CORNING INCORPORATED

Patent Trials and Appeals Board

Mar 31, 2021

2020001613 (P.T.A.B. Mar. 31, 2021)

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.
15/181,706 06/14/2016 Antoine Gaston Denis Bisson SP15-209 6089
22928 7590 03/31/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
03/31/2021 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 ANTOINE GASTON DENIS BISSON,
KEVIN PATRICK McNELIS, ROHIT RAI,
JOHN RICHARD RIDGE, and
LJERKA UKRAINCZYK
__________

Appeal 2020-001613
Application 15/181,706
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–4, 6–9, 11, and 13. Claims 5, 12, and 14–20 are
also pending but have been withdrawn from consideration. We have jurisdiction
under 35 U.S.C. § 6(b).

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.
Appeal Brief dated August 19, 2019 (“Appeal Br.”), at 4.
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We AFFIRM IN PART.
The claims on appeal are directed to a method for controlling warp of a glass
material. Independent claims 1 and 8 are reproduced below. The limitations at
issue are italicized.
1. A method for controlling material warp, comprising:
placing a glass material and shaped mold in a heating device to
heat the glass material and the shaped mold;
forming the glass material into a shape of the shaped mold;
cooling the glass material and the shaped mold to a
predetermined viscosity of the glass material;
holding, for a predetermined time prior to removing the glass
material and the shaped mold from the heating device, the glass
material and the shaped mold in the heating device where a
temperature of the heating device is substantially equal to a
temperature of the shaped mold and the glass material just prior to
exiting the heating device into ambient temperature; and
removing the glass material and the shaped mold from the
heating device and unloading the glass material from the shaped mold
such that the glass material cools to the ambient temperature
separately from the shaped mold, wherein after removing the glass
material and the shaped mold from the heating device, the glass
material will exhibit a desired material warp.
Appeal Br. 50.
8. A method for controlling material warp, comprising:
forming a glass material into a shape of a shaped mold, wherein
the shaped mold and the glass material are placed into a heating
device, wherein the shaped mold comprises a center section and an
edge, wherein the glass material and the shaped mold are heated to
create a predetermined temperature differential between the edge and
the center section;
cooling the glass material and the shaped mold to a
predetermined viscosity of the glass material, wherein the
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predetermined temperature differential between the edge and the
center section is maintained;
further cooling, for a predetermined time prior to removing the
glass material and the shaped mold from the heating device, the glass
material and the shaped mold such that a temperature of the shaped
mold is substantially equal to a temperature of the heating device; and
removing the glass material and the shaped mold from the
heating device and unloading the glass material from the shaped mold
such that the glass material cools to ambient temperature separately
from the shaped mold, wherein after removing the glass material and
the shaped mold from the heating device, the glass material will
exhibit a desired material warp.
Appeal Br. 51.
On appeal, the Appellant seeks review of the following grounds of rejection:
(1) claim 1 under 35 U.S.C. § 103 as unpatentable over Kladias et al. 2 in
view of Nishitani et al.;3
(2) claims 1 and 8 under 35 U.S.C. § 103 as unpatentable over Luo et al.4
in view of Nishitani; and
(3) claims 2–4, 6, 7, 9, 11, and 13 under 35 U.S.C. § 103 as unpatentable
over Luo in view of Nishitani, further in view of Immerman et al.5
The Appellant does not seek review of the rejection of claim 3 under
35 U.S.C. § 112(b) as indefinite. Appeal Br. 16. Therefore, that rejection is
sustained for the reasons provided by the Examiner. Final Act. 2.6

2 US 2013/0125588 A1, published May 23, 2013 (“Kladias”).
3 EP 0 400 631 A2, published December 5, 1990 (“Nishitani”).
4 US 2015/0047393 A1, published February 19, 2015 (“Luo”).
5 US 2014/0234581 A1, published August 21, 2014 (“Immerman”).
6 Final Office Action dated January 7, 2019.
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B. DISCUSSION
1. Claims 1–4, 6, and 7
The Examiner finds Kladias and Luo both disclose a method for controlling
material warp but finds that neither reference discloses a “holding” step as recited
in claim 1. See Final Act. 4, 5. The Examiner finds Nishitani discloses the
claimed “holding” step. Final Act. 4, 5–6.
Claim 1 recites,
holding, for a predetermined time prior to removing the glass
material and the shaped mold from the heating device, the glass
material and the shaped mold in the heating device where a
temperature of the heating device is substantially equal to a
temperature of the shaped mold and the glass material just prior to
exiting the heating device into ambient temperature.
Appeal Br. 50.
The Examiner interprets the claimed “holding” step as “holding (i.e. placing)
the glass material and mold in the furnace until a substantially equal temperature is
reached just prior to exiting. That is, the glass and mold [are] held in the furnace
where a substantially equal temperature (among the furnace, mold, and glass) is
reached just prior to exiting.” Ans. 5.7
The Appellant argues that “[t]he claim language of claim 1 and the language
of the specification require that the glass material and the mold are held for a
period of time at the same temperature as the heating device.” Reply Br. 58
(emphasis added); see also Appeal Br. 24–25, 34–35. More specifically, the
Appellant argues,
The “predetermined time” is the period of time just prior to
exiting the shaped mold and the glass material from the heating

7 Examiner’s Answer dated October 29, 2019.
8 Reply Brief dated December 30, 2019.
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device. Claim 1 requires all three elements (the glass material, the
shaped mold, and the heating device) to have substantially equal
temperature for a period of time just prior to exiting the glass material
and the shaped mold from the heating device.
Reply Br. 6.
The Appellant’s interpretation of the claimed “holding” step is supported by
the express language of claim 1. Therefore, we interpret claim 1 as requiring the
heating device, the shaped mold, and the glass material to be held at substantially
equal temperatures for a predetermined period of time just prior to the shaped mold
and the glass material exiting the heating device into ambient temperature. The
Appellant discloses that “substantially equal” may include “a difference of 5% or
less, 4% or less, 3% or less, 2% or less, or 1% or less.” Spec. ¶ 32. Moreover, the
Appellant discloses that a “predetermined time . . . may be at least about 15
seconds to about 30 seconds” and, by definition, is a period of time that is selected
in advance of the claimed holding step. Id.
According to the Appellant, the Examiner finds that the glass material and
the shaped mold in Nishitani are held in the heating device until the temperature of
the heating device is substantially the same as the temperature of the mold and the
glass material before removing them from the heating device. Appeal Br. 24, 34.
The Appellant argues that the Examiner “does not assert that the three components
are held together at the same temperature for a predetermined period of time before
the glass material and the shaped mold are removed from the heating device” as
recited in claim 1. Appeal Br. 25, 35 (emphasis added).
The Examiner relies on page 5, lines 50–57 and page 8, lines 15–19 of
Nishitani to show that Nishitani discloses the claimed “holding” step. Final Act. 4,
5–6.
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We turn to those portions of Nishitani. In one example, Nishitani discloses
that a glass plate and a ring-like holder (corresponding to the claimed mold9)
remained in an annealing furnace “for 1 min.” Nishitani 5, ll. 56–57. Nishitani
does not disclose that the temperatures of the glass plate, the holder, and the
furnace were substantially the same for any portion of that one (1) minute.
Nishitani, in another example, discloses that a glass plate and a ring-like
holder are kept in an annealing furnace “until the temperature of the glass plate
lowers to the temperature in the annealing furnace. After that the ring-like holder
is taken out of the furnace.” Nishitani 8, ll. 17–19 (emphasis added). Thus,
Nishitani does not disclose that the glass material and the holder are held in the
furnace for any period of time, let alone a predetermined period of time, after the
glass material, the holder, and the furnace are substantially the same temperature.
In sum, the Examiner has failed to show that the “holding” step recited in
claim 1 is either described in or rendered obvious by Nishitani. Therefore, the
obviousness rejections of claim 1, based on the combination of Kladias and
Nishitani and the combination of Luo and Nishitani, are not sustained.
The Examiner’s reliance on Immerman does not cure the deficiencies in
Nishitani identified above. See Final Act. 6–8, 10. Therefore, the obviousness
rejection of claims 2–4, 6, and 7, based on the combination of Luo, Nishitani, and
Immerman, is not sustained.

9 The Appellant argues that Nishitani’s ring-like holder is not a shaped mold within
the scope of the claims on appeal. Appeal Br. 25–28, 35–36, 44–45. It is not
necessary to address that argument in view of our reasons for reversing the
obviousness rejections on appeal.
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2. Claims 8, 9, 11, 13
The Examiner finds Luo discloses a method for controlling material warp
but does not disclose the “further cooling” step recited in claim 8. Final Act. 9.
The Examiner, however, finds Nishitani discloses cooling a glass material and a
shaped mold in an annealing furnace “for a predetermined time period such that the
temperature of the heating device is substantially the same as the temperature of
the mold and the glass material before exiting the heating device.” Final Act. 9.
The Examiner finds that cooling the glass material and the mold in the annealing
furnace “allows for proper annealing of the glass material, thus avoiding cracks in
the glass material.” Final Act. 9 (citing Nishitani 6, ll. 34–35). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art to
employ a similar cooling step in Luo “so as to provide annealing of the glass
materials to prevent cracking when removed from a hot furnace.” Final Act. 9
(emphasis added).
The Appellant argues that Nishitani cools the periphery of a glass plate using
a ring-like holder to temper the edges of the glass plate and the cracks referred to
in Nishitani “only appear in the peripheral region of the glass plate, which is the
only location of the glass plate that contacts the ring-like holder.” Appeal Br. 45,
46. The Appellant argues that “[t]hese cracks are most likely due to the very low
temperature ring-like holder for tempering.” Appeal Br. 46–47. Therefore, the
Appellant argues that the Examiner’s rationale for combining Luo and Nishitani is
improper. Appeal Br. 46.
In response, the Examiner finds that cracking is related to an annealing
process. Ans. 7. The Examiner finds that the data in Nishitani establishes that
“[i]mproperly annealed glass retains thermal stresses and is likely to crack when
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subjected to thermal or mechanical stress.” Ans. 7. More specifically, the
Examiner finds,
In Table 1, Nishitani teaches in example 2 the glass plate is placed on
a room temperature ring-like holder and annealed at 300°C. This
resulted in no cracks. Meanwhile, in comparative example 1, the
glass plate is similarly placed on a room temperature ring-like holder
and not annealed.[10] This resulted in a cracked glass plate.
Ans. 7 (emphasis added).
Claim 8 recites, in relevant part,
further cooling, for a predetermined time prior to removing the
glass material and the shaped mold from the heating device, the glass
material and the shaped mold such that a temperature of the shaped
mold is substantially equal to a temperature of the heating device.
Appeal Br. 51 (emphasis added).
The Examiner does not direct us to any portion of Nishitani disclosing that
the cracking described in Nishitani’s Comparative Example 1 is prevented by
cooling the glass material and the ring-like holder in the annealing furnace until a
temperature of the holder is substantially equal to the temperature of the furnace as
recited in claim 8. Rather, it appears that the cracking described in Nishitani’s
Comparative Example 1 is prevented by merely moving the hot glass plate and the
room temperature holder into the annealing furnace. See Nishitani 6, ll. 15–18 (the

10 In Comparative Example 1, Nishitani states,
[T]he initial temperature of the curved glass plate was raised to
670°C, [and] the ring-like holder . . . was kept at room temperature
until receiving thereon the curved and still hot glass plate and . . . the
ring-like holder carrying thereon the hot glass plate was immediately
taken out of the furnace and left standing at room temperature
without using the annealing furnace. As a result, cracks appeared in
the peripheral region of the glass plate.
Nishitani 6, ll. 31–35 (emphasis added).
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holder, in Examples 2, 7, and 8, was left at room temperature until receiving a hot
glass plate and was thereafter introduced into the annealing furnace); Nishitani 7,
Table 1 (glass plates in Examples 2, 7, and 8 were not reported to have cracks); see
also Reply Br. 13 (contending that “[t]he biggest factor of whether or not there will
be cracks is expressly mentioned by Nishitani, and that is the temperature
differential between the glass plate and the ring-like holder”). Therefore, absent
the Appellant’s disclosure, there would have been no reason to modify Luo’s
method to include the “further cooling” step recited in claim 8, as proposed by the
Examiner. For that reason, the obviousness rejection of claim 8, based on the
combination of Luo and Nishitani, is not sustained.
The Examiner’s reliance on Immerman does not cure the deficiencies in
Nishitani identified above. See Final Act. 10–11. Therefore, the obviousness
rejection of claims 9, 11, and 13, based on the combination of Luo, Nishitani, and
Immerman, is not sustained.
C. CONCLUSION
The Examiner’s decision is affirmed in part.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3 112(b) Indefinite 3
1 103 Kladias, Nishitani 1
1, 8 103 Luo, Nishitani 1, 8
2–4, 6, 7, 9,
11, 13
103 Luo, Nishitani,
Immerman
2–4, 6, 7, 9,
11, 13
Overall
Outcome
3 1, 2, 4, 6–9,
11, 13

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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 IN PART