Ex Parte Liang et al

Patent Trial and Appeal Board

Jun 26, 2017

13727767 (P.T.A.B. Jun. 26, 2017)

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.
13/727,767 12/27/2012 Liang LIANG GICO-111 1057
143743 7590 06/26/2017
Dority & Manning, PA and Guardian Industries Corp
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
MELLOTT, JAMES M
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
06/26/2017 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 LIANG LIAN, and RICHARD BLACKER1
Applicant: GUARDIAN INDUSTRIES CORP.
____________

Appeal 2016-007112
Application 13/727,767
Technology Center 1700
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and MERRELL C.
CASHION JR., Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real party in interest as Guardian Industries Corp.
Appeal 2016-007112
Application 13/727,767

2

Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1–8 and 10–12. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A method of making a coated article comprising an
anti-reflection coating supported by a glass substrate, the
method comprising:
depositing on the glass substrate at least a portion of a
solution comprising (i) a metal alkoxide comprising Si, (ii) a
transition metal alkoxide including titanium as a
primary metal, and (iii) titanium dioxide nanoparticles, to form
a substantially uniform coating, wherein a TiO2/SiO2 mol
ratio in the coating is from 0.150 to 0.280 in order to
provide for a Tqe% gain of at least 2%; and
curing said coating and/or allowing said coating to cure,
in making the antireflection coating.

The Examiner relies on the following prior art references as evidence
of unpatentability:

Arfsten et al. WO 2011/157820 A1 Dec. 22, 2011
(hereafter “Arfsten”)

Nakamura et al. US Patent 6,153,127 Nov. 28, 2000
(hereafter “Nakamura”)

Takahashi et al. US Patent 5,403,368 Apr. 4, 1995
(hereafter “Takahashi”)
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Wikipedia (Borosilicate glass, Wikipedia,
http://en.wikipedia.org/wiki/Borosilicate_glass (last viewed 11/18/2014)
(hereafter “Wikipedia”).

THE REJECTIONS2
1. Claims 1, 2, 5–8, and 10–12 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Arfsten in view of Nakamura, as
evidenced by Wikipedia.

2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Arfsten in view of Nakamura, as applied to claims 1, 2, 5–
8, and 10–12 above, and further in view of Takahashi, as evidenced
by Wikipedia.

ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 41.37(c)(1)(vii).
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner’s findings and conclusion that
the subject matter of Appellants’ claims is unpatentable over the applied art.
Accordingly, we sustain each of the Examiner’s rejections on appeal
essentially for the reasons set forth in the Final Office Action and in the
Answer. We add the following for emphasis.

2 As indicated by the Examiner on page 2 of the Answer, claim 9 has been
cancelled, so the rejection of claim 9 is withdrawn.
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Rejections 1 and 2
The Examiner determines that claims 1, 2, 5–8 and 10–12 are obvious
over Arfsten in view of Nakamura (as evidenced by Wikipedia3), for the
reasons presented on pages 4–9 of the Final Office Action, which we do not
repeat herein. Basically, the Examiner finds that Arfsten teaches the claimed
subject matter, but does not teach the claimed molar ratio of silica to titania
as being from 0.15–0.84 as claimed. The Examiner relies upon Nakamura
for teaching that the ratio of silica to titania is a result effective variable, and
therefore selection of the claimed molar ratio would have been obvious to
one skilled in the art, absent evidence of criticality. Final Act. 5–6.
Appellants argue that Arfsten fails to suggest the claimed mol ratio.
Appeal Br. 10. However, the Examiner explains that it is the combination of
Arfsten and Nakamura that suggests the claimed mol ratio, (not Arfsten
alone). As stated by the Examiner’s on pages 4–6 of the Final Office
Action, Arfsten teaches applying a mixture of TiO2 and SiO2 to form an anti-
reflective film upon a glass substrate, and Nakamura teaches that the ratio of
silica to titania is a result effective variable based on the desired
refractive index of the coating material. As such, Appellants’ arguments do
not address squarely what the combined teachings of the applied art
reasonably would have suggested to one of ordinary skill in the art at the
time of the invention. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a

3 The Examiner refers to Wikipedia for the teaching that borosilicate
glass has a refractive index of between 1.51–1.54 (see § Physical
characteristics, p. 2, Wikipedia). Final Act. 4.
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combination of references.”); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
We are thus unpersuaded by such argument.
Appellants next argue that there is no specific teaching in Arfsten of a
combination of Ti and Si in any respect as recited in claim 1, for the reasons
presented on pages 10–11 of the Appeal Brief. However, we are in
agreement with the Examiner’s position in the record, including the response
made on page 3 of the Answer. Therein, the Examiner states that Arfsten
teaches that the preferred precursors of AMOx includes silica and titania, and
that AMOx is comprised of combinations of the organo-metallic compounds,
and thus Arfsten teaches using silicon and titanium oxides in combination,
even though there is not an explicit experimental example provided in
Arfsten. The Examiner refers to lines 1–11 on page 5 of Arfsten in this
regard, for teaching preferred metals are silicon, titanium, aluminum, and
zirconium in combination. The Examiner states Arfsten is not limited to the
disclosed examples unless the examples explicitly teach away (which, the
Examiner states, they do not). Ans. 3.
Appellants also argue that Arfsten requires mixing AMOx and BMOx.
Appeal Br. 10. We are unpersuaded by such argument for the reasons given
in the Examiner’s stated response made on page 4 of the Answer. Therein,
the Examiner states that this position is not convincing because Appellants’
claim 1 is a comprising claim, and thus given that the combination of
applied art suggests a composition of AMOx comprising silica and titania, in
which the ratio of silica and titania is a result effective variable, there is a
prima facie case of obviousness regardless of additional materials in the
coating composition of Arfsten (including the BMOx). The Examiner further
states that the fact that Arfsten teaches that AMOx is 80–99.5 percent of the
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composition and BMOx is 0.5–20 percent of the coating composition, it is
apparent that the coating composition of Arfsten is comprised of AMOx (a
mixture of silica and titania) and BMOx in which the ratio of silica and titania
is a result effective variable, which reads on the comprising language of the
composition of claim 1. Ans. 4.
Appellants also argue that Arfsten provides a laundry list of materials
for AMOx and BMOx, but never expressly discloses a combination of oxides of
Ti and Si. Appeal Br. 10. We are unpersuaded by such argument in view of
the Examiner’s position in the record. We agree with the Examiner’s
position (Ans. 4–5) that, as discussed supra, Arfsten discloses that the
preferable metals for used in AMOx consist of silicon, titanium, aluminum,
and zirconium, and further that this is not a laundry list of possible materials.
The Examiner explains that Arfsten teaches using combinations of the
materials, the number of possible combinations for a two component system
is only 6, and if this is broadened to the number of combinations for 1, 2, 3,
and 4 component systems, the number of possible combinations is only 14.
Ans. 4. We also agree with the Examiner’s statement that the disclosure of
Nakamura further supports the use of the combination of silica and titania in
an antireflective film given that Nakamura discloses that it is known to use
the combination when forming antireflective films, and that the ratio of
silica and titania is a result effective variable based on the desired refractive
index of the coating. Ans. 5.
Appellants also argue that BMOx does not include Ti (Appeal Br. 11).
However, we agree with the Examiner’s stated reply (Ans. 5) that, as
discussed supra, the titania content is taught by AMOx, and the composition
of BMOx is not relevant given that the claim is a comprising claim.
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In view of the above, we agree with the Examiner that a prima facie
case of obviousness has been established.4
We turn now to Appellants’ rebuttal evidence. Appellants discuss
unexpected results on pages 9, 10, 11, 12–14 of the Appeal Brief, and state
that the Examiner offers no reasonable argument against the unexpected
results for the reasons expressed therein.
In response, the Examiner reiterates the position presented in the
Advisory Action stating that there is an insufficient showing of unexpected
results given that there is no experimental results for just outside the claimed
range of 0.150–0.280, and that the results are not fully commensurate with
the scope of the claims. Ans. 5. The Examiner refers to and reproduces
Tables 5 and 6 from Appellants’ Specification on page 6 of the Answer in
this regard, and explains:
[i]n regards to appellant’s position that the single showing of Example
6 outside the claimed range is sufficient to show unexpected results;
the Office does not find this argument convincing because three points
can define a straight line when a least square fit is performed and one
cannot determine if there is a significant difference between the Tqe%
of the three samples, instead the only thing that can be
determined from the three examples is that there Tqe% decreases as
the ratio of Ti02:Si02 is increased but there is not clear evidence that
this is an unexpected result or superior result. Instead to be able to
make a determination, there needs to be additional data provided for
example, Example 4 falls just below the claimed ratio and Example 2
is just above the claimed ratio and Tqe% values for both of these
systems would be probative in determining unexpected results given
that one would be able to ascertain if the values also fit a decreasing
slope or if the fit is non-linear.

4 It is noted that Appellants do not present separate arguments for Rejection
2. Appeal Br. 5–14. Hence, Rejection 2 is summarily affirmed.
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We agree with the Examiner’s aforementioned position. To establish
unexpected results over a claimed range, Appellants should compare
a sufficient number of tests both inside and outside (i.e. as well as the upper
and lower limits) the claimed range to show the criticality of the claimed
range. In re Hill 284 F.2d 955 (CCPA 1960). Additionally, in this context,
with respect to Appellants’ position that single comparative Example 6,
which has a ratio of 0.841, is sufficient and not far outside the claimed
range, we agree with the Examiner’s response that this is unpersuasive
because the value of 0.841 is 0.561 greater than the endpoint (0.280) of the
range (and more than 3 times the maximum value of the range), and thus is
significantly outside of the range, and is therefore not clearly probative to
the question of whether the range of 0.150-0.280 produces unexpected
results. Ans. 7.

On page 7 of the Answer, the Examiner also states:
[a]dditionally, when comparing Examples 1, 5, & 6 it is not clear from
the evidence provided if the decrease in Tqe% is a result of: (1) the
ratio of Ti02:Si02- i.e. is the result a synergistic effect only present in
the claimed range, (2) the increase in the total amount of two
materials, (3) the thickness of the layer formed, (4) a decrease in
the amount of Si02, (5) an increase of the amount of Ti02, or (6) the
species of glass used (only one species of glass is used in the
examples). I.e. based on the three examples provided and given that
each variable is changed between each example it is not possible for
the Office to determine what is the cause of the decrease of the Tqe%
from 2.813 & 2.586 (Examples 1 & 5, respectively) to a Tqe% of
1.302 (Example 6) or if this difference in Tqe% is an unexpected
result or just a common trend when one of the above is changed.

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We also agree with the Examiner’s aforementioned position, and note
that the Court stated in In re Dunn, 349 F.2d 433, 439 (CCPA 1760) “[t]he
cause and effect sought to be proven is lost here in the welter of unfixed
variables.”
On page 13 of the Appeal Brief, Appellants argue that the Tqe% gain
of at least 2% is not disclosed or suggested in the cited art, and this feature is
not inherent, and this feature does not necessarily result from any alleged
modification. Appellants explain that “Tqe” stands for Total quantum
efficiency, and that Tqe% gain is calculated based on UV and visible data
from 400–1200 nm as explained in ¶¶ [0080]–[0081] of the Specification,
and as shown in Figure 11.
Appellants submit that the cited art has no Tqe% gain values, and the
claimed values are certainly not inherent in the cited art. Appellants argue
that the Examiner’s position on page 5 of the Final Office Action, that the
claimed Total quantum efficiency gain can somehow be calculated and met
solely by Arfsten’s visible transmission and visible reflection, is incorrect
and without merit. Appeal Br. 13. Appellants refer to their Figure 11 and
state that Figure 11 shows that Total quantum efficiency (Tqe%) is based
on data from 400-1200 nm which includes UV (not just visible). Appellants
submit that the Examiner has referenced no UV data, and that the
wavelength range on page 9 of Arfsten relied upon by the Examiner is from
425-675 nm, which cannot possibly indicate Tqe% gain. Appeal Br. 13–14.
Appellants state that Tqe% gain is calculated as explained in ¶¶ [0080]–
[0081] of the Specification, and there has been no showing by the Examiner
of a Tqe% gain of at least 2% in Arfsten. Appellants state that this is
certainly not inherent in Arfsten and no obviousness allegations have been
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made in this respect. Appeal Br. 14. We are unpersuaded by such argument
for the following reasons.
It has been the Examiner’s position throughout the record that the
combined teachings of Arfsten in view of Nakamura suggest the claimed
method that includes depositing a solution having the claimed components
and mol ratio, such that the claimed Tqe% gain of at least 2% is met. We
appreciate Appellants’ point that Tqe% gain is measured from 400–1200
nm, and realize that Arfsten discloses that reflection performance was
determined in the range of from 350–800 nm (Arfsten, 19, l. 30). However,
we are not convinced that Tqe% gain is not met by the combined teachings
of the applied art for the reasons stated by the Examiner in the record. In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
explicitly discusses the [limitation], [applicants’] application itself instruct
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]”); 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 difference would otherwise have been obvious.")
Hence, for at least the reasons identified above, we agree with the
Examiner’s conclusion that Appellants’ showing of unexpectedly superior
results is unpersuasive.5 We thus affirm the art rejections.

5 We need not reach the points raised as to whether use of only a single type
of glass (SFO tin/water glass) is fully commensurate in scope with the
claims in reaching this determination.

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DECISION
Each rejection is affirmed.

TIME PERIOD
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).

ORDER
AFFIRMED