Ex Parte Matsumoto et al

Patent Trial and Appeal Board

Dec 17, 2018

13688324 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/688,324 11/29/2012
5514 7590 12/17/2018
VenableLLP
1290 A venue of the Americas
NEW YORK, NY 10104-3800
FIRST NAMED INVENTOR
Mamo Matsumoto
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.
02910.178599.1 3156
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
12/17/2018 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 MAMO MATSUMOTO,
TOMOHIRO SAITO, MATSUTAKA MAEDA,
NOBUHIRO ITO, and TOSHITAMI HARA
Appeal2017-002777
Application 13/688,324
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
JANEE. INGLESE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1--4, and 13 as being unpatentable over at least Li
(US 2003/0066311 Al, pub. Apr. 10, 2003)2. An oral hearing was conducted
December 10, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Canon Kabushiki Kaisha, which is also stated
to be the real party in interest (Appeal Br. 4).
2 The Examiner applies Aitken (US 2004/0207314 Al, pub. Oct. 21, 2004) in
addition to Li to claims 2 and 4 (Final Act. 5, 6).
Appeal2017-002777
Application 13/688,324
Claim 1 is illustrative of the claimed subject matter ( emphasis added
to highlight key limitation in dispute):
1. A joined unit of glass base members, comprising:
a first glass base member;
a second glass base member; and
a joining member which joins the first glass base member
and the second glass base member, the joining member (a)
having a viscosity that has a negative temperature coefficient,
and (b) extending at a predetermined width along opposing
surfaces of the first glass base member and the second glass
base member,
wherein at least one of the first glass base member and
the second glass base member is elastically deformed while
being depressed in an internal direction of the glass base
member at an end portion in a widthwise direction of the
joining member,
wherein a boundary between an elastically deformed
portion of the glass base member and the joining member is
positioned farther toward an internal side of the glass base
member as compared with a boundary between a non-
elastically deformed portion of the glass base member and the
joining member,
wherein an area formed at the end portion in the
widthwise direction of the joining member has a residual stress
in a thickness direction of the joining member that is a
compressive stress, and
wherein the area formed at the end portion in the
widthwise direction of the joining member has a greater
compressive stress than a compressive stress of an area formed
at a central portion in the widthwise direction of the joining
member.
App. Br. 19 (Claims Appendix).
Independent claim 3 is directed to an "airtight envelope" of two glass
members and a joining member and recites similar subject matter as claim 1
(Claims Appendix 20, 21 ).
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Application 13/688,324
OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness of the claimed subject matter under 35 U.S.C. § 103. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the
initial burden, on review of the prior art or on any other ground, of
presenting aprimafacie case ofunpatentability."). To establish a prima
facie case of obviousness, the Examiner must show that each and every
limitation of the claim is described or suggested by the prior art or would
have been obvious based on the knowledge of those of ordinary skill in the
art or the inferences and creative steps a person of ordinary skill in the art
would have employed. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988);
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We construe each independent claim as requiring a joining member
with two glass members, wherein the final product has
a boundary between an elastically deformed portion of the
glass base member and the joining member is positioned farther
toward an internal side of the glass base member as compared
with a boundary between a non-elastically deformed portion of
the glass base member and the joining member3
wherein the area formed at the end portion m the
widthwise direction of the joining member has a greater
compressive stress than a compressive stress of an area formed
3 As explained by Appellant's representative at the oral hearing, this feature
means that the final product has a joining member that has end portions that
bite into the glass base members (see also, Appeal Br. 7; Spec. ,r,r 24, 49;
Figs. IE, 2D, 4H). The Examiner also appeared to construe the claim as
requiring this feature in the final product (generally Final Act.; Ans. relying
on Appellant's Fig. 4A to 4H (e.g. Final Act. 3; Ans. 3)).
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Application 13/688,324
at a central portion in the widthwise direction of the joining
member.
( Claims 1 and 7)
The Examiner relies upon Li for these features. There is no dispute
that Li does not explicitly disclose these features. Rather, the Examiner's
position is that Li's process of heating the joining member with a laser while
the glass members are under pressure is the same as the process described in
Appellant's Specification such that one would have expected the claimed
elastic deformation and the resulting boundaries (e.g., Ans. 3, see also Ans.
15 (the Examiner states Li has a "substantially identical process" as
Appellant for achieving the claimed features)).
Appellant contends that the Examiner has not met his burden for
establishing that Li's process and/or product is substantially identical to
Appellant's (Appeal Br. 13-15; Reply Br. 3---6). Appellant points out that Li
is "totally silent" as to the recited elastic deformation feature, and that
obtaining this feature requires conducting the process using specified
processing parameters such that the bimetal effect occurs as explained in the
Specification (e.g., Appeal Br. 13; Reply Br. 3---6). Appellant further
contends that the Examiner has improperly summarized Li's process and the
process described in the instant application and then made "a conclusory
assertion that the claimed features "would be expected" (Reply Br. 6;
Appeal Br. 16).
It is well settled that when a claimed product reasonably appears to be
substantially the same as a product disclosed by the prior art, the burden is
on the applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product, and that
it is of no moment whether the rejection is based on § 102 or § 103 since the
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Application 13/688,324
burden is on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed
Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, however,
the Examiner has not shown that the product disclosed in the prior art is
substantially the same and/or is produced by substantially the same method
described in Appellant's Specification so as to shift the burden to Appellant
to prove otherwise. A preponderance of the evidence supports Appellant's
position that the Examiner has not shown how the applied prior art teaches
or suggests the claimed deformation with its resulting boundaries in the glass
product (Reply Br. 3---6; see also Appeal Br. 12-17). The Examiner has not
directed us to or relied upon any recognition in the applied prior art for the
recited features.
In light of these circumstances, a preponderance of the evidence
supports Appellant's position that the Examiner has not pointed to any
evidence to adequately establish that the applied prior art teaches or suggests
the claimed combination of features for a joining member with two glass
members as recited in each of Appellant's independent claims. As stated by
Appellant, the Examiner has made an impermissible "hindsight-driven
analysis based on Appellant's own disclosure, [which] does not amount to a
prima facie showing of obviousness" (Reply Br. 6). Furthermore, the
Examiner's conclusory statement that some of the relevant processing
parameters "can be optimized" to achieve the elastic deformation claimed
(Ans. 9) does not amount to adequate reasoning based on the skilled
artisan's knowledge or inferences and creativity employed that would
support an obviousness conclusion.
On the record before us, the Examiner has not shown that each and
every limitation of the claim is either described or suggested by the prior art
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or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F .2d 1011, 1017 (CCP A 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art").
The Examiner does not rely upon the other reference applied in the
§ 103 rejection of claims 2 and 4, or any other rationale to cure these
deficiencies. Accordingly, we reverse all § 103 rejections on appeal.
ORDER
It is ordered that the Examiner's decision is reversed.
REVERSED
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