Mark Lewis et al.

Patent Trials and Appeals Board

Oct 1, 2020

2020000190 (P.T.A.B. Oct. 1, 2020)

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.
12/076,101 03/13/2008 Mark A. Lewis JAR-3691-1419 3148
124194 7590 10/01/2020
Guardian Glass, LLC (Nixon)
c/o KCPS IP Dept./Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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 MARK A. LEWIS and DAVID D. MCLEAN
____________

Appeal 2020-000190
Application 12/076,101
Technology Center 1700
____________

Before JO-ANNE M. KOKOSKI, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.

SNAY, 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, 3–9, 11–21, and 26. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Guardian Glass, LLC, as the real party in
interest. Appeal Br. 3.
Appeal 2020-000190
Application 12/076,101

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BACKGROUND
The invention relates to combustion deposition to form anti-reflection
glass coatings. Spec. ¶ 1; claim 1. Claim 1 reads:
1. A method of forming an anti-reflection coating on a glass
substrate using combustion deposition, the method comprising:
providing a glass substrate having at least one surface to
be coated;
selecting a reagent, the reagent being selected such that at
least a portion of the reagent is used in forming the coating;
introducing a first concentration of a first precursor to be
combusted by a first flame;
combusting at least a portion of the reagent and the first
precursor to form a first combusted material, the first
combusted material comprising non-vaporized material;
providing the glass substrate in a first area so that the
glass substrate is heated sufficiently to allow the first
combusted material to form a first growth directly or indirectly,
on the glass substrate;
introducing a second concentration of a second precursor
to be combusted by a second flame;
combusting at least a portion of the reagent and the
second precursor to form a second combusted material, the
second combusted material comprising non-vaporized material,
wherein the first concentration of the first precursor is less than
the second concentration of the second precursor; and
providing the glass substrate in a second area so that the
glass substrate is heated sufficiently to allow the second
combusted material to form a second growth directly or
indirectly, in or on the first growth,
wherein the anti-reflection coating is formed on the at
least one surface to be coated and comprises at least the first
and second growths, the first growth being made with process
conditions that produce first particles of a first mean particle
size distribution and the second growth being made with
process conditions that produce second particles of a second
mean particle size distribution, wherein particles in the first
mean particle size distribution are generally smaller than
particles in the second mean particle size distribution, and
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wherein the first particles comprise small nucleation-sized
particles and the second particles comprise large agglomerates
of nano-particles, such that the first mean particle size
distribution has a mean particle size that is smaller than that of
the second mean particle size distribution;
wherein the anti-reflection coating comprises a silicon
oxide matrix including nano-particles, the nano-particles being
embedded therein in situ via the combustion deposition and
including at least some of the non-vaporized material from the
first and second combusted materials, wherein the coating
comprises a mixed microstructure wherein particles of
different size distributions, from the first and second growths,
are provided in a common plane of the anti-reflection coating,
the common plane being substantially parallel to the at least
one surface of the glass substrate on which the anti-reflection
coating is formed, and
wherein particles at an upper surface of the anti-
reflection coating are generally larger than particles at the lower
surface of the anti-reflection coating, the lower surface of the
anti-reflection coating being located immediately adjacent the
glass substrate, and the upper surface of the anti-reflection
coating being located farther from the glass substrate than is the
lower surface, the mixed microstructure being located between
the upper and lower surfaces.
Appeal Br. 18–20 (Claims Appendix) (emphasis added).
Independent claims 16 and 26 similarly recite combustion deposition
processes performed under conditions which produce a mixed
microstructure of particles from first and second growths having different
size distributions. Each remaining claim on appeal depends from claim 1 or
16.
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Application 12/076,101

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REJECTION
Claims 1, 3–9, 11–21, and 26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Debsikdar,2 Grünler,3 Hunt,4 and Friedlander.5

OPINION
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure 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 a prima facie case of
unpatentability.”). 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).
Each independent claim on appeal recites, inter alia, “the coating
comprises a mixed microstructure wherein particles of different size
distributions, from the first and second growths, are provided in a common

2 US 4,830,879, issued May 16, 1989.
3 EP 1 602 633 A1, published December 7, 2005, as translated.
4 US 6,193,911 B1, issued February 27, 2001.
5 S.K. Friedlander, SYNTHESIS OF NANOPARTICLES AND THEIR
AGGLOMERATES: AEROSOL REACTORS, WTEC Hyper-Librarian (January
1998) available at
http://web.archive.org/web/20060911135838/http://www.wtec.org/loyola/nano/us
_r_n_d/04_04.htm
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plane.” The Examiner finds Debsikdar discloses forming multiple particle
layers by a sol-gel process. Final Act. 3. To meet the mixed microstructure
recitation of the claims, the Examiner concludes—without citation to
evidence—that “it is readily apparent that particles from the second growth
will impregnate some distance into the porous layer of the first growth,
which has its own particles, resulting in a mixed microstructure layer with
particles of different sizes, from the first and second growths.” Id. The
Examiner does not rely upon any cited evidence beyond Debsikdar to reach
the mixed microstructure recitation in the claims.
Appellant argues the Examiner’s above-mentioned conclusion implies
an unsubstantiated finding of inherency. Appeal Br. 14. We agree.
“The mere fact that a certain thing may result from a given set of
circumstances is not sufficient” to render the result inherent. In re Oelrich,
666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d
212, 214 (CCPA 1939)).
Here, the Examiner points to no credible evidence to support the
stated inference that Debsikdar’s process necessarily would have produced a
mixed microstructure of particles from first and second growths. To the
contrary, as Appellant points out (Appeal Br. 14), the Examiner’s finding
that Debsikdar forms each subsequent layer with particles that are larger
than those of the previous layer (Final Act. 2–3) appears inconsistent with a
determination that a subsequently deposited particle layer necessarily would
have mixed with the previous layer.
It is well-established that “rejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
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conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Having reviewed the Final Action and the Examiner’s Answer, we are
persuaded that the Examiner has not met the burden to articulate sufficient
reasoning to support the legal conclusion of obviousness.
CONCLUSION
The Examiner’s decision rejecting claims 1, 3–9, 11–21, and 26 is
reversed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9, 11–
21, 26
103(a) Debsikdar,
Grünler, Hunt,
Friedlander
1, 3–9, 11–
21, 26

REVERSED