Ex Parte Fraley et al

Patent Trial and Appeal Board

Feb 18, 2014

12264562 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAYMOND EUGENE FRALEY, PAUL RICHARD GRZESIK,
LAWRENCE HENRY KOTAESKA,
WILLIAM BRASHEAR MATTINGLY III
and JAMES PATRICK MURPHY
____________

Appeal 2012-008280
Application 12/264,562
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH,
and DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-008280
Application 12/264,562

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 16 and 25.1 We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a glass fining process. Spec.
¶ [0002]. Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A glass making process comprising the steps of:
fining molten glass in a fining vessel comprising a top
wall portion not in direct contact with the molten glass, and a
side wall portion in direct contact with the molten glass,
wherein the top wall portion has a temperature T(top), the side
wall portion has a temperature T(side); and
reducing a temperature gradient between the top wall
portion and the side wall portion such that T( top )-T( side) ï‚£
l0°C.
The Examiner relied on the following references in rejecting the
appealed subject matter:

1 The Examiner in the Answer, pages 4-5, presented a new ground of
rejection for claims 24 and 26 under 35 U.S.C. § 103(a) as unpatentable over
Bookbinder, Kolberg, and Hayes. When an Examiner’s Answer contains a
new ground of rejection, Appellants must either request to reopen
prosecution or request to maintain the appeal within two months from the
date of the Examiner’s Answer to avoid sua sponte dismissal of the appeal
as to the claims subject to the new ground of rejection. See 37 CFR §
41.39(b). Appellants have failed to respond to the new ground of rejection.
Accordingly, the appeal of claims 24 and 26 is dismissed. The subject
matter of claims 27-30 depends on claim 26. Consequently, the appeal of
claims 27-30 is also dismissed.

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Loewenstein US 3,708,271 Jan. 2, 1973
Vilk US 4,494,974 Jan. 22, 1985
Scarfe US 4,622,678 Nov. 11, 1986
Ott US 2004/0067369 A1 Apr. 8, 2004
Kolberg US 6,848,275 B1 Feb. 1, 2005
Hayes US 2005/0155387 A1 Jul. 21, 2005
Bookbinder US 2006/0242995 A1 Nov. 2, 2006
DeAngelis US 2006/0242996 A1 Nov. 2, 2006

Biser, Benjamin Franklin "Elements of Glass and Glass Making"
Glass and Pottery Publishing Company, Pittsburgh, P.A. 54, (1899)

The following rejections from the Examiner’s final office action of
July 12, 2011 remain before us for review on appeal (App. Br. 10-11)2:
I. Claim 9 rejected under 35 U.S.C. § 112, first paragraph as failing to
comply with the written description requirement.
II. Claims 1-6, 8, l3 and 16 rejected under 35 U.S.C. 103(a) as
unpatentable over Bookbinder, Kolberg and Hayes.
III. Claim 7 rejected under 35 U.S.C. 103(a) as unpatentable over
Bookbinder, Kolberg, Hayes and Biser.
IV. Claim 9 rejected under 35 U.S.C. 103(a) as unpatentable over
Bookbinder, Kolberg, Hayes and Ott.
V. Claims 10-12 rejected under 35 U.S.C. 103(a) as unpatentable over
Bookbinder, Kolberg, Hayes, Ott and Scarfe.
VI. Claim 14 rejected under 35 U.S.C. 103(a) as unpatentable over
Bookbinder, Kolberg, Hayes and Vilk.
VII. Claim 25 rejected under 35 U.S.C. 103(a) as unpatentable over
Bookbinder, Kolberg, Hayes, Vilk and Loewenstein.

2 The Examiner withdrew the separate rejections of claims 11 and 29 under
35 U.S.C. § 112, first paragraph, and of claim 15 under 35 U.S.C. § 103(a)
over Bookbinder, Kolberg, Hayes and DeAngelis. Ans. 4. Claim 15 now
stands as objected to as being dependent upon a rejected base claim. Id.
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OPINION
Rejection under 35 U.S.C. § 112, first paragraph
We REVERSE.
The Examiner found that the original disclosure does not provide
descriptive support for the language "the step of reducing the temperature
gradient includes supporting the fining vessel by a cradle" in claim 9. Ans.
6. According to the Examiner, there is no disclosure that supports the
statement that the step of reducing the temperature gradient is correlated to
supporting the fining vessel by a cradle. Id. at 5-6.
Appellants argue, and we agree, that ¶¶ [0043] and [0048] of the
Specification disclose the use of cradles in addition to the insulation to
minimize the heat loss in the fining process and maintain the temperature
gradient within a desired range. App. Br. 12. The Examiner has not
provided an adequate explanation why this disclosure from the original
disclosure would not reasonably convey to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.
Accordingly we reverse the rejection under 35 U.S.C. § 112, first
paragraph.
Rejections under 35 U.S.C. § 103(a)

The dispositive issue on appeal is: Did the Examiner err in
determining that the combined teachings of Bookbinder, Kolberg, and Hayes
would have led one skilled in the art to a glass making process comprising
the step of reducing a temperature gradient between the top wall portion and
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the side wall portion such that T( top )-T( side) is less than or equal to 10 °C
as required by the subject matter of independent claim 1? 3
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE for the reasons presented by Appellants and
add the following.
The Examiner found that Bookbinder discloses a glass making
process comprising the step of fining molten glass in a fining vessel at a
temperature of 1450-1700 oC. Ans. 8-9. The Examiner found that
Bookbinder does not disclose measuring the temperatures of the top wall
portion and sidewall portion of the vessel and reducing the temperature
gradient between the top wall portion and the sidewall portion as claimed.
Id. at 9-10. The Examiner found that Kolberg discloses heating the top
portion of a fining vessel to ensure a high surface temperature of the glass
melt sufficient for bursting of bubbles. Ans. 9; Kolberg col. 7, ll. 10-15.
The Examiner found that Hayes discloses heating a fining vessel and its
associated components to the same preselected temperature. Ans. 9; Hayes
¶ [0022]. The Examiner found that it would have been obvious to one
skilled in the art to modify the combined teachings of Bookbinder and
Kolberg to heat the top wall and side wall of Bookbinder’s fining vessel to
the same temperature to further improve the fining process by minimizing
the temperature gradient between the two walls as taught by Hayes. Id. at
10.
Appellants argue that none of the references disclose the claimed step
of reducing a temperature gradient between the top wall portion and the side
wall portion such that T( top )-T( side)  l0°C. App. Br. 17. Appellants

3 We limit our initial discussion to independent claim 1.
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argue that incorporating Kolberg’s top heating unit into the fining system of
Bookbinder would only serve to increase the temperature gradient between
the top wall and side wall of Bookbinder’s fining vessel instead of reducing
the temperature gradient as claimed. Id. at 18-19.
We agree with Appellants that the Examiner has not established a
prima facie case of obviousness. Id. Kolberg discloses the use of a top
heater to create a high temperature gradient to improve the refining effect.
Kolberg col. 2, ll. 34-44. Contrary to this disclosure, Hayes discloses
heating a fining vessel and its associated components to the same preselected
temperature. The Examiner has not adequately explained how the teachings
from this combination of references could have been combined to arrive at
the subject matter of independent claim 1 that requires reducing a
temperature gradient between the top wall portion and the side wall portion
such that T( top )-T( side)  l0°C.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing a prima facie case of obviousness
under 35 U.S.C. § 103(a). Accordingly, we reverse the prior art rejection of
claims 1-6, 8, l3, and 16 under 35 U.S.C. § 103 as unpatentable over
Bookbinder, Kolberg, and Hayes for the reasons stated above and those
presented by Appellants.
We also reverse the separate rejections of claims 7, 9-12, 14, and 25
under 35 U.S.C. § 103 because the additional references cited therein were
not cited to address the above-noted deficiency.

ORDER
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Application 12/264,562

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The Examiner’s rejection of claim 9 under 35 U.S.C. § 112, first
paragraph is reversed.
The Examiner’s prior art rejections of claims 1-14, 16, and 25 under
35 U.S.C. § 103(a) are reversed.

REVERSED

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