Ex Parte Deneil et al

Patent Trial and Appeal Board

Jul 23, 2018

14382973 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/382,973 09/04/2014 Christine Deneil
22850 7590 07/25/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
439464US99PCT 6973
EXAMINER
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
07/25/2018 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):
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTINE DENEIL and RONNY PIETERS 1
Appeal2017-002775
Application 14/382,973
Technology Center 1700
Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1 and 3-16. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM, and we designate our affirmance as a NEW
GROUND OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b). We also enter an additional new ground of rejection under 35
U.S.C. § 103, as set forth below.
1 The Appellant is the Applicant, AGC Glass Europe, which is also
identified as the real party in interest. App. Br. 1.
Appeal2017-002775
Application 14/382,973
BACKGROUND
The subject matter on appeal relates to a glass sheet covered by an
enamel-based coating. E.g., Spec. 1:3--4; Claim 1. Claim 1 is reproduced
below from page 11 (Claim Appendix) of the Appeal Brief:
1. A glass sheet comprising an enamel-based coating on at least
one surface of the glass sheet,
wherein
the enamel-based coating is in direct contact with the glass
sheet, the enamel-based coating comprises:
a glass frit,
inorganic pigments, and
organic compounds comprising a cross-linked compound,
the enamel-based coating comprises between 11 and 40% of
the organic compounds, expressed in weight percentage, and
the enamel-based coating exhibits a xylene resistance of at least
100 double rubs, as measured using the Solvent Resistance Rub
Test according to ASTM D5402-06 (2011) as modified therein.
REJECTIONS ON APPEAL
The claims stand rejected as follows2 :
1. Claims 1 and 3-16 under 35 U.S.C. § 102(b) as anticipated by
Devaux (WO 2012/004337, published Jan. 12, 2012);
2. Claim 5 under 35 U.S.C. § 103(a) as unpatentable over Devaux
and Pieters (WO 2011/051459, published May 5, 2011).
2 Ronny Pieters, a named inventor of the application involved in this appeal,
is also a named inventor on both prior art references.
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ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejection 1. We affirm that
rejection for reasons set forth below. However, our reasoning differs
somewhat from the Examiner's. Accordingly, we designate the affirmance
of Rejection 1 as including a NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F.R. § 4I.50(b).
As set forth below, we reverse the rejection of claim 5 as set forth in
Rejection 2. We also enter a new ground of rejection under 35 U.S.C. § 103
of claims 1 and 3-16.
Rejection 1
With the exception of claim 5, the Appellant argues the claims subject
to Rejection 1 as a group. We select claim 1 as representative, and the
remaining claims argued as a group will stand or fall with claim 1. We
separately address claim 5 below.
The Examiner finds that Devaux teaches a glass sheet comprising an
enamel based coating that meets each limitation of claim 1. Ans. 2-3. With
respect to the limitation that "the enamel-based coating exhibits a xylene
resistance of at least 100 double rubs," the Examiner finds:
Given that Devaux et al. teaches an enamel-based coating
having structure and materials, including a glass frit, inorganic
pigments, and organic compounds comprising a cross-linked
compound, identical to those presently claimed, it is clear that
the enamel-based coating inherently exhibits a xylene resistance
as presently claimed, absent evidence to the contrary.
Id. at 3.
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Application 14/382,973
The Appellant disputes the Examiner's finding concerning inherency.
In particular, the Appellant argues that "Comparative Examples 11-13 of
this application are representative of Devaux," and "[ s ]ince these
comparative examples do not satisfy the claimed xylene double-rub test,
Appellants/ Applicants have shown that this claimed feature is not inherent to
Devaux." App. Br. 3. The Appellant argues that the rub test results stem
from the enamel being "enriched in cross-linkable compounds." Id. at 6; see
also Spec. 14: 1-5. The Appellant does not explain what "enriched" means,
but it appears to simply mean that the enamel includes some minimum (but
unspecified) amount of crosslinkable compounds. E.g., Spec. 14: 1-5. The
Appellant argues that "Example 5 was enriched with cross-linked agent in
the organic compounds to an amount as claimed, while the enamel of
Comparative Example 13 was not," thus proving that merely including a
quantity of organic compound in the enamel that falls within the scope of
claim 1 (i.e., 11--40%) does not inherently yield a coating that exhibits the
claimed xylene resistance. App. Br. 6. In other words, the Appellant argues
that, to achieve the claimed xylene resistance, the organic compound must
include some minimum amount of a crosslinked compound. 3 See id.
3 Claim 1 requires that "the enamel-based coating comprises between 11-
40% of the organic compounds." The "organic compounds compris[e] a
cross-linked compound." Thus, the claim permits, but does not require, the
organic compounds to be a mixture of crosslinked and non-crosslinked
compounds. The Appellant does not direct us to any disclosure specifying
the required amount of crosslinked compound to achieve the claimed xylene
resistance. However, we observe that, if 100% of the organic compounds
were crosslinked compounds, which is permitted by claim 1, then the
enamel-based coating would comprise a maximum of 40% of crosslinked
compounds.
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Application 14/382,973
In the Answer, the Examiner maintains the inherency finding because,
according to the Examiner, "Comparative Examples 11-13 are not
representative of Devaux given that Devaux discloses glass frit and
crosslinker while Comparative Examples 11-13 do[] not appear to have
glass frit." Ans. 9.
The prosecution history includes a declaration from named inventor
Christine Deneil stating: "[g]lass frit is present in" the enamel used in
Comparative Examples 11-13. Declaration dated Apr. 29, 2016 ("Deel.");
Reply Br. 3--4. The Declaration includes an acknowledgement concerning
willful false statements, referencing 18 U.S.C. § 1001. See Deel. ,r 8.
Consistent with the Declaration, the Specification states that liquid enamel
compositions "generally comprise[]" glass frit. Spec. 6: 13-15.
Additionally, Table I of the Specification indicates that the "white" enamel
used in Example 13 includes glass frit. In particular, the box below the table
indicates that "TEMPVER Bianco 3400-14 7 A from the company FENZI" is
the "white" enamel of Example 13. Lower in the same box, the following
note related to the "**white" enamel of Example 5 appears: "** only glass
frit and pigment from enamel TEMPVER Bianco 3400-14 7 A from the
company FENZI." That statement implies that the "**white" enamel of
Example 5 is glass frit and pigment taken from TEMPVER Bianco 3400-
147 A, which supports the Declarant's statement that TEMPVER Bianco
3400-14 7 A includes glass frit. Thus, the record does not support the
Examiner's finding that Comparative Examples 11-13 do not include glass
frit.
However, even accepting the statements in the Declaration as fact and
assuming the presence of glass frit in Comparative Examples 11-13, we
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affirm the Examiner's rejection because the Examiner's determination that
the Comparative Examples were not shown to possess glass frit is harmless
error. Devaux teaches a list of organic compounds that is identical to the list
disclosed by the Specification as suitable "cross-linked compound[s]
according to the invention," with the sole exception that the Specification
also discloses one compound that is not disclosed by Devaux ( aldehyde
derivatives). Compare Devaux at 3, with Spec. 7:6-12. Also identical to the
Specification, Devaux teaches that the "enamel-based coating comprises 11-
40% by weight of organic material." Compare Devaux at 3, with Spec.
8:21-23. The disclosure of Devaux concerning its curing/drying step is also
nearly identical to that of the Specification. Devaux teaches:
After the step of depositing the enamel composition comprising
wax, the resulting coating is dried and / or crosslinked (if it
includes elements crosslinked), for example through heat (in an
oven, for example) and/or through UV or IR radiation. This
step allows the coating to harden and adhere to the glass sheet.
At this stage, the enamel is not yet melted or sintered.
Devaux at 4. The Specification discloses:
After the step of depositing the liquid enamel composition, the
composition is cured, i.e. dried and cross-linked. This step
allows the enamel composition ... to harden and adhere to the
glass sheet . . . . Cross-linking of the liquid composition can be
implemented by temperature, by UV, IR or NIR rays .... At
this stage, the enamel is not molten ( or sintered) yet.
Spec. 11: 15-21.
Thus, Devaux includes the same or essentially the same disclosures
concerning crosslinking, crosslinkable organic compounds, and weight
percentages of crosslinkable organic compounds that the Specification
includes. The Appellant identifies nothing beyond that required to achieve
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the claimed xylene resistance. Accordingly, in view of Devaux's disclosure,
including the portions quoted above, a person of ordinary skill in the art
would have at once envisaged enamel-based coatings that that would be
expected to inherently possess the claimed xylene resistance. See
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) ("[A] reference can anticipate a claim even if it does not
expressly spell out all the limitations arranged or combined as in the claim,
if a person of skill in the art, reading the reference, would 'at once envisage'
the claimed arrangement or combination." (some internal quotation marks
and citation omitted)).
Even if some of the compositions anticipated by Devaux (e.g., the
enamel used in Comparative Example 13) do not possess the claimed xylene
resistance, a person of ordinary skill in the art would have expected that
other compositions anticipated by Devaux ( such as those having up to
40 wt% of a crosslinked compound) do inherently possess the claimed
xylene resistance, given the substantial overlap of the disclosures of Devaux
and the Specification in relevant regards. In view of that, the record in this
case was sufficient to shift the burden to the Appellant to show otherwise.
See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) ("[W]hen the PTO
shows sound basis for believing that the products of the applicant and the
prior art are the same, the applicant has the burden of showing that they are
not."); In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977) ("Where, as here,
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product."). The mere
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identification of some enamels anticipated by Devaux ( e.g., Comparative
Example 13) that do not possess the claimed xylene resistance does not carry
the Appellant's burden of showing that other enamel-based coatings
anticipated by Devaux (i.e., those including up to 40% by weight of
crosslinked organic compound) do not inherently possess the recited
property. On this record, we affirm the Examiner's rejection of claim 1.
Claim 5 depends from claim 1 and further recites, "wherein the
enamel-based coating has a softening temperature of at least 20°C." The
Examiner finds that the claimed softening temperature would have been
inherent in enamel-based coatings anticipated by Devaux. Ans. 3--4. The
entirety of the Appellant's argument is that, because "[t]he Examiner
concedes ... that Devaux fails to disclose this limitation," "the claim is not
anticipated by Devaux." App. Br. 10. That argument is not persuasive
because it does not address or otherwise show error in the inherency finding.
Accordingly, we affirm the Examiner's rejection of claim 5. See In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's
practice to require an applicant to identify the alleged error in the examiner's
rejections .... ").
Because our reasoning concerning claim 1 differs somewhat from the
Examiner's reasoning, we designate our affirmance of Rejection 1 as
including a NEW GROUND OF REJECTION pursuant to our authority
under 37 C.F.R. § 4I.50(b).
Rejection 2
The Examiner finds that Devaux does not expressly disclose the
softening temperature of claim 5. Ans. 5. However, the Examiner finds that
Pieters teaches glass sheets comprising enamel-based coatings similar to the
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claimed coatings, and that Pieters teaches "wherein the enamel-based
coating has a softening temperature of at least 20°C." Ans. 5. The
Examiner determines that "[i]t would have been obvious ... to choose a
softening temperature, including that presently claimed, for the enamel-
based coating of Devaux et al. in order to provide advantageous mechanical
resistance properties." Id. (citing Pieters at 6 ("Such [softening temperature]
values may further help provide advantageous mechanical resistance
properties before heat treatment.")).
The Appellant correctly asserts that the cited disclosure of Pieters
concerns the softening temperature of the organic material alone, whereas
claim 5 requires a specific softening temperature for "the enamel-based
coating as a whole." App. Br. 10; see also Pieters at 6 ("Preferably the
organic material, after curing, has a softening temperature of at least
20°C .... " ( emphasis added)).
In the Response to Argument section of the Answer, the Examiner
fails to address the Appellant's argument or to otherwise explain why the
softening temperature of the organic material alone renders obvious the
claimed softening material of the enamel-based coating as a whole. In view
of the Examiner's failure to address the specific requirements of claim 5, we
are constrained to reverse the rejection of claim 5 under § 103 as set forth in
Rejection 2.
New Ground of Rejection
Claims 1 and 3-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Devaux (WO 2012/004337, published Jan. 12, 2012).
Concerning claim 1, as set forth above and in the Examiner's Answer,
Devaux teaches a glass sheet comprising an enamel-based coating in direct
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contact with the glass sheet on at least one surface of the glass sheet,
wherein the enamel-based coating comprises a glass frit, an inorganic
pigment, and organic compounds comprising a cross-linked compound,
wherein the enamel-based coating comprises between 11 and 40 wt% of the
organic compounds. E.g., Ans. 2-3; Devaux at Abstract, 3, 4. Devaux
teaches a list of organic compounds that is nearly identical to the list of
organic compounds and crosslinkable compounds disclosed by the
Appellant's Specification. Compare Devaux at 3, with Spec. 7:6-12.
Devaux's disclosure concerning crosslinking is also nearly identical to that
of the Appellant's Specification. Compare Devaux at 4, with Spec. 11: 15-
21.
Because Devaux teaches or suggests enamel-based coating
compositions that are the same as those recited by claim 1, and Devaux
teaches or suggests crosslinking methods the same as those disclosed by the
Specification, Devaux renders obvious compositions ( e.g., compositions
having 11 to 40 wt% crosslinkable compound) from which the recited
xylene resistance of claim 1 would have been expected to flow naturally. Cf
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) ("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 differences would otherwise be obvious."); In re Kubin, 561 F.3d
1351, 1357 (Fed. Cir. 2009) ("Even ifno prior art of record explicitly
discusses the [limitation], [applicants'] application itself instructs that [ the
limitation] is not an additional requirement imposed by the claims on the
[claimed invention], but rather a property necessarily present in [the claimed
invention]."); cf also In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
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("Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product."). In other words, even if Devaux does not anticipate such
compositions, such compositions would have been obvious in view of
Devaux because it would have been obvious to select crosslinked
compounds and quantities of such compounds (i.e., 11 to 40 wt%) from
which the recited xylene resistance would have been expected to flow
naturally.
Concerning claims 3-16, the additional limitations set forth in those
claims would have been obvious to a person of ordinary skill in the art in
view of Devaux for the reasons stated by the Examiner. See Ans. 3--4; Final
Act. 3--4.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1 and 3-16 under 35
U.S.C. § 102(b), and we designate our affirmance as a NEW GROUND OF
REJECTION because our reasoning differs somewhat from that of the
Examiner.
We REVERSE the Examiner's rejection of claim 5 under 35 U.S.C.
§ 103(a) as unpatentable over Devaux and Pieters.
We enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 103(a) as set forth above for claims 1 and 3-16.
37 C.F.R. § 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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Section 41.50(b) also provides that the 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 ....
AFFIRMED
37 C.F.R. § 4I.50(b)
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