Corning Incorporated

Patent Trials and Appeals Board

Jun 15, 2020

2019004413 (P.T.A.B. Jun. 15, 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.
13/905,367 05/30/2013 Adra Smith Baca SP12-130 3134
22928 7590 06/15/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
PLESZCZYNSKA, JOANNA
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/15/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRA SMITH BACA, DAVID EUGENE BAKER,
PRANTIK MAZUMDER, MARK ALEJANDRO QUESADA, and
WAGEESHA SENARATNE
Appeal 2019-004413
Application 13/905,367
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–13 and 21–26.3

1 This Decision includes citations to the following documents: Specification
filed May 30, 2013 (“Spec.”); Final Office Action dated July 18, 2018
(“Final”); Appeal Brief filed November 27, 2018 (“Appeal Br.”);
Examiner’s Answer dated March 19, 2019 (“Ans.”); and Reply Brief filed
May 16, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Corning Incorporated. Appeal Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-004413
Application 13/905,367

2

We affirm in part and enter a new ground of rejection pursuant to
37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The invention “relates generally to fingerprint-resistant or anti-
fingerprint glass articles . . . as well as to methods of making and using the
glass articles.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. An oleophobic article, comprising:
a glass substrate comprising a flat surface; and
a patterned oleophobic coating, disposed on the flat
surface of the glass substrate, comprising a plurality of non-
interacting adjacent gas-trapping features separated by a
distance b, wherein each gas-trapping feature comprises an
opening in an outer surface of the patterned oleophobic coating
that extends to a depth below the outer surface, each opening
having a cross-sectional dimension a, wherein an average a is
about 10 nanometers to about 100 micrometers so that when a
liquid drop contacts the flat surface, the liquid drop forms a
liquid meniscus having a concave shape that traps the gas
within the gas-trapping features and compressing the gas that is
trapped within the gas-trapping features and wherein the
patterned oleophobic coating imparts oleophobicity to the glass
substrate.
Appeal Br. 29 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
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Application 13/905,367

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Name Reference Date
Deng

US 2007/0231542 A1

Oct. 4, 2007
Petcavich

US 2010/0033818 A1 Feb. 11, 2010

Cook US 2010/0279068 A1 Nov. 4, 2010

REJECTIONS
1. Claims 1 and 11 are rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. Final 2.
2. Claims 1–6, 10, 21, 23, and 244 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Petcavich. Final 3–6.
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Petcavich and Cook. Final 6.
4. Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Petcavich and Deng. Final 6–7.
5. Claims 11–13, 22, 25, and 26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Petcavich, Cook, and Deng. Final 7–10.

4 We determine that the Examiner’s inclusion of claim 22 and omission of
claim 23 in the rejection statement is harmless error. See Final 3. The
Examiner discusses claim 23, not claim 22, in the body of this rejection. Id.
at 5–6; see also Appeal Br. 16–17 (addressing the claim 23 rejection over
Petcavich).
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Application 13/905,367

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OPINION
Indefiniteness Rejection
The Examiner determined that the claim 1 and claim 11 recitation of
“the liquid drop forms a liquid meniscus having a concave shape that traps
the gas within the gas-trapping features and compressing the gas that is
trapped within the gas-trapping features” renders claims 1 and 11 indefinite
because “it is not clear which element is ‘compressing the gas that is
trapped.’” Final 2. The Examiner advises that “the rejection would be
withdrawn should the Appellant amend the claim[s]” to change
“compressing” to “compresses.” Ans. 12.5
A claim is indefinite under 35 U.S.C. § 112 when it contains words or
phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). General claim construction principles apply when
determining indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d
1325, 1332–33 (Fed. Cir. 2010). Although “claim language should be read in
light of the specification as it would be interpreted by one of ordinary skill in
the art,” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010),
“[a]bsent claim language carrying a narrow meaning, the PTO should only
limit the claim based on the specification or prosecution history when those
sources expressly disclaim the broader definition,” In re Bigio, 381 F.3d
1320, 1325–26 (Fed. Cir. 2004).

5 The Examiner stated that “the claims were considered for examination
purposes as reciting ‘the liquid drop forms a liquid meniscus having a
concave shape that traps the gas within the gas-trapping features and
compresses the gas that is trapped within the gas-trapping features.’” Final 2.
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Application 13/905,367

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“The USPTO is justified in using a lower threshold showing of
ambiguity to support a [determination] of indefiniteness under 35 U.S.C.
§ 112, . . . because the applicant has an opportunity and a duty to amend the
claims during prosecution to more clearly and precisely define the metes and
bounds of the claimed invention and to more clearly and precisely put the
public on notice of the scope of the patent.” Ex parte Miyazaki, 89 USPQ2d
1207, 1211–12 (BPAI 2008) (precedential). Consequently, during
prosecution, “if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112 . . . as indefinite.” Id. at 1211;
see also Bigio, 381 F.3d at 1324 (“The ‘broadest reasonable interpretation’
rule recognizes that ‘before a patent is granted the claims are readily
amended as part of the examination process.’ Burlington Indus. v. Quigg,
822 F.2d 1581, 1583 (Fed. Cir. 1987). Thus, a patent applicant has the
opportunity and responsibility to remove any ambiguity in claim term
meaning by amending the application. In re Prater, . . . 415 F.2d 1393,
1404–05 ([CCPA] 1969).”).
The Appellant argues that “[t]he discussion at [Specification]
paragraph [44] with respect to FIGS. 4a and 4b clearly shows the liquid
meniscus 135 compresses the gas 140 trapped in the gas-trapping feature
120.” Appeal Br. 8. Specification paragraph 44 discloses, in relevant part,
that “[a]s the [liquid droplet] meniscus 135 starts to invade the gas-trapping
feature 120 to a depth h, the gas 140 remains physically trapped in the
absence of any pathway to the atmosphere above the glass substrate 100, and
is gradually compressed.” Spec. ¶ 44.
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Application 13/905,367

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The Appellant’s argument is not persuasive. Even if Specification
paragraph 44 supports an interpretation of the claim phrase “compressing the
gas” as meaning that the liquid meniscus compresses the gas, we agree with
the Examiner that the Specification, as a whole, does not support limiting
claims 1 and 11 to this explicitly-described embodiment. In other words, we
agree with the Examiner that “[t]he way the claim is written it is not clear
which element is ‘compressing the gas that is trapped.’” Ans. 12.
Accordingly, we sustain the rejection of claims 1 and 11 as indefinite.

Obviousness Rejections
The Examiner rejected claims 1–6, 10, 21, 23, and 24 as unpatentable
over Petcavich, and claims 7–9, 11–13, 22, 25, and 26 as unpatentable over
Petcavich in view of various secondary references. See Final 3–10. The
Appellant argues that the Examiner’s obviousness determination as to claims
1–13 and 21–26 is based on an unsupported finding that Petcavich discloses
or suggests “a patterned oleophobic coating [that] imparts oleophobicity to
the glass substrate” as recited in independent claims 1 and 11. See Appeal
Br. 10–12, 20–21. The Appellant’s argument is persuasive for the reasons
discussed below.
The Examiner found that the claim term “a patterned oleophobic
coating” reads on Petcavich’s protective layer 203. Final 3 (citing Petcavich
¶¶ 41, 51, Fig. 2). Petcavich discloses that protective layer 203 comprises
microstructures 202 formed into or onto a first substrate surface using any
known processing technique. Petcavich ¶ 41. Petcavich discloses that
“embodiments of the protective layer may be fabricated with essentially any
polymer that may be processed to form a plurality of microstructures (e.g.,
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Application 13/905,367

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curved elongated microstructures) in a surface of the protective layer.” Id.
¶ 85. As illustrated in Petcavich Figure 2, protective layer 203 is applied to
another substrate 201 by positioning protective layer 203’s second, relatively
smooth surface on substrate 201’s surface. Id. ¶ 41.
According to Petcavich, the protective layer’s surface topography
“breaks up [a] foreign mark and promotes or allows for the redistribution of
the foreign mark substance via capillary action.” Id. ¶ 51. For example,
when oil from a fingerprint is deposited onto the microstructures’ flat upper
surfaces, the oil migrates to recessed areas between the microstructures
thereby decreasing the amount of fingerprint oil that remains on the
microstructures’ flat upper surfaces. Id. According to Petcavich,
by allowing fingerprint oil to spread throughout the recessed
area of a protective layer (film) covering an image display, the
concentration or mass of oil originally deposited which can
cause optical distortion quickly disperses to the recessed area,
and the light from an underlying image is able to traverse
through the flat upper surfaces of the transparent/translucent
microstructures and recessed area with minimal image
distortion.
Id. ¶ 55. The Examiner finds that Petcavich’s coating imparts oleophobicity
to the substrate because the microstructures are formed in the coating and
break up and redistribute the oil within the coating, “thus, they do not direct
the foreign substance [(e.g., fingerprint oil)] to the substrate.” Ans. 15–16
(internal citations omitted).
Independent claim 1 recites “a patterned oleophobic coating, disposed
on the flat surface of a glass substrate, comprising a plurality of non-
interacting adjacent gas-trapping features . . . wherein the patterned
oleophobic coating imparts oleophobicity to the glass substrate.” Appeal Br.
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29 (Claims Appendix). Independent claim 11 includes similar limitations.
See id. at 30. The Specification defines the term “oleophobic” as “the state in
which the contact angle (CA) between a droplet of oil and a solid surface is
greater than or equal to 90°.” Spec. ¶ 35. The Specification discloses that a
patterned coating that imparts oleophobicity to a glass substrate is formed
by placing a mask, which serves as a pattern for the general
shape and contours of the gas-trapping features 120, on or over
the surface 110 of the glass substrate 100. Next, a coating can
be disposed on the surface 110 with the mask thereon, followed
by a step of removing the mask. In this manner, the voids
created by removal of the mask results in a patterned coating
that defines the gas-trapping features 120.
Spec. ¶ 66. The Specification discloses that the mask can be created by
coating colloidal particles on surface 110 of glass substrate 100 using a
solution-based technique, and that “[t]he thickness of the coating generally
will serve as the height or depth H of the gas-trapping features 120.” Id.
¶ 69. After coating surface 110, particles are selectively removed such that
“the remaining coating will have openings or cavities therein that correspond
to the desired gas-trapping features 120.” Id. ¶ 70. The Specification
discloses that “although the gas-trapping features 120 may be in fluid
communication with each other through porosity that is inherently present in
the glass substrate 100 . . . , the gas-trapping features 120 are not in fluid
communication with each other, aside from their intersecting surface 110 of
the glass substrate 100.” Id. ¶ 43.
Independent claims 1 and 11 further require that the gas trapping
features are dimensioned such that “when a liquid drop contacts the [glass
substrate’s] flat surface, the liquid drop forms a liquid meniscus having a
concave shape that traps the gas within the gas-trapping features and
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Application 13/905,367

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compress[es] the gas that is trapped within the gas-trapping features.”
Appeal Br. 29–30 (Claims Appendix). The Specification discloses that
because gas molecules are physically trapped, a liquid drop only partially
penetrates the gas-trapping features resulting in a high contact angle between
the droplet and substrate surface. Spec. ¶ 62. In other words, the glass
substrate is partially exposed within the gas-trapping features, and the gas
trapping features are configured such that “the glass substrate [itself] . . .
behave[s] like an oleophobic . . . surface.” Id.
Unlike the claimed coating, Petcavich’s protective layer 203 coats the
entire surface of substrate 201. Although protective layer 203 itself is
patterned, there is no disclosure that the pattern extends to a depth that
exposes portions of substrate 201’s surface. Thus, at most, the Examiner’s
findings establish that Petcavich’s patterned coating is oleophobic, but are
not sufficient to show that the “coating imparts oleophobicity to the glass
substrate” (i.e., that the glass substrate itself behaves like an oleophobic
surface) as recited in claims 1 and 11.
For the above reasons, we do not sustain the obviousness rejections of
claims 1–13 and 21–26.
New Ground of Rejection
Claims 2–10, 12, 13, and 21–26 are rejected under 35 U.S.C.
§ 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite.
Independent claims 1 and 11 are indefinite for the reasons stated by the
Examiner in the Final Office Action and the Answer. See supra pp. 3–6. By
virtue of their dependencies from claims 1 and 11, claims 2–10, 12, 13, and
21–26 likewise are unpatentable under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite.
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Application 13/905,367

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DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–13, 21–
26
112 Indefiniteness 1, 11 2–10, 12,
13, 21–26
1–6, 10,
21, 23, 24
103(a) Petcavich 1–6, 10,
21, 23, 24

7 103(a) Petcavich,
Cook
7
8, 9 103(a) Petcavich,
Deng
8, 9
11–13, 22,
25, 26
103(a) Petcavich,
Cook, Deng
11–13, 22,
25, 26

Overall
Outcome:
1, 11 2–10, 12,
13, 21–26
2–10, 12,
13, 21–26

37 C.F.R. § 41.50(b) provides that an appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner,
in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same Record.

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)(iv). See 37
C.F.R. § 41.50(f).
Appeal 2019-004413
Application 13/905,367

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AFFIRMED IN PART;
37 C.F.R. § 41.50(b)