Jiangping Wang et al.Download PDFPatent Trials and Appeals BoardJul 30, 201912662443 - (D) (P.T.A.B. Jul. 30, 2019) 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. 12/662,443 04/16/2010 Jiangping Wang JAR-3691-1979 2760 124194 7590 07/30/2019 Guardian Glass, LLC c/o KCPS IP Dept./Shannon Gonsalves 4111 E. 37th Street North Mail Stop T2C Wichita, KS 67220 EXAMINER BAND, MICHAEL A ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 07/30/2019 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 JIANGPING WANG, RUDOLPH H. PETRMICHL, and JEAN-MARC LEMMER ____________ Appeal 2018-000413 Application 12/662,4431 Technology Center 1700 ____________ Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134, Appellants seek our review of the Examiner’s rejections of claims 1–4, 17, 18, 24–27, and 30–37. App. Br. 1. We have jurisdiction. 35 U.S.C. § 6. An Oral Hearing was held on July 16, 2019. We affirm. 1 Appellants identify Guardian Industries Corporation as the real party in interest. App. Br. 2. Appeal 2018-000413 Application 12/662,443 2 BACKGROUND The subject matter on appeal is directed to a method of making a coated article having anti-fungal or anti-bacterial properties. Spec. ¶ 1. Claim 1 is illustrative of the appealed subject matter, and is copied below from the Claims Appendix to the Appeal Brief, with emphasis added to relevant limitations at issue in this appeal: 1. A method of making an anti-fungal coated article, the method comprising: providing a first sputtering target comprising Zr; providing a second sputtering target comprising Zn; co-sputtering at least the first and second sputtering targets to form an antifungal layer comprising ZnxZryOz on a glass substrate, wherein the layer comprises from about 0.25% to 15% (atomic) Zn, from about 20% to 50% (atomic) Zr, and from about 40% to 80% (atomic) O, said sputtering comprising applying different powers to the first and second sputtering targets in order to control composition of the anti- fungal layer, wherein a higher power is applied to the second target comprising Zn than is applied to the first target comprising Zr in order to deposit more Zr than Zn; and wherein Zn from the second sputtering target is directed at the glass substrate in a first direction when forming the anti- fungal layer, and Zr from the first sputtering target is directed at the glass substrate in a second direction when forming the anti- fungal layer, and wherein the first and second directions differ from each other by an angle Ө of from about 30–45 degrees. App. Br. 22 (emphasis added). THE REJECTIONS I. Claims 1–4, 17, 18, 24–27, and 30–37 under 35 U.S.C. § 112 first paragraph, as lacking written description (Ans. 2–3); Appeal 2018-000413 Application 12/662,443 3 II. Claims 1–4, 17, 18, 24–27, and 30–37 under 35 U.S.C. § 112 first paragraph, as failing to enable the full scope of the invention (Ans. 9–16); III. Claims 1–4, 17, 18, 27, and 33–37 under 35 U.S.C. § 103(a) as unpatentable over Petrmichl,2 in view of Hartig,3 and Ogawa,4 either with or without Veersamy5 (Ans. 3–7); and IV. Claims 24–26 and 30–32 under 35 U.S.C. § 103(a) as unpatentable over Petrmichl, in view of Hartig, Ogawa, and Anzaki6 (Ans. 8–9). OPINION Rejection I The Examiner rejects independent claims 1 and 33 for failing to have the required written descriptive support for “applying a higher power to the Zn target than the Zr target” in order to deposit more Zr than Zn. Ans. 2, 3. Appellants contend that the required support for this claim language exists in paragraphs [0038] and [0044] of the Specification as filed. App. Br. 10–11; see also Reply Br. 2–4. We are not persuaded by this argument and sustain the Examiner’s written description rejection, with the following emphasis. A description adequate to satisfy 35 U.S.C. § 112, first paragraph, “must ‘clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.’ In other words, the test for sufficiency 2 Petrmichl (US 2008/0020211 A1; published Jan. 24, 2008). 3 Hartig (US 2006/0157347 A1; published July 20, 2006). 4 Ogawa (JP 63000465 A; published Jan. 5, 1988, as translated). 5 Veerasamy (US 2006/0057294 A1; published Mar. 16, 2006). 6 Anzaki (US 2004/0151942 A1; published Aug. 5, 2004). Appeal 2018-000413 Application 12/662,443 4 is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citation omitted, alteration in original). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. Here, the relied-upon disclosure fails to evince such possession of the claimed subject matter. Our analysis begins with the language of the independent claims. Claim 1 requires that the “sputtering compris[es] applying different powers to the first [Zr] and second [Zn] sputtering targets in order to control composition” of the layer and “in order to deposit more Zr than Zn.” App. Br. 22 (emphases added). Thus, claim 1 recites a relationship between the relative amounts of power applied and the content of the layer deposited. Independent claim 33 has similar requirements. Id. at 25. The relied-upon portions of the Specification, however, disclose broad power ranges for sputtering each Zr and Zn and broad possible compositional makeups of the layers. See Spec. ¶ 38 (disclosing that “in depositing layer 3 the power used with the Zn target is from about 0.6 to 4.6 kW . . . with an example value of 1.6 kW” and “[f]or the Zr target, the power used in depositing layer 3 can be from about 0.5 to 4.5 kW . . . with an example value of 1.5 kW” (emphasis added)); see also id. ¶ 43 (explaining that “[t]he ratio of zirconium to zinc . . . in any example embodiment of this invention can be from about 2.5 to 200” (emphasis added)). Appeal 2018-000413 Application 12/662,443 5 While there are numerical values within the broad ranges disclosed for each Zr and Zn that the skilled artisan could select to meet the claim requirement to apply a higher power to the second target comprising Zn than the first target comprising Zr––e.g., 1.6 kW for Zn and 1.5 kW for Zr, as argued by Appellant (App. Br. 10–11)––there are also circumstances where the opposite is true based on the breadth of disclosed ranges. For example, a power of 2.0 kW can be used for Zn and a power of 2.5 kW can be used for Zr during the co-sputtering because each of these values fall within the respective ranges disclosed for these elements. Spec. ¶ 38. Furthermore, and quite significantly, Appellants have failed to establish a nexus between the relied-upon paragraphs––i.e., that selecting a power value for Zn that is higher than that for Zr is what causes a higher amount of Zr than Zn to be deposited in the layer. App. Br. 10–12. On this record, the relied-upon portions of the Specification appear to be no more than disparate disclosures of possible embodiments, not a disclosure that evinces to the skilled artisan that the inventor possessed the subject matter that is claimed. Thus, for these reasons and those provided by the Examiner, we sustain the written description of independent claim 1, as well as the other rejected claims not separately argued. App. Br. 9–12; 37 C.F.R. § 41.37(c)(1)(iv). Rejection II Also, under 35 U.S.C. § 112, first paragraph, the Examiner concludes that independent claims 1 and 33, as well as the claims dependent therefrom, lack enablement for their full scope. Ans. 9–16. The Examiner notes that the Specification fails to teach the skilled artisan that simply applying higher Appeal 2018-000413 Application 12/662,443 6 power achieves this result “since other sputtering parameter(s) or variable(s) can affect this counter-intuitive result.” Id. at 10. To support the conclusion that the claims are not enabled, the Examiner conducts an analysis of the Wands factors. Id. at 11–16. After reviewing the respective positions of the Examiner and Appellants, we discern no reversible error in the Examiner’s conclusion that the full scope of the rejected claims are not enabled. Thus, for the reasons provided by the Examiner (Ans. 9–16), we affirm the rejection. We add the following only for emphasis. In the Examiner’s Wands factor analysis, a plethora of additional sputtering parameters that can be leveraged to affect the amount of deposition in addition to the power applied or the substrate angle are identified. Ans. 12–14. Appellants do not dispute the relevance of such parameters (Reply Br. 11–12), but rather appear to admit they are indeed factors to be considered in sputtering processes. See id. at 11 (“While it is true that at least some of these sputtering-related factors are not recited in any claims and therefore might be seen to have some bearing on the ‘breadth of the claims,’ it is common . . . for claims to omit these sputtering-related factors unless they are specifically relevant”). Appellants, however, do not convincingly explain why such parameters are not relevant to the “breadth of the claims” inquiry under the first Wands factor. Reply Br. 11. Here, each of the independent claims recite the transition phrase “comprising,” and thus allow for additional parameters, such as those listed by the Examiner, that may be used to affect the claimed result.7 App. Br. 22, 25. Thus, we find no 7 Appellants seem to acknowledge this fact. See Reply Br. 12 (stating that “Appellant agrees with the Examiner’s Answer that ‘[u]sually, a high power to a target results in a high deposition rate, unless another parameter or Appeal 2018-000413 Application 12/662,443 7 fault in the Examiner’s determination that “a seemingly limitless amount of possibilities exist[] for which parameter(s)” may be used in conjunction with the claimed power application, and that such claim breadth “strongly weighs against” a conclusion that the independent claims are enabled. We furthermore disagree with Appellants’ characterization of the amount of guidance provided in the Specification. Reply Br. 13–14. In response to the Examiner’s finding that there is insufficient direction in the Specification regarding how controlling only the claimed parameter(s), the skilled artisan would achieve the claimed result without undue experimentation (Ans. 16), Appellants refer to paragraphs 10, 36, 38 and 43, as well as Figures 3 and 4. Reply Br. 13–14. However, paragraph 10 refers to “example embodiments” generally, but provides no discussion or direction regarding how to arrive at those embodiments. Similarly, paragraphs 36 and 38 provide broad angle and power ranges, respectively, with no specific teaching how the skilled artisan would leverage these parameters8 to achieve the claimed result. The disclosure in paragraph 43 also lacks sufficient specificity because it merely provides broad ranges of zirconium to zinc ratios, as well as oxygen and argon flow rates. Spec. ¶ 43. Thus, in sum, we agree with the findings and the Examiner’s ultimate conclusion that undue experimentation would be needed to practice the full scope of claims 1 and 33, and the claims dependent therefrom. Ans. 9–16. parameters are specified’” and how “there is nothing in the claims that says ‘nothing else [besides power] is changed.’”) 8 In the case of claim 33, we note that modifying the angle theta between the sputtering targets is not expressly recited and is, therefore, not a required parameter to manipulate. Appeal 2018-000413 Application 12/662,443 8 Therefore, for the reasons provided by the Examiner and above, we sustain the enablement rejection of claims 1–4, 17, 18, 24–27, and 30–37. Rejections III and IV We reverse these rejections. A prima facie case of obviousness requires a reasonable expectation of successfully modifying the prior art to arrive at the claimed subject matter. See In re O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (“For obviousness under § 103, all that is required is a reasonable expectation of success.”). Here, the Examiner acknowledges that the rejected claims are either 1) obvious because a higher deposition of Zr than Zn would have been expected by the skilled artisan in view of the prior art teachings of the recited method step of applying higher power to the Zn target than Zr, or 2) the claims are not enabled for their full scope. See Ans. 19 (“Therefore either the combination of Ogawa and Petrimichl [sic] does render obvious this result of depositing more Zr than Zn by only using higher power to the Zn target than Zr target, or this claim requirement is not enabled and/or not supported.”). We agree. As outlined supra, we share the Examiner’s view that the claims are not enabled for their full scope. Furthermore, the Examiner has not established that by merely applying “a higher power . . . to the second target comprising Zn than is applied to the first target comprising Zr” that “deposit[ing] more Zr than Zn” would be reasonably expected. DECISION Rejections I and II are affirmed and Rejections III and IV are reversed. Appeal 2018-000413 Application 12/662,443 9 The Examiner’s final decision to reject claims 1–4, 17, 18, 24–27, and 30–37 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation