Corning Incorporated

Patent Trials and Appeals Board

Dec 17, 2021

2020006672 (P.T.A.B. Dec. 17, 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.
15/119,923 08/18/2016 Nicholas Francis Borrelli SP14-046 1935
22928 7590 12/17/2021
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS FRANCIS BORRELLI, JOSEPH MICHAEL
MATUSICK, JOSEPH FRANCIS SCHROEDER III, and
NATESAN VENKATARAMAN
__________

Appeal 2020-006672
Application 15/119,923
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims
1, 3, 4, 7, 10, 12, 40, and 50–52. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to a method of making
photosensitive glassy articles (Spec. ¶ 2).
Claim 1 is illustrative:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Corning
Incorporated. (Appeal Br. 3).
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1. (A method comprising:
forming a glassy article comprising a first glassy layer
and a second glassy layer adjacent to the first glassy layer, the
second glassy layer comprising a photosensitive glass, the
photosensitive glass comprising cerium and at least one
photosensitive metal selected from the group consisting of
silver, gold, copper, and combinations thereof;
exposing the glassy article to radiation to form an
exposed glassy article;
subjecting the exposed glassy article to a heat treatment
such that a plurality of inclusions is formed in the
photosensitive glass of the second glassy layer, the plurality of
inclusions
comprising a determined pattern to control an emission
profile of light emitted from the glassy article; and
subjecting the exposed glassy article to an ion exchange
treatment after the subjecting the exposed glassy article to the
heat treatment.

Appellant appeals the following rejections:
1. Claims 1, 3, 10, and 50 are rejected under 35 U.S.C. § 103 as
unpatentable over Pierson (US 4,057,408, issued Nov. 8, 1977) in
view of Borrelli (US 2009/0062102 A1, published Mar. 5, 2009), and
Amin (US 2011/0092353 A1, published Apr. 21, 2011).
2. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over
Pierson in view of Borrelli, Amin, and Ference (US 4,130,680, issued
Dec. 19, 1978).
3. Claims 4, 7, and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Pierson in view of Borrelli, Amin, and Luers (US
4,295,872, issued Oct. 20, 1981).
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4. Claim 51 is rejected under 35 U.S.C. § 103 as unpatentable over
Pierson in view of Borrelli, Amin, Lee (US 2005/0206805 A1,
published Sept. 22, 2005), and Scherer (US 4,248,614, published Feb.
3, 1981).
5. Claim 52 is rejected under 35 U.S.C. § 103 as unpatentable over
Pierson in view Borrelli, Amin, and Holland (US 4,323,653, issued
Apr. 6, 1982).
6. Claims 1, 3, 10, 12, and 50 are rejected under 35 U.S.C. § 103 as
unpatentable over Borrelli view of Ference.
7. Claims 4, 7, and 40 are rejected under 35 U.S.C. § 103 as
unpatentable over Borrelli in view of Ference and Luers.
8. Claim 51 is rejected under 35 U.S.C. § 103 as unpatentable over
Borrelli in view of Ference, Lee, and Scherer.
9. Claim 52 is rejected under 35 U.S.C. § 103 as unpatentable over
Borrelli in view of Ference and Holland.

Appellant argues the subject matter of independent claim 1 only with
regard to rejections (1) and (6) (Appeal Br. 5–12). We consider these
arguments with regard to claims 3, 4, 7, 10, 12, 40, and 50–52 to the extent
these claims are argued.

FINDINGS OF FACT & ANALYSIS
We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv);
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with
approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that
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Application 15/119,923

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even if the Examiner had failed to make a prima facie case, “it has long been
the Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”).

Rejections (1) to (5)
The Examiner’s findings and conclusions regarding Pierson, Borrelli,
and Amin are located on pages 3 to 5 of the Final Office Action. The
Examiner finds that Pierson teaches a method of making a photosensitive
glass as recited in claim 1, except for the claim limitation that chemical
strengthening through ion exchange is done after radiation and heat
treatments (Final Act. 4). The Examiner finds Borrelli teaches chemical
strengthening a photomachinable glass via ion exchange after heat treating
the glass (Final Act. 5). The Examiner finds Amin discloses that it is known
to use the order of chemical strengthening after heat treatment to tailor the
stress profiles in a glass (Final Act. 5). The Examiner concludes it would
have been obvious to modify the method of Pierson by chemical
strengthening after a heat treatment as taught by Borrelli and Amin in order
to optimize the ability to tailor the stress profile in accordance with end-user
product specifications of the glass (Final Act. 6).
Appellant argues the modification of Pierson to have heat treatment
before chemical strengthening of the glass would have rendered Pierson’s
method inoperable because chemical strengthening is required to implant the
silver ions that form the crystallites before the heat treatment that forms the
crystallites (Appeal Br. 7). Appellant argues that Pierson only has a single
ion exchange step as disclosed in column 27, lines 7–28 that must be present
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before the heat treatment that nucleates the crystallites (Appeal Br. 7; Reply
Br. 3).
Contrary to Appellant’s arguments, Pierson discloses that the silver
ions may be incorporated into the glass batch as part of the ingredients that
comprise the batch prior to melting the ingredients to form the glassor by
introducing the silver ions into a glass via ion exchange after glass formation
(col. 6, ll. 13-34; col. 27, ll. 12–17). Pierson does not require that the ions be
implanted into the glass by chemical strengthening prior to heat treatment.
Rather, the silver ions may be added to the glass by including them in the
glass batch materials (col. 27, ll. 12–17).
The Examiner proposes that a person of skill in the art would have
performed the chemical strengthening as taught by Borrelli and Amin to
provide the glass with desired stress profile (Final Act. 6). Borrelli teaches
chemically strengthening the glass by using a bath containing potassium
ions, sodium ions, or a mixture of potassium and sodium ions (Borrelli ¶ 58).
The Examiner finds Amin teaches performing chemical strengthening before
heat treatment to tailor the stress profiles (Final Act. 5). Accordingly, it
would have been obvious, based on these findings, to use a chemical
strengthening step where sodium or potassium ions are implanted into the
glass after the heat treatment step in order to impart the glass with a desired
stress profile/strength properties after heating to nucleate silver crystallites
as taught by Pierson.
Appellant argues there is no motivation to combine the teaching of
Borrelli and Amin with Pierson (Appeal Br. 7). Appellant contends that
Borrelli’s photomachinable glass articles constitute glass that is exposed to
radiation to form a crystal phase in the glass (Appeal Br. 7). Appellant
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contends Borrelli teaches removing the glass with the crystals formed by the
irradiation of the glass such that the glass exposed to the radiation is not
chemically strengthened because it has been removed (Appeal Br. 7).
Appellant argues Amin does not contemplate photosensitive articles at all
and is rather directed to glass having frequency transparency (Appeal Br. 7).
Appellant’s argument are not persuasive because Pierson teaches all
the limitations of claim 1, except for chemical strengthening after heat
treatment (Final Act. 3–4). The Examiner relies on Borrelli and Amin to
teach that such an ordering of the chemical strengthening and heat treatment
steps was known. Borrelli’s teaching to remove the crystallized portions of
heat treated glass is not determinative because Pierson teaches forming
crystallized silver structures. Appellant’s argument amounts to an effort to
bodily incorporate of all Borrelli’s and Amin’s teachings into Pierson’s
method. However, the proper obviousness standard is what the combined
teachings would have suggested to a person for ordinary skill in the art. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). See also, KSR Int’l Inc. v.
Teleflex Co., 550 US 398, 421 (2007) (“A person of ordinary skill is also a
person of ordinary creativity, not an automaton.”). The Examiner’s reason
to combine Borrelli’s and Amin’s teachings with Pierson’s method, to tailor
stress profiles, is not specifically contested by Appellant (Appeal Br. 7–8).
Appellant has not persuasively shown reversible error, thus, we affirm
the Examiner’s § 103 rejections (1) to (5).

Rejections (6) to (9)
The Examiner’s findings and conclusions regarding Borrelli and
Ference are located on pages 9 to 11 of the Final Office Action. The
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Examiner finds Borrelli teaches the subject matter of claim 1, except for
laminating a glassy layer with another glassy layer (Final Act. 10). The
Examiner relies on Ference to teach a photosensitive laminate comprising
laminating a photosensitive layer to a core glass that is not photosensitive
(Final Act. 10). The Examiner concludes that it would have been obvious to
modify Borrelli’s glassy plate layer by laminating the non-photosensitive
layer of Ference in order to obtain a strong and lightweight laminate (Final
Act. 10).
Appellant argues that Borrelli and Ference fail to teach every
limitation of claim 1 (Appeal Br. 11). Appellant argues that Borrelli teaches
chemical strengthening the glass after heat treatment and after removal of
the photosensitive portion of the glass article (Appeal Br. 11). Appellant
argues that Borrelli’s exposed glass cannot be ion exchanged because it is
removed by the etching step which takes place before the ion exchange step
(Appeal Br. 11).
Claim 1 recites a method that includes the steps: “exposing the glassy
article to radiation to form an exposed glassy article; subjecting the exposed
glassy article to a heat treatment such that a plurality of inclusions is formed
in the photosensitive glass of the second glassy layer . . .; subjecting the
exposed glass article to an ion exchange treatment after the subjecting the
exposed glassy article to the heat treatment.” Claim 1 recites that the
“exposed glassy article” is an article that has been exposed to radiation to
form inclusions in the glassy article. The inclusions are part of the resulting
glass article and that glass is then chemically strengthened (Spec. ¶¶ 22, 32–
37, 54).
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In contrast, Borrelli teaches a photomachinable glass having a glass
phase and opalizable phase that has at least one crystalline component
wherein the opalizable phase is etchable by an etching solution (¶ 22).
Borrelli teaches using silver particles in the glass to nucleate lithium
metasilicate crystal growth (¶ 43). The etching of the glass is done after the
lithium metasilicate crystallites form in order to exploit the differential
solubility of the glass and the lithium metasilicate crystallites (¶ 44).
Borrelli’s teaching to etch the opalizable phase (i.e., the phase with the
crystallites) appears to indicate that that portion of the glass article is
removed so as to roughen the surface of the glass article. If that opalizable
portion of the glass exposed to the radiation and heated is removed, then it
cannot meet the claim requirement that the exposed portion has inclusions in
the glassy article and the glass with inclusions is chemically strengthened.
The Examiner does not meaningfully address this argument by Appellant
(Ans. 9). The preponderance of the evidence favors Appellant’s argument
for reversal.
Accordingly, we reverse the Examiner’s § 103 rejections (6) to (9).

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CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 10, 50 103 Pierson, Borrelli, Amin 1, 3, 10,
50

12 103 Pierson, Borrelli, Amin,
Ference
12
4, 7, 40 103 Pierson, Borrelli, Amin,
Luers
4, 7, 40
51 103 Pierson, Borrelli, Amin,
Lee, Scherer
51
52 103 Pierson, Borrelli, Amin,
Holland
52
1, 3, 10, 12,
50
103 Borrelli, Ference 1, 3, 10,
12, 50
51 103 Borrelli, Ference, Lee,
Scherer
51
52 103 Borrelli, Ference,
Holland
52
Overall
Outcome
1, 3, 4, 7,
10, 12,
40, 50–
52

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED