Guardian Glass, LLCDownload PDFPatent Trials and Appeals BoardMar 10, 20212020002451 (P.T.A.B. Mar. 10, 2021) Copy Citation 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. 15/801,401 11/02/2017 David J. COOPER JAR-3691-4054 9002 124194 7590 03/10/2021 Guardian Glass, LLC (Nixon) c/o KCPS IP Dept./Shannon Gonsalves 4111 E. 37th Street North Mail Stop T2C Wichita, KS 67220 EXAMINER DEHGHAN, QUEENIE S ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 03/10/2021 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): koch_pair@firsttofile.com pair_nixon@firsttofile.com ptomail@nixonvan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID J. COOPER, RYAN L. DEAR, and ROBERT A. MILLER Appeal 2020-002451 Application 15/801,401 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and JENNIFER R. GUPTA, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5, 8–10, and 26–28. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Guardian Glass, LLC. Appeal Br. 2. Appeal 2020-002451 Application 15/801,401 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus for localized heating techniques incorporating tunable infrared element(s) for vacuum insulating glass units. Spec. ¶ 12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for forming an edge seal via seal material in a vacuum insulated glass (VIG) unit, the apparatus comprising: a heater comprising a plurality of infrared (IR) heating elements controllable to emit IR radiation at a peak wavelength in the near infrared (NIR) and/or short wave infrared (SWIR) band(s), the plurality of IR heating elements being spaced apart from one another so as to have a 2-6” center-to-center distance, the plurality of IR heating elements being vertically positioned 2-10” above an upper surface and/or below a lower surface of a VIG subassembly insertable therein; a controller operable to adjust an amount of voltage supplied to the plurality of IR heating elements to vary the peak wavelength produced by the plurality of IR heating elements for heating frit of the seal material provided proximate the periphery of the VIG subassembly in forming the edge seal so as to preferentially heat the frit compared to glass substrates of the VIG subassembly; the controller further configured to control the IR heating elements during the heating so that when a first portion of the IR heating elements in a heating area are in an “on” state for heating the seal material approximately the remainder of the IR heating elements in the heating area are in an “off” state so that only partial IR heating element density is employed during said heating, so that glass substrates of the subassembly do not reach a temperature of 325 degrees C for longer than 1 minute during the heating of the frit material; inner walls comprising a material having characteristics suitable for causing a reduced amount of IR radiation from the IR heating elements impinging thereon to be reflected, the Appeal 2020-002451 Application 15/801,401 3 reflected IR radiation being reflected in a generally diffuse or undirected pattern; and insulation provided around the inner walls. Independent claim 27 recites a similar apparatus for forming an edge seal as in claim 1 and recites the same limitation in dispute with respect to a controller to control the IR heating elements. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Trombe US 3,310,102 Mar. 21, 1967 Mullaney US 3,499,231 Mar. 10, 1970 Danvers US 2003/0020027 A1 Jan. 30, 2003 Aitken et al. (“Aitken”) US 2004/0207314 A1 Oct. 21, 2004 Toas et al. (“Toas”) US 2005/0013980 A1 Jan. 20, 2005 Wang et al. (“Wang”) US 2009/0151855 A1 June 18, 2009 REJECTIONS Claims 1–4, 8, 9, and 26–28 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wang in view of Danvers, Trombe, and Aitken. Final Act. 3. Claim 5 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wang, Danvers, Trombe, and Aitken, further in view of Mullaney. Final Act. 6. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Wang, Danvers, Trombe, and Aitken, further in view of Toas. Final Act. 7. Appeal 2020-002451 Application 15/801,401 4 OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in 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 . . . .”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner’s rejections for the reasons expressed in the Final Office Action and the Answer. We add the following for emphasis. The only dispute is whether the applied prior art teaches or suggest a “controller configured to” control the IR heating elements “so that glass substrates of the subassembly do not reach a temperature of 325 degrees C for longer than 1 minute during the heating of the frit material” as set forth in each of claims 1 and 27. Appellant argues that the Examiner has not properly considered the “configured to” clause, and that none of the applied prior art, including Wang, teaches or suggests this feature (Appeal Br. 11– 13; generally Reply Br.2). 2 Appellant presents arguments for the first time in the Reply Brief based on case law not discussed in the main brief (Reply Br. 3, 4). Any argument not presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2) (2013). Appellant has not shown good cause why the new arguments could not have been presented in the Appeal Brief. Appeal 2020-002451 Application 15/801,401 5 These arguments are not persuasive of reversible error. Appellant’s arguments do not take into account the breadth of the claim language, the applied prior art as a whole, the knowledge of those of ordinary skill in the art, and the inferences that one of ordinary skill would have made. As pointed out by the Examiner, Wang teaches computer control of the IR heating elements to turn some on while others are off in a similar apparatus to that claimed here (e.g., Final Act. 5, relying on Wang ¶¶ 73, 74, 78, 79; Ans. 5). Notably, Wang teaches that although the temperature of the frit on the edge of the assemblies may be controlled to 350–500°C (Appellant likewise teaches the frit temperature is so controlled),3 “the glass temperature remains at or close to the background temperature” (Wang ¶ 78). Wang further describes that the background temperature of the glass substrate is “typically between about 200–300°C” (Wang ¶ 78). Thus, Wang implies that the glass substrate does not ever reach a temperature greater than 300°C. Accordingly, one of ordinary skill would have readily appreciated that the heating elements of Wang are controlled “so that glass substrates of the subassembly do not reach a temperature of 325 degrees C for longer than 1 minute during the heating of the frit material” as recited in independent claims 1 and 27. Assuming arguendo that Wang does not explicitly suggest the claimed limitation as discussed above, the claimed subject matter remains nonetheless obvious. It is well settled that it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 3 Appellant’s Specification likewise teaches the frit temperature “is controlled between about 350-500°C” (Spec. ¶ 89). Appeal 2020-002451 Application 15/801,401 6 1990); In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). Furthermore, “[a] recognition in the prior art that a property is affected by the variable is sufficient to find the variable result- effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). One of ordinary skill would have appreciated from the applied prior art that temperature as well as heating time are result effective variables, and one of ordinary skill would have also readily inferred that the glass substrate should not be heated above a maximum temperature for any substantial length of time (e.g., Wang ¶¶ 43, 78, 79). As we must “take account of the inferences and creative steps that a person of ordinary skill in the art would employ,” we find a person of ordinary skill in the art would have configured the controller to optimize the maximum time the glass substrate would have been exposed to a maximum temperature of the glass substrate,4 as well as the temperature of the frit. 4 If the recited “controller configured to” is interpreted as Appellant urges (Appeal Br. 11–12), then it appears that the “controller configured to” clause likely invokes 112, sixth paragraph (pre AIA). This limitation does not include the word “means,” thus, a rebuttable presumption exists that this limitation is not a means-plus-function limitation. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This presumption can be overcome, however, if the limitation “fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” Id. at 1349 (citation and internal quotation marks omitted). That appears to be the case here. For a computer-implemented claim limitation interpreted under § 112, sixth paragraph, the corresponding structure must include the algorithm needed to transform the general purpose computer/controller or processor disclosed in the specification into the special purpose computer programmed to perform the disclosed algorithm. Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). Thus, the specification must sufficiently disclose an algorithm to transform the general purpose computer/controller or processor Appeal 2020-002451 Application 15/801,401 7 KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the PTO must take account of the “inferences and creative steps,” as well as routine steps, that an ordinary artisan would employ). Appellant relies on the arguments made for claim 1 for independent claim 27, as well as all the other claims, not separately arguing any of the claims, including those separately rejected (e.g., Appeal Br. 13, 14). to a special purpose processor programmed to perform the disclosed algorithm. Id. at 1338. It is noted that the Specification does not appear to disclose any algorithm for this function (Spec. ¶ 106). An indefiniteness rejection under § 112, second paragraph, may be appropriate if the specification discloses no corresponding algorithm associated with a controller, computer or processor. Aristocrat, 521 F.3d at 1337–38. Mere reference to a general purpose computer/controller or processor with appropriate programming without providing an explanation of the appropriate programming, or to “software” without providing detail about the means to accomplish the software function, is not an adequate disclosure. Id. at 1334; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340–41 (Fed. Cir. 2008). In addition, simply reciting the claimed function in the specification, while saying nothing about how the computer/controller or processor ensures that those functions are performed, is not a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009). Making any new ground of rejection is discretionary, and we decline to do so. As explained in our opinion, Wang teaches or suggests a controller that is configured as recited in the claims on appeal. We leave it to the Examiner to make any such pre-AIA § 112, second paragraph rejection based on pre-AIA § 112 sixth paragraph analysis in any further prosecution of this case. Appeal 2020-002451 Application 15/801,401 8 Accordingly, we sustain each of the Examiner’s § 103 rejections on appeal. CONCLUSION The Examiner’s decision to reject claims 1–5, 8–10, and 26–28 is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 8, 9, 26–28 103 Wang, Danvers, Trombe, Aitken 1–4, 8, 9, 26–28 5 103 Wang, Danvers, Trombe, Aitken, Mullaney 5 10 103 Wang, Danvers, Trombe, Aitken, Toas 10 Overall Outcome 1–5, 8–10, 26–28 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED Copy with citationCopy as parenthetical citation