Ex Parte Duncan et al

Patent Trial and Appeal Board

May 21, 2014

12070687 (P.T.A.B. May. 21, 2014)

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.
12/070,687 02/20/2008 Craig B. Duncan 3391.006 1677
40842 7590 05/21/2014
B. CRAIG KILLOUGH
P. O. DRAWER H
CHARLESTON, SC 29402
EXAMINER
KWIECINSKI, RYAN D
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
05/21/2014 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
____________

Ex parte CRAIG B. DUNCAN and HENRY M. HAY III
____________

Appeal 2012-004764
Application 12/070,687
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004764
Application 12/070,687

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STATEMENT OF THE CASE
Craig B. Duncan and Henry M. Hay III (“Appellants”) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 56-69. We
have jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claim 56, the sole independent claim on appeal, is representative of
the claimed subject matter and is reproduced below.
56. An impact and blast resistant window, comprising:
a window sash having an opening therein for receiving a
window pane;
a first window pane positioned in the opening of the
window sash;
a second window pane positioned in the opening of the
window sash and spaced apart from the first window pane; and
a polymer film coated or adhered to a surface of the first
window pane or a surface of the second window pane;
wherein the polymer film is secured to the window sash
by a sealant that is positioned and arranged between the
window sash and the polymer film and the sealant adheres to
the polymer film and to the window sash.
App. Br. 10, Claims App’x.
References
The Examiner relies upon the following prior art references:
Duncan US 6,546,692 B1 Apr. 15, 2003
Hornung US 6,928,776 B2 Aug. 16, 2005
Rejection
Appellants seek review of the following rejection:
Claims 56-69 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Hornung and Duncan.
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Application 12/070,687

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SUMMARY OF DECISION
We AFFIRM.
OPINION
The Examiner concludes that the combination of Hornung and
Duncan would have rendered obvious the subject matter of claims 56-69 to
one of ordinary skill in the art at the time of invention. Ans. 5-10. The
Examiner finds that Hornung discloses most of the elements of the claims,
including a sealant that secures window panes to the window sash. Id. at 5.
The Examiner finds, however, that:
Hornung does not disclose a polymer film adhered to a
surface of the first pane or the second pane wherein the polymer
film is secured to the window sash by a sealant that is
positioned and arranged between the window sash and the
polymer film and the sealant adheres to the polymer film and to
the window sash.
Id. The Examiner finds that Duncan teaches an impact resistant durable
transparent polymer film adhered to and covering an entire inner surface of a
first and second window pane. Id. at 6.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art “to have formed an impact resistant double glazing
with the panes of Hornung by adhering a durable polymer film to the inner
surface of the panes.” Id. The Examiner also finds that:
The combination of the window assembly of Hornung and the
film covering the entire surface of the panes of Duncan will
also provide an assembly which teaches the sealant adhered to
the window sash and the durable polymer film, since the
durable polymer films cover the entire surface of the window
panes.
Id.
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Application 12/070,687

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Appellants raise several arguments in response to this rejection.1 We
address each.
First, Appellants contend that “[t]he cited prior art does not teach
adhering the polymer film to the window sash” because “Hornung does not
teach the use of a polymer film” and “Duncan teaches a polymer film
adhered to the window pane, but the film is not secured to the window sash
by a sealant.” App. Br. 5.
Appellants’ argument is not persuasive because it is directed to the
references individually, not to the combination as applied by the Examiner.
The Examiner’s rejection does not rely on Hornung to teach the use of a
polymer film; rather, the Examiner relies on Duncan to teach the use of a
polymer film. Ans. 5-6. Likewise, the Examiner’s rejection does not rely on
Duncan to teach the use of an adhesive to secure the polymer film to the
window sash. Id. Accordingly, we are not persuaded by Appellants’
argument. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”); In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991) (“The test for obviousness is what the
combined teachings of the references would have suggested to one of
ordinary skill in the art.”).
Second, Appellants assert that “the Examiner fails to provide ‘clear
articulation of the reasons’ why one skilled in the art would be motivated to

1 Appellants do not separately argue claims 56-69. See App. Br. 5-8;
Reply Br. 1-3. We select claim 56 as representative. Accordingly, claims
57-69 stand or fall with claim 56. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appeal 2012-004764
Application 12/070,687

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remove the film coated window pane from Duncan and replace it with the
window sash of Hornung.” App. Br. 6-7.
In response to Appellants’ argument, the Examiner explains that the
proposed combination does not remove the film coated window pane of
Duncan and replace it with the window sash of Hornung; rather, “the
window panes of Hornung are provided with an impact resistant film of
Duncan on their inner surfaces.” Ans. 12.
Because the proposed combination includes Hornung’s window
assembly modified by the addition of Duncan’s impact resistant film on the
inner surfaces of Hornung’s window panes, we agree with the Examiner that
Appellants’ argument is not responsive to the combination proposed in the
rejection. Thus, Appellants’ argument is not persuasive.
Third, Appellants contend that the Examiner fails to provide “‘clear
articulation of the reasons’ why, in view of the teaching of the cited
references, one skilled in the art would position the surface of the window
that is coated with polymer film so that the sealant is positioned and
arranged between the film and the window sash.” App. Br. 7. Appellants
assert that Duncan “suggests that the sealant is positioned and arranged
between the window sash and a surface of the window pane that is not
coated with film.” Id.
This argument is similar to Appellants’ second argument because it is
not responsive to the Examiner’s proposed combination. In particular, the
Examiner’s combination does not rely on Duncan to teach a sealant
positioned and arranged between the window sash and a surface of the
window pane coated with polymer film. See Ans. 5-6. As explained above,
the rejection applies Duncan’s polymer film coating to the inner surface of
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Application 12/070,687

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Accordingly, Appellants’ argument is not persuasive because the
Examiner’s proposed combination results in the film secured to the window
sash by the sealant.
Appellants’ Evidence of Nonobviousness and Secondary Considerations
Appellants submitted a declaration from Craig B. Duncan, under
37 C.F.R. § 1.132, (the “Duncan Declaration”) in support of the
nonobviousness of their claimed invention and we consider anew the issue
of nonobviousness in light of the Declaration. See App. Br. 15, Ex. A.
Craig Duncan is one of the co-inventors of the application before us, as well
as a listed co-inventor of the reference, Duncan, relied upon by the Examiner
in the rejection. See Duncan Decl. ¶ 3; Duncan, cover sheet (listing named
inventors). Appellants rely on the Duncan Declaration in asserting that the
proposed combination by the Examiner would not have been obvious to one
of ordinary skill in the art because it was not obvious to Mr. Duncan at the
time he invented the subject matter disclosed in Duncan (App. Br. 5-6;
Reply Br. 2), and that the Duncan Declaration provides evidence that
(a) achieving the superior impact resistance of the claimed invention would
not have been obvious to one skilled in the art (App. Br. 6-7) and (b) the
unexpected, beneficial results achieved by the invention could not have been
predicted from the prior art (id. at 8; see Reply Br. 2).
Mr. Duncan declares that, at the time of his invention disclosed in
Duncan (October 3, 2001),2 he “was familiar with window systems having a

2 Duncan indicates on its face that it was filed as U.S. Patent Application
No. 09/969,908 on October 3, 2001 (see Duncan, cover sheet), and so we
adopt this date as the latest date of invention of the subject matter disclosed
therein for the purposes of our consideration of the Duncan Declaration.
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Application 12/070,687

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sash, with generally parallel windowpanes mounted in the sash, and, further,
with the panes mounted to the sash with adhesive or sealant.” Duncan
Decl. ¶ 5. Mr. Duncan further declares that:
Although I was familiar with a window system . . . it was
not obvious to me, as one skilled in the art at the time I invented
the device disclosed and claimed in [Duncan], that superior
results could be obtained by securing the film to the window
sash by the use of a sealant, such as double-sided tape.
Id. at ¶ 6. He also declares that “[i]f it had been obvious to [him] in 2001
that one could obtain superior impact resistance by securing the film to the
sash with a sealant, [he] would have included this disclosure in the
application specification that became [Duncan].” Id.
The Examiner explains that “[t]he declaration is formed from the
opinions of the skilled inventor and does not provide any type of factual
evidence supporting criticality or unexpected results, commercial success,
long felt but unresolved need, failure of others, or skepticism of experts as
required by MPEP 716.01(a).” Ans. 11. The Examiner also explains that
“the Declaration does not provide any evidence as to why the combination
would not function properly, why the combination could not have been
obvious, or why the combination could not have been successful.” Id.
On balance, we are not persuaded that Appellants’ evidence of
obviousness outweighs the Examiner’s evidence of obviousness. First, even
accepting Mr. Duncan’s opinion that the subject matter of the present claims
would not have been obvious to him at the time he invented the subject
matter disclosed in Duncan (i.e., October 3, 2001), that alone does not
indicate that the present subject matter would not have been obvious to one
of ordinary skill in the art over five years later, i.e., at the time of invention
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Application 12/070,687

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of the subject matter claimed in the application before us—February 13,
2007.3 See 35 U.S.C. § 103(a) (identifying the relevant time for assessing
obviousness as “the time the invention was made”); see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007) (same).
Further, Mr. Duncan’s statements regarding superior impact resistance
and unexpected, beneficial results of the claimed invention are not supported
by objective evidence, such as test results. See In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995) (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements
. . . [do] not suffice.”) (quoting In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984)). Without evidence that Appellants or Mr. Duncan
performed any specific comparison, let alone a comparison we can factually
evaluate, of the claimed invention to the closest prior art of record, Mr.
Duncan’s statements are of little probative value. See In re Baxter-Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art”), cited in Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007).
Additionally, Appellants’ argument that one of ordinary skill in the art
“might believe that adhering film to the sash would lead to a window that
has less strength and durability” (App. Br. 8), is similarly unsupported by

3 Paragraph [00001] of the Specification indicates that the present
application is a continuation-in-part of U.S. Patent Application
No. 11/705,979, which was filed on February 13, 2007. Spec. para. [00001].
Thus, we assume for the purposes of this appeal that the present application
is entitled to the earliest possible filing date, which appears to be February
13, 2007.
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Application 12/070,687

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objective evidence and does not persuade us that the claimed subject matter
was unpredictable.
Accordingly, having fully considered Appellants’ evidence of
nonobviousness, including their arguments pertaining to unexpected,
beneficial results, and weighing all of the evidence anew, we agree with the
Examiner that the evidence of obviousness, on balance, outweighs
Appellants’ evidence of nonobviousness.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 56-69.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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