Andrew Wagner

Patent Trials and Appeals Board

Jul 22, 2021

2020004689 (P.T.A.B. Jul. 22, 2021)

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.
12/774,751 05/06/2010 Andrew V. Wagner 2237A1 8674
144411 7590 07/22/2021
Vitro Flat Glass LLC
Legal - IP
400 Guys Run Road
Cheswick, PA 15024
EXAMINER
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
07/22/2021 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):
patents@webblaw.com
vitroip@vitro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW V. WAGNER
Appeal 2020-004689
Application 12/774,751
Technology Center 1700

Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and
BRIAN D. RANGE, Administrative Patent Judges.

TIMM, 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 1–13 and 22–28. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Vitro Flat Glass LLC. Appeal Br. 3.
Appeal 2020-004689
Application 12/774,751
2
CLAIMED SUBJECT MATTER
The claims are directed to a coated transparency, such as an insulating
glass unit (IGU) of an architectural transparency, e.g., a building window or
skylight, having two substrates separated by a gas-filled gap. See, e.g.,
claims 1 and 22; Spec. ¶¶ 3, 21. An interior surface adjacent the gas-filled
gap, labeled the No. 3 surface, has a coating formed on it. See, e.g., claims 1
and 22; Fig. 1 at 20. The coated transparency has a solar heat gain
coefficient (SHGC) of greater than or equal to 0.6 and a heat transfer
coefficient (U-value) of less than or equal to 0.35. See, e.g., claims 1 and 22;
Spec. ¶ 10. This high solar heat gain coefficient (SHGC) and low overall
heat transfer coefficient (U-value) allows the coated transparency to trap and
retain solar heat making it particularly useful for architectural transparencies
in northern climates. Spec. ¶ 9.
Appellant provides a useful illustration of the structure of the coated
transparency in the Appeal Brief. We reproduce Appellant’s illustration
below:

Appeal 2020-004689
Application 12/774,751
3
Appeal Br. 8. As shown in the illustration above, the coating includes a first
dielectric layer, a continuous metallic layer, a primer layer, a second
dielectric layer, and an overcoat. The first dielectric layer includes four
films.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A coated transparency, comprising:
a. a first substrate having a No. 1 surface and a No. 2
surface;
b. a second substrate spaced from the first substrate,
with a gas-filled gap between the first substrate and the second
substrate, the second substrate having a No. 3 surface and a No.
4 surface, with the No. 3 surface facing the No. 2 surface; and
c. a coating formed over at least a portion of the No.
3 surface and defining a side of the gas-filled gap opposite the
No. 2 surface, the coating comprising;
i. a first dielectric layer formed over at least a
portion of the No. 3 surface, wherein the first
dielectric consists of a first film, a second film in
direct contact over at least a portion of the first
film, a third film in direct contact over at least a
portion of the second film, and a fourth film in
direct contact over at least a portion of the third
film;
ii. a continuous metallic layer formed over at least a
portion of the first dielectric layer, the metallic
layer having a thickness less than 8 nm;
iii. a primer layer formed over at least a portion of the
metallic layer;
iv. a second dielectric layer formed over at least a
portion of the primer layer; and
Appeal 2020-004689
Application 12/774,751
4
v. an overcoat formed over at least a portion of the
second dielectric layer,
wherein the coated transparency has a solar heat gain
coefficient greater than or equal to 0.6 and a heat transfer
coefficient less than or equal to 0.35, and
wherein the gas-gap is filled with air or a non-reactive
gas.
Appeal Br. 17 (Claims Appendix). Claim 22 is similar except that the second
dielectric layer, rather than the first dielectric layer, has the four film
structure. Appeal Br. 20–21 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Thiel US 8,686,319 B2 Apr. 1, 2014
Buhay US 2003/0180547 A1 Sept. 25, 2003
Degand US 2007/0218262 A1 Sept. 20, 2007

REJECTIONS
Claims 1–6, 8–11 and 22–28 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Degand in view of Thiel. Final Act. 2.
Claims 7, 12, and 13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Degand in view of Thiel, and further in view of
Buhay. Final Act. 10.
OPINION
The dispositive issue in this appeal is: Has Appellant identified a
reversible error in the Examiner’s finding of inherency?
Appellant has identified such an error.
Appeal 2020-004689
Application 12/774,751
5
There is no dispute that neither Degand nor Thiel discloses the solar
heat gain coefficient (SHGC) or heat transfer coefficient (U-Value) of their
coated transparencies. Final Act. 5.
The Examiner finds that Degand’s coated transparency as modified by
the coating of Thiel inherently has SHGC and U-value properties within the
ranges of claims 1 and 22 because the materials and method of Degand in
view of Thiel are indistinguishable from the claimed materials and method.
Final Act. 4–5. In support, the Examiner cites Manual of Patent Examining
Procedure (MPEP) § 2112.01 (I): “Where the claimed and prior art products
are identical or substantially identical in structure or composition, or are
produced by identical or substantially identical processes, a prima facie case
of either anticipation or obviousness has been established.”
The problem is that the Examiner has not adequately supported the
finding that the structures are, indeed, so similar as to necessarily have the
required properties. Inherency may supply a missing claim limitation in an
obviousness analysis where the limitation naturally results from the
combination of prior art elements, but in the context of obviousness, the
burden for establishing inherency is high and must be carefully
circumscribed. Persion Pharm. LLC v. Alvogen Malta Operations Ltd., 945
F.3d 1184, 1191 (Fed. Cir. 2019). The Examiner has not met the burden.
Degand teaches a glazing panel 10, shown in Figure 1, with three
glass sheets 1, 2, 3, a 0.76 mm thick interlayer of PVB 4, a 15 mm wide
sealed gas-containing enclosure 5, and a coating stack on Face five (F5) of
the third sheet of glass 3. Degand ¶¶ 48–56.
As a first matter, the Examiner has not accounted for the differences
between Degand’s glazing panel and the coated transparency disclosed by
Appellant. For instance, Degand’s PVB interlayer is not present in
Appeal 2020-004689
Application 12/774,751
6
Appellant’s coated transparency. See Appeal Br. 11 (table showing
differences between the structures of claim 1, claim 22, Degand, and Thiel).
Next we consider the coating.
Degand’s coating stack provides solar control and infra-red reflection
properties and consists of: antireflective dielectric
layer/Ag/barrier/antireflective dielectric layer/Ag/barrier/antireflective
dielectric layer. Degand ¶ 56. Degand’s glazing panel provides fire
protection, i.e., when it is exposed to fire, it resists breaking or collapsing
and forms a barrier to heat. Degand ¶¶ 1–4. As acknowledged by the
Examiner, Degand does not disclose using a stack of films in any of the
dielectric layers. Final Act. 3. Thus, the Examiner turns to Thiel.
Thiel discloses a coated transparency to be used as a heatable vehicle
windshield. Thiel col. 1, ll. 7–9. Thiel’s windshield includes a heatable
electrically conductive coating 30. Thiel col. 2, ll. 4–26. Electrically
conductive coating 30 contains “one or more metallic films positioned
between pairs of dielectric layers.” Thiel col. 5, ll. 56–59.
Thiel discloses a coating 30, shown in Figure 3, with dielectric layer
40 containing first film 42 that can be a zinc/tin alloy oxide such as zinc
stannate and second film 44 that can be a zinc-containing film such as zinc
oxide. Thiel col. 7, l. 18–col. 8, l. 22. Electrically conductive coating 30
further includes an optional second dielectric layer 50 that can also
“comprise one or more metal oxide or metal alloy oxide-containing films.”
Thiel col. 8, ll. 45–64. Second dielectric layer 50 includes three films, 52,
54, 56 (e.g., Zn0.95Sn0.05O1.05/zinc stannate (Zn2SnO4)/Zn0.95Sn0.05O1.05). Thus,
the Figure 3 embodiment includes a two-film dielectric layer 40 and a three-
film dielectric layer 50. There is no four layer example.
Appeal 2020-004689
Application 12/774,751
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The Examiner finds, and Appellant disputes, that Thiel suggests using
four layers rather than just two or three, but we see a bigger problem. Even if
we assume it would have been obvious to use a stack of four alternating zinc
stannate and zinc oxide layers in either or both of the dielectric layers of
Degand, a preponderance of the evidence indicates that the other layers, the
thicknesses of the layers, and other parameters will affect the solar heat gain
coefficient (SHGC) and heat transfer coefficient (U-value). See, e.g., Spec.
¶¶ 56, 65 (indicating that the thickness and type of glass, the gap, and gas as
well as the coating affect the solar heat gain coefficient (SHGC) and the heat
transfer coefficient (U-valve)); Spec. ¶ 57 (indicating that including more
metallic silver layers results in lower SHGC); Wagner Decl. ¶ 9 (“The
nature of thin coatings, such as the coating claimed, is such that changing the
composition in intimate contact with the coating will change the spectral
characteristics of the coating, and therefore what would produce a desirable
color, transmittance, or reflective profile when in contact with one substance
would produce a different result when contacted with a different
substance.”).
Assuming that the Examiner’s finding of a suggestion to include the
dielectric layer assembly of Thiel in the product of Degand is supported by a
preponderance of the evidence,2 we do not agree that the resulting structure
would necessarily result in a solar heat gain coefficient greater than or equal
to 0.6 and a heat transfer coefficient less than or equal to 0.35—whether or
not it would have been obvious to use four films of the dielectric. The
differences between the resulting Degand/Thiel structure and Appellant’s

2 Appellant does not contest the Examiner’s finding of a suggestion to
combine in the Appeal Brief. It is argued in the Reply Brief (Reply Br. 3),
but because it is a new argument, we do not consider it. 37 C.F.R. § 41.41.
Appeal 2020-004689
Application 12/774,751
8
structure are too great to form a reasonable basis to conclude that the
properties are inherent without more explanation.
Because the finding of inherency is insufficiently supported by
evidence, we agree with Appellant that the Examiner reversibly erred. The
error permeates both rejections.
CONCLUSION
The Examiner’s decision to reject claims 1–13 and 22–28 is reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–11,
22–28
103(a) Degand, Thiel 1–6, 8–11,
22–28
7, 12, 13 103(a) Degand, Thiel,
Buhay
7, 12, 13
Overall
Outcome
1–13, 22–28

REVERSED