AGC Inc.

Patent Trials and Appeals Board

Jan 3, 2020

15258139 - (D) (P.T.A.B. Jan. 3, 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.
15/258,139 09/07/2016 Keiji NOTSU 476365US99 9364
22850 7590 01/03/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
IVEY, ELIZABETH D
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEIJI NOTSU, JIRO NISHIHAMA, SHUNSUKE SADAKANE,
MAKOTO NARITA, KOJI NAKAGAWA, YOSUKE SAKAI, and
MAYA HATANO1
____________

Appeal 2018-008962
Application 15/258,139
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This case is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–16. An oral hearing was held on December 17,
2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Asahi
Glass Company, Limited. Appeal Br. 2.
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BACKGROUND
The subject matter on appeal relates to laminated glass. E.g.,
Spec. ¶ 1; Claim 1. Claim 1 is reproduced below from page 23 (Claims
Appendix) of the Appeal Brief:
1. A laminated glass, comprising:
a first glass plate;
a second glass plate; and
an intermediate layer provided between the first glass plate
and the second glass plate;
wherein:
the first glass plate has a first face and a second face
opposing the first face,
the second glass plate has a third face and a fourth face
opposing the third face,
the intermediate layer is provided between the second face
and the third face,
the second glass plate is a chemically-strengthened glass,
in the second glass plate, when a compressive stress on the
third face is denoted as CS(3), a tensile stress generated in an
interior of the second glass plate is denoted as CT, a
thickness of the second glass plate is denoted as t, a depth
of the compressive stress on a side of the third face is
denoted as DOL(3) and a depth of a compressive stress on a
side of the fourth face is denoted as DOL(4), CS(3)/[CT2 x {t-
(DOL(3)+DOL(4))}] is greater than 1.1 MPa-1 x mm-1; and
DOL(3) and DOL(4) are different in their values.
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REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1–9, 11, 15, and 16 over Sorensen (WO 2015/057552 A2,
published Apr. 23, 2015).
2. Claims 10 and 12–14 over Sorensen and Cleary (US 2013/0295357
A1, published Nov. 7, 2013).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated October 3, 2017, and in the Examiner’s Answer.
Rejection 1
The Appellant presents separate arguments for claims 1, 4, 5, 6, 7, 8,
9, 11, and 15. We address those arguments below. The claims that were not
argued separately will stand or fall with claim 1.
Claim 1
The Examiner’s findings and conclusions are repeated at pages 3–5 of
the Answer. See Ans. 3–5. Of particular relevance to the arguments raised
by the Appellant in the Appeal Brief, the Examiner indicates that, in view of
Sorensen’s disclosures, a person of ordinary skill in the art would have
understood that a number of variables affect the properties and strength of a
laminated glass, including thickness, chemical strengthening process,
compressive stress, and depth of layer (DOL). Id. at 4–5. The Examiner
determines that it would have been obvious to optimize such variables to
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achieve a laminated glass with desired properties, and that such optimization
reasonably would have led to MPa-1 x mm-1 values that fall within the scope
of claim 1. Id. In the Response to Argument section of the Answer, the
Examiner also provides a table showing that selecting variable values from
those taught or suggested by Sorensen actually leads to glass having MPa-1 x
mm-1 values that fall within the scope of claim 1. See id. at 13.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious.
In the Appeal Brief, the Appellant provides its own table and argues
that use of Sorensen’s “preferred” variable values leads to glass that falls
beyond the MPa-1 x mm-1 values of claim 1. Appeal Br. 8–10.
That argument is not persuasive because the variable values that the
Examiner uses in the Answer are reasonably taught or suggested by
Sorensen, and the Appellant does not contest the accuracy of the Examiner’s
calculations. See Ans. 13. Focusing on the Examiner’s example 3, see
Ans. 13, (1) the “t” value of 0.3 mm is disclosed by at least ¶¶ 7–14 and 41
of Sorensen, (2) the CS(4) value of 950 MPa is disclosed by at least ¶¶ 8, 9,
70, and claim 6, (3) the DOL(4) value of 0.01 mm (10 microns) is disclosed
by at least ¶¶ 7, 8 and claim 8, (4) the CS(3) value of 855 MPa is suggested
by, e.g., ¶ 8 (“The compressive stress at the second surface . . is less than the
first”) and claim 7 (“the compressive stress at the second surface of the glass
substrate is at least 850 MPa”), (5) and the DOL(3) value of 0.009 mm is
suggested by at least ¶¶ 7, 8, and claim 4 (“DOL1 is at least 10% greater than
DOL2”). A person of ordinary skill in the art would have had reason to
select those values because Sorensen teaches the suitability of those values
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for its laminated glass. When those variables are selected, there is no
dispute that Sorensen’s glass falls within the scope of claim 1.
In the Reply Brief, the Appellant argues that the Examiner’s table and
selected variables are “the product of hindsight.” Reply Br. 5. We disagree.
As set forth above, Sorensen itself directly suggests the suitability of each
value selected by the Examiner for use in Sorensen’s laminated glass. The
fact that Sorensen also suggests values that would result in glass that does
not fall within the scope of claim 1, such as those selected by the Appellant,
see Appeal Br. 9, does not detract from the disclosures cited above and
relied on by the Examiner. See Merck & Co. v. Biocraft Labs., Inc., 874
F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a
multitude of effective combinations does not render any particular
formulation less obvious.”); see also In re Mills, 470 F.2d 649, 651 (CCPA
1972) (“[A] reference is not limited to the disclosure of specific working
examples.”).
The Appellant also argues that routine optimization would not have
led to glass that falls within the scope of claim 1 because the Appellant’s
disclosure “is focused on inhibition of progression of cracks generated in
glass,” while “Sorensen . . . makes no reference to crack progression.”
Appeal Br. 12.
That argument is not persuasive of reversible error in the rejection.
As set forth above, Sorensen directly discloses variable values that yield
glass that falls within the scope of claim 1. Thus, it is unclear that a “routine
optimization” rationale is necessary to the Examiner’s rejection.
The Appellant’s argument against routine optimization appears to
hinge on the Appellant’s position that Sorensen does not disclose the same
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purpose as the Appellant, i.e., “inhibition of progression of cracks.” See
Appeal Br. 12 (“As Sorensen does not disclose or suggest that crack
progression can be inhibited as in the laminated glass of claim 1, a skilled
artisan would not have been led to [variable values that lead to glass that
falls within the scope of claim 1].” (emphasis omitted)). We disagree.
In ¶ 32 of Sorensen, cited by the Examiner, see Ans. 4, 5; see also
Final Act. 5, Sorensen expressly discloses the following: “The mismatch in
ion size generates a compressive stress at the surface of the glass, which
inhibits both crack formation and propagation. For the glass to fracture, the
applied stress much place the mechanical defect under sufficient tension to
propagate existing flaws.” Sorensen ¶ 32 (emphases added). Thus, contrary
to the Appellant’s assertion, Sorensen recognizes the problem of progression
(propagation) of cracks, and it indicates that the compressive stress at the
surface of the glass generated by a mismatch in ion size “inhibits both crack
formation and propagation.” Id. Accordingly, on this record, the
Appellant’s arguments do not persuade us of reversible error in the
Examiner’s reliance on routine optimization of result-effective variables.
The Appellant also states, with no elaboration or citation to evidence,
that “[t]he laminated glass of claim 1 provides unexpected, superior results
that could not have been predicted from the disclosure of Sorensen.” Appeal
Br. 12. That argument is unpersuasive at least because it is unsupported
attorney argument. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney’s argument in a brief cannot take the place of evidence.”); see
also In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (appellant bears the
burden of showing that unexpected results support a conclusion of
nonobviousness).
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On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 1.
Claim 4
Claim 4 depends from claim 1 and requires “the CS(3) of the second
glass plate” to be “300 MPa or greater.” Appeal Br. 24.
In the Answer, the Examiner points out that Sorensen expressly
teaches embodiments in which the compressive stress of the second glass
plate is “at least 850 MPa” (i.e., greater than 300 MPa). Ans. 14 (citing,
e.g., Sorensen claim 7).
In the Reply Brief, the Appellant argues that “the examiner has not
established the recited compressive stress values are present in a laminated
glass that otherwise has values satisfying claim 1.” Reply Br. 7.
That argument is not persuasive. The Examiner provides a table in
the Answer showing that a glass that has a CS(3) of 855 falls within the scope
of claim 1. Ans. 13. As set forth above, the variable values selected by the
Examiner are reasonably taught or suggested by Sorensen, and the Appellant
does not dispute the accuracy of the Examiner’s calculation. A person of
ordinary skill in the art would have been motivated to select the values
chosen by the Examiner because they are taught by Sorensen as suitable for
Sorensen’s laminated glass. On this record, we are not persuaded of
reversible error in the Examiner’s rejection of claim 4.
Claims 5–9
The Examiner finds that Sorensen teaches or suggests variable values
that yield a glass having the properties recited by claims 5–9. Ans. 13.
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The Appellant argues that “the values in the examiner’s chart were
selected so as to satisfy the expression in claim 1 and are not reflective of
values that a skilled artisan would have been led to . . . without the benefit of
appellant’s disclosure.” Reply Br. 7–8.
That argument is not persuasive because, as set forth above, the
variable values selected by the Examiner are reasonably taught or suggested
by Sorensen itself.
Claim 11
Claim 11 depends from claim 1 and requires “the thickness of the
second glass plate” to be “from 0.2 mm to 1.0 mm.”
The Examiner finds that Sorensen teaches thicknesses of, e.g., “[0.]3
mm or less to [0].05 mm or less . . . which significantly overlaps the
instant[ly] claimed range.” Ans. 7, 15; Sorensen ¶ 41 (“[T]he substrate can
have a thickness equal to or less than 0.3 mm.”).
In the Appeal Brief, the Appellant argues, with no additional
explanation, that “[a] glass plate having an average thickness of within a
particular range could easily have a minimum and maximum thickness
outside of such range. Thus, the examiner has not established that the
combination of features in claim 11 would have been suggested by
Sorensen.” Appeal Br. 18.
That argument is not persuasive of reversible error. We agree with
the Examiner that Sorensen’s disclosure of a glass substrate with “a
thickness equal to or less than 0.3 mm,” Sorensen ¶ 41, overlaps with the
claimed range of 0.2 mm to 1.0 mm and reasonably suggests a thickness
within the claimed range (i.e., “the thickness of the second glass plate is
from 0.2 mm to 1.0 mm”).
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In the Reply Brief, the Appellant argues that “the examiner has not
demonstrated that [a] skilled artisan would have prepared a laminated glass
that has any of such thicknesses combined with other values that together
would satisfy claim 11,” Reply Br. 10.
That argument is not persuasive because, as set forth above, Sorensen
teaches or suggests each of the variable values selected by the Examiner, see
Ans. 13, including a thickness of 0.3 mm.
Claim 15
Claim 15 depends from claim 1 and further recites: “wherein the
second glass plate is bonded to the first glass plate via the intermediate layer
in a state where the second glass plate is elastically deformed along a shape
of the first glass plate.”
The Examiner finds that Sorensen teaches shaped glass laminates that
fall within the scope of claim 15. See Ans. 8 (citing Sorensen Fig. 4 and
¶ 59 (“the glass substrate 20 that has a substantially planar natural shape
may be placed in a curved configuration comprising a radius of curvature r
during the period in which the glass sheet is in contact with the molten metal
bath”)).
The Appellant argues that “[t]he examiner has not established that
such a process would yield a structure having all of the properties required in
claim 15.” Appeal Br. 19.
That argument is unpersuasive because it fails to identify any property
required by the claims that a person of ordinary skill in the art would not
have expected the curved laminate of Sorensen to possess. See SmithKline
Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
(“[M]ere statements of disagreement . . . as to the existence of factual
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disputes do not amount to a developed argument.”). On the record before
us, it is unclear how use of laminated glass reasonably suggested by
Sorensen (see, e.g., Ans. 13) in the curved configuration taught by Sorensen
(see Sorensen Fig. 4, ¶ 59) would fall outside the scope of claim 15. See 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 . . . .”).
Rejection 2
As to Rejection 2, the Appellant first argues that the combination of
Sorensen and Cleary “does not remedy the deficiencies of Sorensen.”
Appeal Br. 20. Because, as set forth above, we are not persuaded by the
Appellant’s assertions of deficiencies in the Examiner’s rejection based on
Sorensen, that argument is unpersuasive.
The Appellant also argues that the Examiner fails to demonstrate a
reasonable expectation of success in combining Sorensen with Cleary.
Appeal Br. 21.
That argument is unpersuasive because it fails to address any of the
Examiner’s specific findings and conclusions regarding the proposed
combination. See Ans. 9–10. In particular, we observe that both Cleary and
Sorensen concern chemically strengthened laminated glass, and the claims
subject to Rejection 2 concern only glass thicknesses (claims 10, 12, 13) and
which side of the laminate is exposed to the exterior or interior (claim 14).
We discern no basis to doubt that a person of ordinary skill in the art would
reasonably have expected success in using the thicknesses and arrangements
taught or suggested by Cleary with the laminated glass of Sorensen. The
Appellant’s unexplained argument amounts to little more than mere
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disagreement with the Examiner’s analysis. See SmithKline Beecham, 439
F.3d at 1320; cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(arguments consisting of “naked assertion[s]” generally not persuasive). On
this record, we are not persuaded of reversible error in the Examiner’s
rejection. See Jung, 637 F.3d at 1365.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11, 15,
16 103 Sorensen 1–9, 11, 15, 16
10, 12–14 103 Sorensen, Cleary 10, 12–14
Overall
Outcome 1–16
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