with respect to this rejection is:
Has Appellant demonstrated reversible error in the Examiner’s
position that the cited prior art would necessarily produce “a glass substrate .
. . having a first average strain-to-failure” and “a film . . . having a second
average strain-to-failure that is less than the first average strain-to-failure” as
recited in claim 1?

Appeal 2019-003682
Application 14/053,093

6
Discussion
We are persuaded by Appellant’s arguments. Although we appreciate
the Examiner’s effort and explanation with respect to the properties recited
in the claims, we agree with Appellant that the Specification provides
evidence that the mere similarity between the materials disclosed in the prior
art is insufficient to support the position that the claimed relationship
between the strain-to-failure in the glass substrate and the film would
necessarily be present.
The Specification discloses that average strain-to-failure of a glass
substrate or any other material, which may be directly correlated to average
flexural strength, “is dependent on the surface quality of such material” and
with respect to glass substrates “is dependent on the conditions of ion
exchange or strengthening process utilized in addition to or instead of the
surface quality of the glass substrate.” Spec. ¶ 56. The Specification
discloses the film may have a strain-to-failure that is lower than the strain-
to-failure of the glass substrate. Id. at ¶¶ 79, 80. Thus, although the
Examiner relies on certain disclosures in the Specification relating to
niobium pentoxide being a satisfactory film layer and nanoporous silica
having a porosity between 10% and 90% (Ans. 9–10, citing Spec. ¶¶ 6, 9,
86, 109–112), such disclosures do not address obtaining the strain-to-failure
properties recited in claim 1 as identified in the additional disclosures of the
Specification.
In this regard, we do not subscribe to the Examiner’s position that
because the examples in the Specification do not appear to address strain-to-
failure, Appellant has not provided any evidence that the strain-to-failure
properties depend on multiple factors (Ans. 8–10). As discussed above, the
Appeal 2019-003682
Application 14/053,093

7
Specification expressly discloses that strain-to-failure is dependent on
surface quality as well as other factors. Spec. ¶ 56. That the examples do
not discuss the particular strain-to-failure property of the glass substrate or
the film does not change this disclosure, which provides evidence that the
mere similarity between materials is insufficient to establish the strain-to-
failure relationship between the glass substrate and the film is necessarily
present. As stated by our reviewing court “[w]hile ‘[w]e have recognized
that inherency may supply a missing claim limitation in an obviousness
analysis,’ . . . we have emphasized that ‘the limitation at issue necessarily
must be present’ in order to be inherently disclosed by the reference.”
Southwire Co. v. Cerro Wire LLC, 870 F.3d 1306, 1311 (Fed. Cir. 2017)
quoting PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95
(Fed. Cir. 2014).
Although the Examiner relies on MEMSnet, Rimsza, and Amin to
make up for certain deficiencies in Fang, such as the elastic modulus of
niobium pentoxide, the porosity and modulus of nanoporous silica, and a
chemically strengthened glass substrate (Ans. 10), the Examiner does not
direct us to sufficient evidence or explanation that such disclosures would
necessarily result in the strain-to-failure relationship between the glass
substrate and the film recited in claim 1.
As a result, we reverse the Examiner’s rejection of claim 1, and claims
2–10, 28, and 32 dependent therefrom.

Rejection 2
We limit our discussion to claim 1, which is sufficient to dispose of
the issues related to this rejection.
Appeal 2019-003682
Application 14/053,093

8

The Examiner’s Rejection
The Examiner found Lemmer discloses a first glass substrate coated
with silicon oxynitride, which is then coated with indium tin oxide (ITO).
Ans. 6, citing Lemmer ¶¶ 20, 38, Fig. 6. The Examiner found Lemmer does
not disclose a strengthened glass substrate (see claim 10), and relied on
Amin for such a disclosure to provide the advantages of compressive stress
and compressive stress depth-of-layer disclosed therein. Ans. 6–7. The
Examiner determined that because Lemmer in view of Amin disclose the
structure recited in the claims, the same differences of strain-to-failure,
difference of elastic moduli, and reduction of stress intensity as recited in the
claims would have been expected. Id. at 7.

Appellant’s contentions
Appellant contends the Examiner has not established a prima facie
case of obviousness because Lemmer and Amin do not discuss the strain-to-
failure limitations in the claims and the fact that the materials of Lemmer are
disclosed to some degree in the Specification is not sufficient to support a
position that the claimed relationships are inherent to Lemmer in view of
Amin. Appeal Br. 16. In this regard, Appellant contends the disclosures of
Lemmer and Amin at best provide the possibility of the strain-to-failure
relationships in the claims, which is insufficient to support a position based
on inherency. Id. at 16–17.

Appeal 2019-003682
Application 14/053,093

9
Discussion
We are persuaded by Appellant’s arguments, largely for the same
reasons as discussed above in Rejection 1. That is, the Examiner similarly
relies on the identity of the materials used in Lemmer as being the same
materials disclosed in the Specification as well as the lack of examples in the
Specification in order to support the position that the strain-to-failure
relationship between the glass substrate and the film is necessarily present.
Ans. 11–12. The Examiner’s position is insufficient to support the
determination that strain-to-failure relationship between the glass substrate
and the film is necessarily present for similar reasons as discussed above.
Neither Lemmer nor Amin disclose strain-to-failure of the materials, and the
Examiner does not direct us to sufficient disclosures in Lemmer and Amin
that would provide a sufficient basis to support the position that the strain-
to-failure relationship between the glass substrate and the film recited in
claim 1 necessarily would have been present.
Accordingly, we reverse the Examiner’s rejection of claim 1 and
claims 7–10, 28, and 30–32 dependent therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 28, 30 103 Fang, Rimsza,
Amin, MEMSnet
1–10, 28, 30
1, 7–10, 28,
30–32
103 Lemmer, Amin 1, 7–10, 28,
30–32
Overall
Outcome
1–10, 28,
30–32
REVERSED