Ex Parte 7,976,360 et al

Patent Trials and Appeals Board

Aug 26, 2013

95001724 - (D) (P.T.A.B. Aug. 26, 2013)

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.
95/001,724 08/24/2011 7,976,360 MODEP001.RE 5227
52785 7590 08/26/2013
PATENT VENTURE GROUP
10788 CIVIC CENTER DRIVE
SUITE 215
RANCHO CUCAMONGA, CA 91730
EXAMINER
ENGLE, PATRICIA LYNN
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

MODERUSTIC, INC.,1
Patent Owner and Appellant

v.

AMERICAN FIREGLASS, INC.,
Requester and Respondent
______________

Appeal 2013-009126
Reexamination Control No. 95/001,724
United States Patent 7,976,360 B22
Technology Center 3900
______________

Before JOHN C. MARTIN, DANIEL S. SONG, and
MICHAEL L. HOELTER, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

1 Moderustic, Inc., is identified as the assignee on the first page of
Patent 7,976,360 B2 (hereinafter “‟360 patent”) and in the USPTO
assignment records at Reel/Frame 025926/0845, dated March 7, 2011.
Edward E. Jaunzemis, one of the two co-inventors named in the ‟360 patent,
is identified as owning Moderustic, Inc., in the December 7, 2007,
“Declaration Under Rule 132” by Mr. Jaunzemis (hereinafter “Jaunzemis
Declaration”), Ex. F to “Patent Owner‟s Appeal Brief.”
2 Issued to Edgar Edward Jaunzemis and Claudia Sue Jaunzemis on
July 12, 2011, based on Application 11/319,957, filed December 28, 2005, as
(Continued on next page.)
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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the
Examiner‟s rejections of claims 1-17 (which are all of the claims) of the
‟360 patent. Requester is a party to this appeal pursuant to 35 U.S.C.
§ 315(b)(2).
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315.
We affirm the Examiner‟s rejections and designate the affirmance of
these rejections as new grounds of rejection pursuant to our authority under 37
C.F.R. § 41.77(b).

I. STATEMENT OF THE CASE
A. Requester’s ―Lack of Standing‖ Argument
“Patent Owner‟s Appeal Brief” (hereinafter cited as “P.O. Br.”)
identifies Mr. Jaunzemis as the “Patent Owner” and the real party in interest.
P.O. Br. cover sheet and 1, heading I.3 Requester, based on the fact that

Moderustic, Inc., is identified as the assignee of record at Reel/Frame
025926/0845 of the USPTO assignment records, argues:

a continuation-in-part of Application 10/413,620, filed on April 14, 2003
(abandoned).
3 The cover of this brief incorrectly identifies the reexamination control
number as 95/001,320.
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B. ARGUMENT REGARDING LACK OF STANDING
TO FILE APPEAL BRIEF
The Appellant identified as Edgar Edward Jaunzemis
lacks standing to file this appeal brief at issue, and thus, the
appeal is not proper and should be disregarded.
37 CFR § 41.61(a)(1) states “[u]pon the issuance of a
Right of Appeal Notice under § 1.953 of this title, the owner may
appeal to the Board with respect to the final rejection of any
claim of the patent by filing a notice of appeal within the time
provided in the Right of Appeal Notice...” [underline added].
The term “[o]wner means the owner of the patent undergoing
inter partes reexamination under § 1.915 of this title.” 37 CFR
§ 41.60. Further, “Appellant(s) may once, within time limits for
filing set forth in § 41.66, file a brief and serve the brief on all
other parties...” 37 CFR § 41.67.
The appeal brief has been filed by a party other than the
patent “owner” as defined by the above mentioned statute, and
thus the Appellant lacks standing and the appeal is not proper
and should not be considered.
“Replacement Respondent Brief” (hereinafter “Req. Br.”) 3-4 (brackets in
original). Requester also states: “Respondent disputes Appellant‟s statement
of real party in interest for the reasons set forth above in Section B.” Req. Br.
4, heading C.
These arguments are in effect a request for the Board to strike Patent
Owner‟s Brief for failing to comply with the rules, which is not an appealable
matter. This request is dismissed because striking a paper from a
reexamination file is properly raised only by a petition filed under 37 C.F.R. §
1.181. See Streamlined Patent Reexamination Proceedings; Notice of Public
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Meeting, 76 Fed. Reg. 22584, 22858 (Apr. 25, 2011) (describing examples of
petitions commonly filed in reexamination proceedings, including “[s]triking
another party‟s improper paper (or portion thereof) from the file,” which the
notice indicates is petitionable under 37 C.F.R. § 1.181). No such petition
has been filed.

B. Related Appeals
Application 11/319,957, which matured into the ‟360 patent that is the
subject of this reexamination proceeding, was the subject of Board Appeal
2009-008628. In a Decision on Appeal entered on December 10, 2010
(hereinafter “Prior Decision”), the Board reversed all of the Examiner‟s
rejections, including a rejection of claims 1-20 under 35 U.S.C. § 103(a) for
obviousness over Georgantas4 and Arpaio,5 two of the references relied upon
in the rejections before us in this appeal. Prior Decision 5-6. Furthermore,
pursuant to 37 C.F.R. § 41.50(b), the Board, relying on the above-noted
Jaunzemis Declaration, entered a new ground of rejection of independent
application claims 1, 9, and 17 (and other claims) under 35 U.S.C. § 103(a)
“as obvious in view of Arpaio, the Jaunzemis Declaration, and Georgantas.”
Id. at 7.
Applicant, pursuant to 37 C.F.R. § 41.50(b)(1), elected to reopen
prosecution before the Examiner and filed amendments to independent claims

4 Georgantas, US 6,409,500 B2, issued June 25, 2002.
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1, 9, and 17 and other claims. „957 Application, Amendment filed on
February 10, 2011, at 4-7. Following further claim amendments filed
February 25, 2011, and May 3, 2011, claims 1, 2, 4-12, and 14-19 (i.e., all of
the pending claims) were indicated as allowable in a “Notice of Allowance
and Issue Fee(s) Due,” mailed May 18, 2011. Amended application claims 1,
9, and 17 correspond to claims 1, 8, and 15 of the ‟360 patent.

C. This Reexamination Proceeding
The “Request for Inter Partes Reexamination of U.S. Patent 7,976,360”
(hereinafter “Request”), filed August 24, 2011, requested
reexamination of claims 1-17, all of the original patent claims, under
35 U.S.C. §103(a). The Request proposed rejections of claims 1-17 under
35 U.S.C. § 103(a) based on the following combinations of references:
(1) “The ASTM Standard[6] in view of Georgantas and Arpaio”
(Request 19);
(2) “The Glazing Manual[7] in view of Georgantas and Arpaio” (id. at
27); and
(3) “Georgantas, as read in light of the newly discovered Disclosure
Document, and in view of Arpaio.” Id. at 35.

5 Arpaio, U.S. Patent 5,486,135, issued January 23, 1996.
6 Designation C 1048 – 97b, Standard Specification for Heat-Treated Flat
Glass—Kind HS, Kind FT Coated and Uncoated Glass, pages 1-7 (1998).
Ex. D to P.O. Br.
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The Request (at iii) identifies the “Disclosure Document” (Ex. H to
Request) as an “Accelerated Examination Support Document filed on January
19, 2007 in U.S. Patent Application No. 11/625,195.” The ʼ195 application
(now abandoned) identifies itself as a continuation of Application 11/319,957,
which issued as the ‟360 patent under reexamination. The Disclosure
Document (at 3-5) compares the claims of the ‟195 application to Georgantas.
According to the Request, the Disclosure Document “sheds new light on the
teachings of Georgantas” because it contains admissions regarding Georgantas
that contradict assertions made to obtain allowance of the ‟195 application.
Request 14. For this reason, the Request argues (at 15) that a substantial new
question of patentability (SNQ) is raised by Georgantas when read in view of
the Disclosure Document.
The Examiner ordered reexamination of all claims in an October 21,
2011, “Order Granting/Denying Request for Inter Partes Reexamination”
(hereinafter “Order”) at 2. The Examiner determined that the ASTM
Standard and the Glazing Manual each raise a substantial new question of
patentability (SNQ) (Order 6-7) but determined that Georgantas when read in
view of the Disclosure Document does not. Id. at 12. The Examiner also
concluded that an SNQ is not raised by Georgantas (when read in view of the
Disclosure Document) in view of Arpaio. Id.

7 Glazing Manual, Glass Ass‟n of North America (1997). Ex. E to P.O. Br.
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In a non-final Office action also mailed on October 21, 2011, the
Examiner rejected claims 1-17 under 35 U.S.C. § 103(a) based on the
following grounds, which are the grounds before us in this appeal:
(i) “Arpaio in view of Georgantas, the Jaunzemis Declaration and the
ASTM Standard” (id. at 4); and
(ii) “Arpaio in view of Georgantas, the Jaunzemis Declaration and the
Glazing Manual.” Id. at 7.
Patent Owner‟s “Response and Amendment to Office Action in Inter
Part[]es Reexamination,” filed December 19, 2011, added (at 15) new claims
18-26. These claims were subsequently canceled.8
The above-noted rejections of claims 1-17 were adhered to in the March
2, 2012, Action Closing Prosecution (“ACP”) at pages 5 and 9 and in the May
25, 2012, Right of Appeal Notice (“RAN”) at pages 4 and 7.
Patent Owner filed a Notice of Appeal on June 25, 2012, and the above-
noted “Patent Owner‟s Appeal Brief” on September 10, 2012.
A “Third Party Requester‟s Respondent‟s Brief Pursuant to 37 C.F.R.
§ 41.68,” filed on October 9, 2012, was sua sponte replaced on October 10,
2012, by the above-noted “Replacement Respondent Brief.”
The Examiner‟s Answer, mailed March 13, 2013, incorporates the
RAN by reference without adding any further analysis. No rebuttal brief was
filed by either party.
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D. The Invention Described in the ’360 Patent
The invention described in the ‟360 patent relates to “processing
broken glass waste product into useful smooth glass pieces useful in, for
example, lapidary construction, art, and functional interior and exterior
decorating.” ‟360 patent 1:17-52. The patent explains:
One type of glass waste product is broken glass. In
general, once a glass pane is broken, there is little use for the
broken shards or the remainder of the broken glass pane. Broken
tempered glass, such as window shields for automobiles,
presents a particular recycle problem because the resultant glass
comprises small, sharp, glass pieces that are fire resistant.
Id. at 1:53-59 (emphasis as added).
The solution presented in the ‟360 patent is described as applicable to
“normal heat-treated glass” (id. at 2:5-6) and involves “placing a plurality of
heat-treated glass fragments into a tumbling apparatus” (id. at 2:10-11),
followed by tumbling the glass fragments “for a predetermined period of time
such that surfaces of the heat-treated glass fragments are smoother than prior
to tumbling.” Id. at 2:14-17.9 The tumbling operation can also include
placing an aqueous or non-aqueous additive in the tumbling apparatus along
with the heat-treated glass fragments. Id. at 2:32-38.

8 April 2, 2012, “Response and Amendment to Action Closing Prosecution in
Inter Part[]es Reexamination,” at 13.
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The ‟360 patent describes “heat-treated glass” (a term that does not
appear in the claims) as follows:
[T]he term heat-treated glass shall refer to any glass that is
processed to create a surface compression such that the fraction
pattern of the glass results in many small glass fragments.
Hence, the term heat-treated glass shall refer to, for example,
fully tempered glass, heat-strengthened glass, also known as
toughened glass, or any other glass heat processed to create a
similar fracture pattern.
Id. at 5:35-38. The „360 patent further describes “fully tempered glass” and
“toughened glass” as follows:
The heat-treated glass fragments can be formed from fully
tempered or toughened glass. For example, the heat-treated
glass fragments can be formed from tempered glass that has been
heated to a temperature in the range of about 1,200° to 1,600°
Fahrenheit and rapidly cooled to a temperature below 600°
Fahrenheit. In this case, the tempered glass has a surface
compression of at least 10,000 PSI. Alternatively, each glass
fragment can be formed from toughened glass that has a surface
compression of at least 3,500 pounds-force PSI.
Id. at 2:20-29 (emphasis added).
The ‟360 patent explains that “tumbling the heat-treated glass
fragments for 2 hours typically results in smooth, very rounded, bead-like
heat-treated glass fragments.” Id. at 7:15-18. Figure 6 of the ‟360 patent is
reproduced below.

9 The fragments can be processed “via tumbling and/or polishing and/or
vibrating.” ‟360 patent 5:29-31.
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Figure 6 is an illustration showing an exemplary smoothed, heat-treated glass
fragment 600 after being removed from the tumbling apparatus. Id. at 7:22-
25.
[T]he smoothed, heat-treated glass fragment 600 can be directly
handled without hand protection and utilized in various projects
including art, decoration, facade, stone work, lapidary,
construction, paving, laminates, decorative, functional and
nonfunctional interior and exterior decorating.
Id. at 7:27-32 (emphasis added).
Figure 10 of the ‟360 patent is reproduced below.
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Figure 10 is an illustration showing an exemplary use of the smoothed, heat-
treated glass pieces in a fireplace 1000. Id. at 9:36-37. “The smoothed, heat-
treated glass pieces 904 will not distort, explode, or otherwise be damaged by
the gas fire 902 because the smoothed glass pieces 904 of the embodiments of
the present invention have been heat-treated.” Id. at 9:44-47.

E. The Claims on Appeal
The independent claims (i.e., claims 1, 8, and 15) are reproduced
below. Each of these claims recites agitating a plurality of “standard
tempered glass fragments.” Claim 1 recites that the glass fragments are
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formed from “standard fully tempered glass” having a surface compression of
at least 3,500 PSI, while claim 8 recites that the glass fragments are formed
from “standard fully tempered glass” that that has been rapidly cooled by
application of an air quench that leaves a center area of the heated glass hotter
than the surfaces. Claim 15 recites that the glass fragments are formed from
“standard glass” that: (i) has been heated only once to a temperature of at least
1000° Fahrenheit and rapidly cooled to a temperature below 700° Fahrenheit;
(ii) has been rapidly cooled by application of an air quench that leaves a
center area of the heated glass hotter than the surfaces; and (iii) has a surface
compression of at least 3,500 PSI.
Claims 1, 8, and 15 read as follows.
1. (Original) A method for creating smoothed, tempered
glass fragments, comprising the operations of:
forming standard tempered glass fragments from standard
fully tempered glass that has a surface compression of at least
3,500 pounds-force per square inch (PSI);
placing a plurality of the standard tempered glass
fragments into an agitating apparatus;
agitating the plurality of the standard tempered glass
fragments for a predetermined period of time such that surfaces
of the tempered glass fragments are smoother than prior to the
agitating; and
removing the plurality of the standard tempered glass
fragments from the agitating apparatus, wherein the smoothed,
tempered glass fragments are created suitable for direct handling.
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8 (Original): A method for creating smoothed, tempered
glass fragments, suitable for use near a heat source, comprising
the operations of:
forming standard tempered glass fragments from standard
fully tempered glass that has been rapidly cooled by application
of an air quench that leaves a center area of the heated glass
hotter than the surfaces;
placing a plurality of the standard tempered glass
fragments into an agitating apparatus;
agitating the plurality of the standard tempered glass
fragments for a predetermined period of time such that surfaces
of the standard tempered glass fragments are smoother than prior
to the agitating, wherein smoothed, tempered glass fragments are
created; and
positioning the smoothed, tempered glass fragments in a
space designated to contain fire.
15 (Original): A method for creating smoothed, tempered
glass fragments, comprising the operations of:
placing a plurality of standard tempered glass fragments
into an agitating apparatus, wherein each standard tempered
glass fragment:
is formed from standard glass that has been heated
only once to a temperature of at least 1000° Fahrenheit and
rapidly cooled to a temperature below 700° Fahrenheit;
has been rapidly cooled by application of an air
quench that leaves a center area of the heated glass hotter than
the surfaces; and
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has a surface compression of at least 3,500 pounds-
force per square inch (PSI);
agitating the plurality of standard tempered glass
fragments for a predetermined period of time such that surfaces
of the standard tempered glass fragments are smoother than prior
to agitating; and
removing the resulting smoothed, tempered glass
fragments from the agitating apparatus.
Claims App. to P.O. Br. (emphasis added).10

F. The Rejections
As already noted, claims 1-17 stand rejected under 35 U.S.C. § 103(a)
for obviousness based on the following grounds:
(i) Arpaio in view of Georgantas, the Jaunzemis Declaration, and the
ASTM Standard; and
(ii) Arpaio in view of Georgantas, the Jaunzemis Declaration, and the
Glazing Manual.

II. DISCUSSION
Patent Owner does not question the Examiner‟s reliance (e.g., RAN 4-6
and 8-9) on the Jaunzemis Declaration, the ASTM Standard, and the Glazing

10 Patent Owner incorrectly states that “[c]laims 1, 8, and 15 all recite, inter
alia, smoothed, standard tempered glass fragments suitable for direct
handling.” P.O. Br. 8. The phrase “suitable for direct handling” appears in
only claim 1.
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Manual for the claim limitations that describe the glass from which the recited
“standard tempered glass pieces” are formed, i.e., the “standard fully
tempered glass” of independent claims 1 and 8 and the “standard glass” of
claim 15. As noted above, these limitations include: (i) having a surface
compression of at least 3,500 PSI (claims 1 and 15); (ii) being formed by
cooling the heated glass so as to leave a center area of the heated glass hotter
than the surfaces (claims 1 and 15); and (iii) being formed by heating the
glass only once to a temperature of at least 1000° Fahrenheit and rapidly
cooling it to a temperature below 700° Fahrenheit (claim 15).11
Instead, Patent Owner questions the Examiner‟s conclusion that it
would have been obvious from the cited references to use Arpaio‟s tumbler to
effect smoothing of pieces of standard tempered glass. The Examiner states
the underlying rationale for obviousness as follows:

11 The Jaunzemis Declaration states (at para. i): “Standard tempered glass is
silica based glass that has been heated only once to a temperature above 1000°
Fahrenheit, typically in the range of about 1200°-1600° Fahrenheit, and
cooled to a temperature below 700° Fahrenheit, typically below 600°
Fahrenheit.” The Glazing Manual states (at 4-5) that heat-strengthened glass
and fully tempered glass should conform to ASTM C 1048 (i.e., “the ASTM
Standard” reference). The ASTM Standard (at 4, paras. 8.1.1.1 and 8.1.1.2)
describes “Kind HS, Heat-Strengthened Glass” as having a surface
compression between 3500 and 7500 psi and explains that “Kind FT, Fully
Tempered Glass” “shall have either a minimum surface compression of 69
MPa (10,000 psi) or an edge compression of not less than 67 MPa (9700 psi)
or meet ANSI Standard Z 97.1 or CPSC Standard 16 CFR1201 in accordance
with 11.8.”
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Arpaio teaches a known technique for smoothing
unspecified forms of glass. Further, as evidenced by the
Jaunzemis Declaration, discussed above, standard tempered glass
is known in the art. Thus, it would have been obvious to a
person having ordinary skill in the art at the time of invention to
have utilized standard tempered glass as the particular glass
smoothed by the process of Arpaio because it is obvious to utilize
a known technique (Arpaio) to improve (smoothen) a similar
product (standard tempered glass). It would have been
predictable that the standard tempered glass would be smoothed
by the process of Arpaio because Arpaio is known to already
polish glass and Georgantas suggests polishing tempered glass
(Georgantas, col. 2, 11. 38-41).
RAN 5. While we agree with the Examiner‟s conclusion of obviousness and
supporting rationale, we prefer to begin our analysis with Georgantas.12
Georgantas‟s invention “relates generally to gas fires, and, more
particularly, to an improved substantially soot-free gas fire produced in a
fireplace by forming a bed of broken, tempered glass, and utilizing one or
more specifically formed gas pipes that burn hotter and cleaner.” Georgantas
1:11-15 (under heading “Field of the Invention”) (emphasis added).
Figure 1 of Georgantas is reproduced below.

12 We are designating our affirmance of the Examiner‟s rejections as new
grounds of rejection.
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Figure 1 is a front elevational view of a fireplace in accordance with
Georgantas‟s invention. Id. at 2:66-67. Georgantas explains that the
drawings show “a gas fire 10, comprised of a bed of broken glass pieces 12,
described more fully below.” Id. at 3:41-43. These glass pieces are more
particularly described as follows:
The bed of broken glass pieces 12 is preferably formed
from broken pieces of specially-formulated, tempered glass. The
specially-formulated tempered glass comes from modified lime-
soda float glass having most of the iron taken out of it or a
borosilicate glass. Either glass is preferably from 2.5 mm to
20 mm in thickness, and is baked at least three times at
temperatures of about 1200° F. for 30 minutes or more, followed
by rapid cooling of the outer surfaces via controlled air blasts or
an oil-water cooling process, while the center is allowed to cool
slowly. This achieves a highly desirable state of surface
compression between 10,000 and 13,500 psi, perfectly balanced
by internal tension, that produces a certain amount of bow or
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wrap in the formed glass, which bow or wrap is associated with
each piece of broken glass formed therefrom.
Id. at 3:59-4:6 (emphasis added). This specially-formulated tempered glass
is the only type of tempered glass that Georgantas describes for use in the gas
fireplace. The “Summary of the Invention” exclusively describes the use of
“specially-formulated” tempered glass (id. at 2:17-18, 21-22, 28-29, 47), as
does the Abstract. Furthermore, each of Georgantas‟s independent claims 1,
9, and 13 requires the use of the specially-formulated tempered glass by
reciting that the glass fragments are formed from tempered glass that has been
baked three times. Georgantas cols. 5-7.13
The Examiner (RAN 4) found the Jaunzemis Declaration sufficient to
establish that Georgantas‟s thrice-baked, specially-formulated tempered glass,
when broken, does not yield standard tempered glass pieces, as required by
the claims. The Jaunzemis Declaration, which has not been rebutted, states in
relevant part:

13
Georgantas‟s claim 1, for example, recites in relevant part:
a bed of broken glass pieces formed from broken,
tempered glass that is baked three times, and subject to sudden
surface cooling, held on the supporting surface in the fireplace
and surrounding the at least one gas pipe to allow the soot-free
flames to burn near and over top of the bed of broken glass
pieces without changing the color or appearance of the bed of
broken glass pieces.
Georgantas col. 6 (emphasis added).
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Based on my experience and training in the glass industry,
I have concluded that the average person in the glass industry
understands standard tempered glass to be glass that has been
baked only once. More specifically:
i) Standard tempered glass is silica based glass that has
been heated only once to a temperature above 1000°
Fahrenheit typically in the range of about 1200°-
1600° Fahrenheit, and cooled to a temperature below
700° Fahrenheit, typically below 600° Fahrenheit;
ii) Tempering a silica based glass more than once is
devastating to the glass baking equipment because
additional baking causes the glass to melt in the oven.
Such an occurrences costs ten‟s of thousands of
dollars to repair the tempering oven: and
iii) In over 26 years in the glass industry, I have never
encountered tempered glass that has been heated more
than once to a temperature above 1000° Fahrenheit
during the tempering process.
Patent Owner argues that the rejection is improper because, inter alia,
“there is absolutely no mention of standard tempered glass fragments in any of
the art of record.” P.O. Br. 8. More particularly, after correctly noting that
“[t]he Jaunzemis Declaration and the ASTM standard merely discuss
specifications for standard tempered glass sheets” (id.) (emphasis added),
Patent Owner argues:
The Examiner argues that the Jaunzemis Declaration and
Georgantas somehow teach standard tempered glass fragments
from standard fully tempered glass that has a surface
compression of at least 3,500 pounds-force per square inch (PSI).
However, the Jaunzemis Declaration makes no mention of
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standard fully tempered glass fragments and neither does
Georgantas.
Id. at 11 (emphasis added). These arguments are unpersuasive for two
reasons. The first reason is that the Glazing Manual explains (at 5) that
“[w]hen broken, fully tempered glass breaks into a multitude of small
fragments.” In addition, the Glossary of the Glazing Manual (id. at 69 et seq.)
describes how small these fragments are by explaining (at 71) that the term
“Dice” refers to “[t]he more or less cubical pattern of fracture of fully
tempered glass.” Furthermore, the ‟360 patent in the “Background of the
Invention” acknowledges that fragments of standard tempered glass were
known in the art: “One type of glass waste product is broken glass. . . .
Broken tempered glass, such as window shields for automobiles, presents a
particular recycle problem because the resultant glass comprises small, sharp,
glass pieces that are fire resistant.” ‟360 patent 1:53-59.
For the following reasons, we conclude that it would have been obvious
to substitute known standard tempered glass fragments (e.g., the “dice”
obtained by breaking standard fully tempered glass) for Georgantas‟s pieces of
specially-formulated tempered glass. This substitution is consistent with the
following principle in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007): “[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.”
Patent Owner has not asserted, let alone demonstrated, that the replacement of
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Georgantas‟s pieces of specially-formulated, tempered glass with pieces of
standard tempered glass does more than yield a predictable result, i.e., that it
yields an unexpected result. Cf. KSR, 550 U.S. at 417 (“The fact that the
elements worked together in an unexpected and fruitful manner supported the
conclusion that Adams‟s design was not obvious to those skilled in the art.”).
In the absence of evidence to the contrary, a person skilled in the art would
have reasonably expected pieces of standard tempered glass to be capable of
withstanding the temperatures encountered within Georgantas‟s gas fireplace.
In fact, the above-quoted passage from the “Background of the Invention” of
the ‟360 patent (at 1:53-59) acknowledges that fragments of standard
tempered glass were known to be “fire resistant.”
Alternatively, the above-described substitution of materials is also
consistent with the “obvious to try” rationale described as follows in KSR:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue the
known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation
but of ordinary skill and common sense. In that instance the fact
that a combination was obvious to try might show that it was
obvious under §103.
KSR, 550 U.S. at 421 (emphasis added). A person skilled in the art would
have considered small pieces of standard tempered glass (e.g., dice made from
standard fully tempered glass) to be a “known option[]” (KSR, 550 U.S. at
421) to Georgantas‟s pieces of specially-formulated tempered glass. As
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explained above, a person skilled in the art would have reasonably expected
pieces of standard tempered glass to be capable of withstanding the
temperatures within Georgantas‟s gas fireplace, or at least tried pieces of
standard tempered glass as a substitute. Furthermore, a person skilled in the
art would have recognized that forming the glass pieces from standard
tempered glass, which is readily available in new or used condition, will be
less expensive than forming the glass pieces from Georgantas‟s specially-
formulated tempered glass, which is thrice-baked and made from “modified
lime-soda float glass having most of the iron taken out of it or a borosilicate
glass.” Georgantas 3:61-65. Thus, the expected reduction in expense would
provide an obvious reason for replacing Georgantas‟s specially-formulated
tempered glass pieces with pieces of standard tempered glass.14
Patent Owner also contends that the rejection is improper because:
Georgantas teaches away from the use of standard fully
tempered glass to solve the problem of economically producing a
fireplace bed material because Georga[n]tas’ [“]specially-
formulated, tempered glass” that has been “baked three times”
has a “fracture pattern yielding small, relatively harmless
fragments...without hazardous jagged edges.” ([Georgantas], col.
4, 11. 8-10). Thus, to avoid the need to further process the
broken fragments, one of ordinary skill in the art, after reading
Georgantas, and without the hindsight provided by the
Jaunzemis ‟360 patent, would be led to use the Georgantas
“specially-formulated, tempered glass” that has been “baked

14 This substitution would also have been expected to avoid the damage to
baking equipment described in paragraph ii) of the Jaunzemis Declaration.
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three times” and breaks into smoothed pieces instead of standard
fully tempered glass.
P.O. Br. 10 (emphasis altered). See also id. at 11 (“According to the
teachings of Georgantas, it produces glass fragments that do not require
further work in the manner that Arpaio teaches.”) (emphasis altered); id. at 12
(“Georgantas is teaching an expensive non-standard material and an odious
non-standard manufacturing process to entirely avoid any abrasive smoothing
like Arpaio teaches.”) (emphasis altered). These arguments are unpersuasive
for two reasons. The first reason is that Georgantas describes the use of
specially-formulated tempered glass as a “preferabl[e]” type of glass without
criticizing, discrediting, or otherwise discouraging the use of standard
tempered glass pieces in a gas fireplace. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009):
“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged
from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the
applicant.” Ricoh Co., Ltd. v. Quanta Computer Inc., 550 F.3d
1325, 1332 (Fed. Cir. 2008) (quoting In re Kahn, 441 F.3d 977,
990 (Fed. Cir. 2006)). A reference does not teach away,
however, if it merely expresses a general preference for an
alternative invention but does not “criticize, discredit, or
otherwise discourage” investigation into the invention claimed.
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
The second reason is that Patent Owner‟s above-quoted characterization of
Georgantas‟s use of specially-formulated tempered glass as “avoid[ing] the
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need to further process the broken fragments” (P.O. Br. 10) overlooks
Georgantas‟s description of subjecting the pieces of specially-formulated
tempered glass to further processing, including abrading and polishing. See
Georgantas 2:38-43 (“The formed pieces of the broken, tempered glass may be
washed and sifted to remove any debris, and may be further abraded or
polished to form glass pieces without sharp edges, if needed . . . .”) (emphasis
added). Patent Owner has not addressed this teaching of abrading and
polishing in Georgantas, despite the fact that the Examiner expressly relies on
it in finding that “Georgantas suggests polishing tempered glass (Georgantas,
col. 2, 11. 38-41)” (RAN 5) and presumably also relies on it when stating that
“Georgantas discloses the need to abrade tempered glass and Jaunzemis
discloses that fully tempered glass is well known.” Id. at 15.
We therefore find that Georgantas does not teach away from replacing
Georgantas‟s pieces of specially-formulated, tempered glass with standard
tempered glass fragments (e.g., dice formed from standard fully tempered
glass), which (like Georgantas‟s glass fragments) would be expected to have
sharp edges that require smoothing in order to make the fragments safe to
handle.
This brings us to Arpaio. Georgantas does not describe any particular
apparatus for performing the above-discussed, optional abrading or polishing
operation. We agree with the Examiner that Arpaio‟s apparatus would have
been considered suitable for abrading or polishing pieces of standard
tempered glass. RAN 5.
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Arpaio‟s invention is a “Vibratory Tumbling Machine Vessel for
Burnishing or Cleaning Metal, Plastic or Ceramic Elements.”15 Arpaio, title.
Arpaio‟s tumbling machine vessel is a self-contained hollow sphere,
preferably made from substantially abrasion-resistant plastic, that works in
conjunction with typically any traditional vibratory tumbling machine. Id. at
Abstract.
Figure 1A of Arpaio is reproduced below.

15
The verb “burnish” is defined in relevant part at Dictionary.com as: “1. to
polish (a surface) by friction,” http://dictionary.reference.com/browse/
burnish?s=t&path=/ (citing Random House Dictionary ©2013) (last visited
August 16, 2013).
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Figure 1A symbolically and diagrammatically illustrates, in exploded view,
the combination of the spherical globe-forming structure 6, the perforated
male closure member 14, and the intermediate O-ring 8, in a side perspective
view. Id. at 11:20-24.
Arpaio describes the invention as addressing the following need:
[T]he present inventor in his own business found need for a unit
and/or combination unit for treatment(s) of diverse sizes and
types of microsized lots of elements, in the burnishing and/or
polishing thereof--also including one or more of deburring,
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polishing and/or other surface preparation of one or more of
metal, plastic and/or ceramic (such as glass, etc.) elements
and/or lots thereof.
Id. at 7:32-39 (emphasis added).16 See also id. at Abstract (“Acc[]essory
burnishing-treatment apparatus for treatment, namely deburring, turning
corners, polishing or cleaning of elements, namely metal, plastic, or ceramic
(typically glass) elements.”) (emphasis added). Presumably based on these
descriptions, the Examiner states that “Arpaio is known to already polish
glass.” RAN 5. Arpaio further explains that “a burnishing and/or cleansing
composition(s) is/are jointly enclosed within the global inner space with the
at-least one or more of the metal, plastic and ceramic elements.” Arpaio 4:13-
16.
Patent Owner does not deny that Arpaio‟s tumbling machine vessel
performs an agitating function or that it is capable of polishing pieces of
standard tempered glass. Instead, Patent Owner argues that Arpaio is
nonanalogous art and also that Arpaio teaches away from the claimed
invention. We begin by considering whether Arpaio is analogous art. Patent
Owner contends that Arpaio is not analogous prior art under either prong of
the following test for analogous art:
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor‟s endeavor, whether the reference still is

16 The characteristics of ceramic glass are addressed below.
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reasonably pertinent to the particular problem with which the
inventor is involved.”
P.O. Br. 5 (quoting In re Klein, 647 F3d 1343, 1348 (Fed. Cir. 2011)). We
find that Arpaio is analogous art under at least the second prong of this test.
Patent Owner, when discussing the second prong, states that “[t]he problem
the present inventors were considering was the problem „of processing broken
glass waste product into useful...pieces‟ (Ex. B, col. 1, 11.20-21 of the ‟360
patent).” P.O. Br. 8. We agree with this description of the problem facing the
inventors. Patent Owner then argues:
Arpaio would not have logically commended itself to one
considering the inventors‟ problem because a reference (Arpaio)
dealing with the clean-up of manufactured parts (by using added
sub-chambers termed “spheres” placed into the bowl of a larger
device) would not have logically commended itself to one
considering the processing of broken glass waste product.
Id. (emphasis added). As support for this “clean-up” characterization, Patent
Owner states:
Arpaio lists “elements, namely metal, plastic, or ceramic (typically
glass) elements.” See Abstract. Arpaio also states that examples
of elements intended to be “treated” by the Arpaio vessel, include
the following:
a) Machining and metal working field: stampings,
forgins [sic], castings, turned parts, milled parts, ground
parts, screw machined parts, formed parts, drawin [sic]
parts, and gears;
b) Types of Industries using parts that need vibration
tumbling treatment: aircraft components, aerospace
components, medical components, connectors industry,
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fastener, electrical industry, eyelet industry, bearings
industry, pump components, hydraulics components,
automotive components, optics industry, lazer [sic]
industry components for any type of machinery and
communications industry.
Ex. B [Arpaio], col. 11, ll. 3-17.
P.O. Br. 6 (brackets in original).
Patent Owner‟s above-quoted description of Arpaio as “dealing with
clean-up of manufactured parts” is unduly narrow for two reasons. The first is
that the examples discussed in the above-quoted passage from Arpaio are
described by Arpaio as “[t]ypical but not all-inclusive examples.” Arpaio
11:3. The second reason is that Arpaio, after providing the following
description of the deburring and polishing actions provided by the tumbling
machine vessel, explains that it has broad applicability:
While broadly the invention includes either smooth
arcuate and/or curved surface(s) to the inner walls defining the
inner space, and/or the multisided inside face--having a plurality
of separate interconnected “flats” (such as a barrel type tumbler),
that improvement achieves the lifting of the parts and media
(inside the sphere‟s inner space) off of the bottom such as in the
process of rotary barrel tumbling. This type of burnishing action
is known as “slide zone action”. At the same time, a constant
frictional engagement of media and parts is taking place as well
as a result of the vibratory action. The end result is a much more
efficient and effective tumbling action that takes place for either
the burnishing, deburring, or other types of surface preparation
achieved in this type of fini[]shing process by the larger
industrial units for conventional larger industrial vibratory
tumbling machines aforestated.
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By utilizing the present invention in one or more variations
and improvements thereof, a real time saving is achievable for
any manufacturing company involved in that t[y]pe of vibratory
de-burring, polishing, etc., of the parts they either make for their
customers and/or for themselves for use in their own product.
Id. at 8:1-21 (emphasis added).
For the above reasons, a person skilled in the art would have recognized
that Arpaio‟s tumbling machine vessel is suitable for polishing pieces of glass
other than the ceramic glass specifically described. Arpaio is therefore
analogous prior art under the second prong of the Klein test.
We next address Patent Owner‟s argument that Arpaio “teaches away”
from treating tempered glass. Citing Hobbs, Stephanie, Ceramic Glass VS
Tempered Glass (ver. 2, 2008) (Ex. G to P.O. Br.), Patent Owner states:
Ceramic glass is a polycrystalline material produced through
controlled crystallization of base glass. The result of this process
is that ceramic glass has a higher thermal shock rating than
tempered glass, at approximately 1400°F. (Ex. G, pg. 1,
para[.] 3). The thermal shock rating is the temperature at which
cracking occurs from the result of rapid temperature change. Id.
Ceramic glass has nearly a zero expansion coefficient, resulting
in very little to no expansion or contraction when heated or
cooled. Id. As a result, ceramic glass does not need to be
tempered in order to withstand the high temperatures of a
fireplace. Id. In fact, because of the high thermal shock rating
ceramic glass cannot be tempered, and as a none [sic; non-]
tempered glass ceramic glass does not break into small fragments
when broken, instead breaking into larger shards. Id. The result
of this process is that ceramic glass does not break into fragments
like standard tempered glass, instead ceramic glass breaks into
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larger shards, making ceramic glass unusable in the claimed
process of the Jaunzemis ‟360 patent.
Knowing the above, a person of ordinary skill in the art,
upon reading Arpaio would be led to use, if anything, ceramic
glass manufactured parts in the Arpaio apparatus. They would
certainly not be led to use standard tempered glass because the
ceramic glass disclosed in Arpaio does not need to be tempered,
and indeed cannot be tempered, to be used in a high temperature
environment. Hence, Arpaio teaches away from Applicants‟
invention because a person of ordinary skill in the art, upon
reading Arpaio would be led in a direction divergent from the
path that was taken by the Applicant.
P.O. Br. 9. This argument is unpersuasive because it overlooks Arpaio‟s
above-noted description of the broad applicability of the tumbling machine
vessel. While it is true that the only type of glass described by Arpaio is
ceramic glass, a person skilled in the art would have recognized that Arpaio‟s
tumbling machine vessel is suitable for polishing pieces of any type of glass
that is capable of being polished by tumbling (with or without using Arpaio‟s
optional burnishing compositions), including Georgantas‟s pieces of specially-
formulated tempered glass and pieces of standard tempered glass (e.g., the
dice formed by breaking standard fully tempered glass).
For the above reasons, we conclude that it would have been obvious to
replace Georgantas‟s pieces of specially-formulated tempered glass with
pieces of standard tempered glass (e.g., dice formed by breaking standard
fully tempered glass) and to use Arpaio‟s tumbling (i.e., agitating) machine to
polish the edges of the standard tempered glass pieces in order to make them
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safe to handle. Consequently, we agree with the Examiner‟s conclusion that it
would have been obvious to use Arpaio‟s tumbling machine vessel to polish
the edges of pieces of standard tempered glass, which is all that is required by
independent claims 1 and 15. For the above reasons, we also agree with the
Examiner‟s conclusion (RAN 5) that it would have been obvious to “position[]
the smoothed, tempered glass fragments in a space designated to contain fire,”
as required by claim 8. Patent Owner does not separately argue the additional
limitations of claims 1, 8, and 15.
We therefore sustain the Examiner‟s conclusion that independent
claims 1, 8, and 15 are unpatentable under 35 U.S.C. §103(a) based on
(i) Arpaio in view of Georgantas, the Jaunzemis Declaration, and the ASTM
Standard and also (ii) Arpaio in view of Georgantas, the Jaunzemis
Declaration, and the Glazing Manual. We likewise sustain rejections on
these grounds of dependent claims 2-7, 9-14, 16, and 17, which are not
separately argued.
Because our reasoning supplements the Examiner‟s above-noted
rationale, we hereby designate our affirmance of the Examiner‟s rejections as
NEW GROUNDS OF REJECTION pursuant to 37 C.F.R. § 41.77(b).

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PATENT OWNER‟S OPTIONS FOR RESPONDING TO
THE DECISION AND NEW GROUNDS OF REJECTION
In addition to affirming the Examiner‟s rejections of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides “[a]ny decision which includes a new
ground of rejection pursuant to this paragraph shall not be considered final
for judicial review.” 37 C.F.R. § 41.77(b) also provides that the Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. . . .
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record. . . .
Any request to reopen prosecution before the examiner under 37 C.F.R.
§ 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by the
new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the patent owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
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A requester may file comments in reply to a patent owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board‟s opinion reflecting its
decision to reject the claims and the patent owner‟s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be appropriate
if it is presented to address an amendment and/or new evidence properly
submitted by the patent owner, and is presented with a brief explanation as to
why the newly proposed rejection is now necessary and why it could not have
been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all patent owner responses and requester comments, is required.
The Examiner, after the Board‟s entry of a patent owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as
to whether the Board‟s rejection is maintained or has been overcome. The
proceeding will then be returned to the Board together with any comments and
reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for
reconsideration and issuance of a new decision by the Board as provided by
37 C.F.R. § 41.77(f).

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III. DECISION
The Examiner‟s decision that claims 1-17 are unpatentable over the
prior art is affirmed. Furthermore, these affirmed rejections are designated as
new grounds of rejection pursuant to 37 C.F.R. § 41.77(b).

AFFIRMED; 37 C.F.R. § 41.77(b)

ak

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For Patent Owner:

PATENT VENTURE GROUP
10788 CIVIC CENTER DRIVE
SUITE 215
RANCHO CUCAMONGA, CA 91730

For Third Party Requester:

HIGGS, FLETCHER & MACK LLP
401 WEST A STREET
SUITE 2600
SAN DIEGO, CA 92101