Dipakbin Qasem. Chowdhury et al.

Patent Trials and Appeals Board

Jul 30, 2019

13547092 - (D) (P.T.A.B. Jul. 30, 2019)

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.
13/547,092 07/12/2012 Dipakbin Qasem Chowdhury SP12-175 8037
22928 7590 07/30/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
DULKO, MARTA S
ART UNIT PAPER NUMBER
1746
NOTIFICATION DATE DELIVERY MODE
07/30/2019 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 DIPAKBIN QASEM CHOWDHURY, WILLIAM KEITH
FISHER, KIAT CHYAI KANG, MICHAEL AARON MCDONALD, and
CHUNHE ZHANG
____________

Appeal 2018-005826
Application 13/547,092
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–8, 21–24, 26, 27, 29, 31, and
322. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Claims 1 and 21 illustrate the subject matter on appeal, and are
reproduced below with language italicized that is of particular relevance to

1 Appellants identify Corning Incorporated as the real party in interest.
Appeal Brief filed November 27, 2017 (“Br.”), 2.
2 Final Office Action entered June 23, 2017 (“Final Act.”), 1.
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the present appeal:
1. A laminated structure comprising:
a metal sheet including a thickness T3 from 0.5 mm to
2 mm and having a predetermined non-planar shape;
a glass sheet including a thickness T1 of about 200 μm or
less and conforming to the predetermined non-planar shape of
the metal sheet; and
an adhesive layer attaching the glass sheet to the metal
sheet, the adhesive layer including a thickness T2 of about
300 μm or less.

21. A laminated structure comprising:
a metal sheet including a thickness T3 from 0.5 mm to
2 mm and having a predetermined non-planar shape;
a glass sheet including a thickness T1 of about 200 μm or
less and conforming to the predetermined non-planar shape of
the metal sheet; and
an adhesive layer attaching the glass sheet to the metal
sheet, the adhesive layer including a thickness T2 of about
1.5 mm or less.

Br. 14, 15 (Claims Appendix) (emphasis added).
The Examiner maintains the rejection of claims 1–8, 21–24, 26, 27,
29, 31, and 32 under 35 U.S.C. § 103(a) as unpatentable over Tahon3 in view
of Laroche4 in the Examiner’s Answer entered March 19, 2018.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 1–8, 21–24, 26, 27, 29, 31, and 32 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action, the Answer, and below.

3 Tahon et al., US 6,309,901 Bl, issued October 30, 2001 (“Tahon”).
4 Laroche et al., GB 2 074 089 A, published October 28, 1981 (“Laroche”).
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We review appealed rejections for reversible error based on the
arguments and evidence the appellants provide for each issue the appellants
identify. 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 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.”)).
Appellants argue claims 1–8, 21–24, 26, 27, 29, 31, and 32 as a group
on the basis of claims 1 and 21, which Appellants argue together. Br. 10–
13. We accordingly select claim 1 as representative, and decide the appeal
as to claims 1–8, 21–24, 26, 27, 29, 31, and 32 based on claim 1 alone.
C.F.R. § 41.37(c)(1)(iv).
Tahon discloses a laminate comprising a thin glass layer bonded to a
metal support by an intermediate adhesive layer. Col. 2, ll. 44–49; col. 4,
ll. 7–8. Tahon discloses that the support “preferably” has a thickness of less
than 500 µm, and indicates that when the laminate is used in
high-temperature processes, “it may be beneficial” to use a support having a
thickness of from 10 μm to 50 μm “to avoid extensive curl of the material
due to different thermal shrinkage or expansion of the glass and the
support.” Col. 4, ll. 18–23.
Tahon discloses that the glass layer of the laminate “has a thickness of
less than 700 μm,” and for some applications, a thickness of less than
300 μm, or even less than 200 μm, may be preferred. Col. 3, ll. 8–11.
Tahon explains that “[f]or lower brittleness a thickness of not less than
30 μm or even not less than 50 μm may be preferred.” Col. 3, ll. 11–12.
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Tahon further explains that the “risk of breakage of the glass is decreased
substantially by the presence of the laminated support.” Col. 2, ll. 64–65.
Tahon discloses embodiments in which the laminate is flexible, and
indicates that a “preferred flexible laminate is capable of being wound
around a cylindrical core having a radius of 1.5 m without breaking.” Col.
8, ll. 46–51. Tahon discloses that the lower the thickness of the glass, the
higher the glass’s flexibility, but the brittleness of the glass is inversely
proportional to its thickness, and “the best compromise between flexibility
and brittleness depends on the application.” Col. 8, ll. 51–58.
The Examiner finds that Tahon discloses all the structural limitations
of the laminate of claim 1, “except for the specific thickness of the
adhesive,” and the Examiner relies on Laroche’s disclosure of a laminate in
which glass and metal layers are bonded by a hot-melt adhesive having a
thickness of less than 150 µm, which Laroche discloses yields very effective
bonds, while leaving only a very small surface area of adhesive exposed to
the environmental atmosphere. Final Act. 2–3; Laroche pg. 1, ll. 5, 72–76,
pg. 2, ll. 25–26, pg. 3, ll. 7–14.
In view of Tahon’s silence as to the thickness of the adhesive layer of
Tahon’s laminate, the Examiner concludes that it would have been obvious
to one of ordinary skill in the art at the time of Appellants’ invention to use
an adhesive layer having a thickness of less than 150 µm in Tahon’s
laminate as disclosed in Laroche, to predictably produce very effective
bonds between the glass layer and metal support, while leaving only a small
surface area of adhesive exposed to the environmental atmosphere. Final
Act. 2–3.
Appellants argue that “Tahon does not disclose the metal sheet
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thickness range [of 0.5 mm (or 500 µm) to 2 mm] recited by claims 1 and
21.” Br. 10.
As discussed above, however, Tahon discloses that the metal support
of Tahon’s laminate “preferably” has a thickness of less than 500 µm
(0.5 mm). Tahon’s indication that this thickness is only a preference would
have suggested to one of ordinary skill in the art that a support having a
thickness of somewhat greater than 500 µm could be successfully used in
Tahon’s laminate. In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)
(“[o]bviousness does not require absolute predictability of success . . . all
that is required is a reasonable expectation of success.”) (emphasis omitted,
citing In re O’Farrell, 853 F.2d 894, 903‒04 (Fed. Cir. 1988))
Furthermore, a prima facie case of obviousness exists when a claimed
range and a prior art range do not overlap but are close enough that one of
ordinary skill in the art would have expected the claimed and prior art ranges
to yield the same or substantially the same results. In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (citing Titanium Metals Corp., v. Banner, 778
F.2d 775, 783 (Fed. Cir. 1985)). In such circumstances, the burden of proof
shifts to the appellants to demonstrate that the claimed subject matter would
not have been obvious by establishing “that the particular range is critical,
generally by showing that the claimed range achieves unexpected results
relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990; Titanium Metals, 778 F.2d at 783; Peterson, 315 F.3d at 1330.
In view of the closeness of the 500 µm upper limit of the metal
support thickness range disclosed in Tahon, which includes, for example,
4.9999 µm, and the 0.5 mm (500 µm) lower limit of the metal sheet
thickness range recited in claim 1, one of ordinary skill in the art reasonably
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would have expected that such a slight difference between these thicknesses
would not result in any appreciable or practical difference between laminate
structures having metal support sheets of these different thicknesses. The
burden therefore properly shifts to Appellants to demonstrate the criticality
of the metal sheet thickness recited in claim 1. On the record before us,
Appellants do not meet this burden because Appellants do not argue, much
less demonstrate, that metal sheets having a thickness as recited in claim 1
produce unexpected results relative to metal supports having a thickness as
disclosed in Tahon. Br. 9–13.
Appellants argue that “Tahon teaches away from metal sheets with
thicknesses of 0.5 mm or greater” because Tahon discloses that the thickness
of the support is preferably less than 250 μm, and is even more preferably
from 10 μm to 50 μm “to avoid curling of the laminate due to different
thermal shrinkage or expansion of the glass sheet and the support at elevated
temperatures.” Br. 10–11.
As discussed above, however, Tahon discloses that—when used in
high-temperature processes—a laminate with a support having a thickness of
from 10 μm to 50 μm may be beneficial “to avoid extensive curl of the
material due to different thermal shrinkage or expansion of the glass and the
support.” Col. 4, ll. 18–23. Tahon indicates that this benefit of a thinner
support, therefore, relates only to use of the laminate in high-temperature
processes. One of ordinary skill in the art would have understood from this
disclosure that thicker supports would be suitable for applications that do not
involve high temperature processes. Consequently, Tahon does not teach
away from use of metal supports with thicknesses of 0.5 mm or greater in all
applications. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining
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that “mere disclosure of alternative designs does not teach away”); In re
Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017) (explaining that teaching
away requires “clear discouragement” from implementing a technical
feature).
Appellants argue that “there is absolutely no disclosure in Tahon” of a
laminate having the metal and glass sheet thickness as recited in claim 1 that
is capable of being wound around a core with a radius of 1.5 m. Br. 12.
Claim 1, however, does not require the recited laminate to be capable of
being wound around a core with a radius of 1.5 m. In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims.”).
Appellants argue that “[t]here is no indication whatsoever in Tahon
that a laminate comprising a glass layer with a thickness of 200 µm or less is
capable of being conformed to a non-planar shape without breaking.” Br.
11. Appellants argue that Tahon and Laroche both teach that glass becomes
very brittle and liable to breakage at lower thicknesses, and, because of this
brittleness, Laroche expressly teaches a laminate comprising a glass layer
having a thickness of 0.6 mm or greater, and while “Tahon discloses glass
layers having a thickness of less than 200 μm, Tahon also discloses much
thicker glass layers (e.g., up to 700 μm).” Id. Appellants argue that “Tahon
indicates that a compromise must be struck between flexibility and
brittleness at low thicknesses, but fails to disclose which glass thicknesses
provide sufficiently high flexibility and sufficiently low brittleness to
successfully achieve such a deformation.” Br. 12. Appellants argue that a
fair reading of the applied prior art references, therefore, would actually
have led a skilled artisan away from the laminate of claim 1, and one skilled
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in the art would not have been motivated to use a glass layer having a
thickness of 200 μm or less to form a non-planar laminate, much less to
conform such a thin glass sheet to a metal sheet having a predetermined non-
planar shape, in view of the collective teachings of the references. Br. 13.
As discussed above, however, Tahon discloses that the glass layer of
Tahon’s laminate “has a thickness of less than 700 μm,” and explains that
“[f]or lower brittleness a thickness of not less than 30 μm or even not less
than 50 μm may be preferred.” Col. 3, ll. 8–11. One of ordinary skill in the
art would have understood from this disclosure that the brittleness of the
glass could be reduced by keeping the thickness of the glass above 50 μm.
As also discussed above, Tahon discloses embodiments in which the
laminate is flexible, and indicates that a “preferred flexible laminate is
capable of being wound around a cylindrical core having a radius of 1.5 m
without breaking.” Col. 8, ll. 46–51. Significantly, Tahon further discloses
that “[t]he risk of breakage of the glass is decreased substantially by the
presence of the laminated support.” Col. 2, ll. 64–65.
Taken together, these disclosures reasonably would have suggested to
one of ordinary skill in the art that a laminate as disclosed in Tahon having a
metal support and a glass layer with a thickness of less than 700 μm, but
greater than 50 μm, would be flexible enough to conform to a non-planar
shape—such as a cylindrical core having a radius of 1.5 m—without
breaking the glass.
Furthermore, as discussed above, Tahon discloses that although lower
glass thickness results in higher flexibility, lower thickness also results in
greater brittleness. Tahon indicates, however, that “the best compromise
between flexibility and brittleness depends on the application.” Col. 8,
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ll. 51–58. In view of these disclosures, one of ordinary skill in the art
seeking to produce a flexible laminate as disclosed in Tahon would have
adjusted the thickness of the glass to achieve a desired level of flexibility,
balanced against an acceptable degree of brittleness, that would suit a
particular desired application for the laminate, and would have arrived at an
optimal thickness, such as a thickness of 200 μm or less as recited in claim
1, through nothing more than routine experimentation. In re Aller, 220 F.2d
454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”). Thus, contrary to
Appellants’ arguments, Tahon’s disclosures, considered in view of Laroche,
would not have led away from the laminate of claim 1, but, rather, would
have suggested such a laminate, as discussed more fully below.
Appellants argue that “the Examiner is picking and choosing among
the disclosures of Tahon and Laroche only so much as supports her position
and ignoring the other parts necessary to provide a full appreciation of what
is fairly suggested by both references.” Br. 13. Appellants argue that one of
ordinary skill in the art would not have been motivated to combine Tahon
and Laroche in the manner suggested by the Examiner. Br. 12–13.
As discussed above, however, the Examiner’s reliance on Laroche is
limited to the reference’s suggestion of a suitable thickness for an
intermediate adhesive layer used in a laminate to bond metal and glass
layers. In view of Laroche’s disclosure that a hot-melt adhesive having a
thickness of less than 150 µm produces very effective bonds between metal
and glass layers of a laminate, while leaving only a very small surface area
of adhesive exposed to the environmental atmosphere, one of ordinary skill
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in the art would have been led to use a thickness as disclosed in Laroche for
the intermediate adhesive layer of Tahon’s laminate, particularly in view of
Tahon’s silence as to the thickness of the adhesive layer, as the Examiner
determines. Final Act. 2–3. In so doing, the ordinarily skilled artisan would
have arrived at a laminate having the features recited in claim 1, including
the recited metal and glass layer thicknesses, as discussed above. Contrary
to Appellants’ arguments, the Examiner, therefore, does not improperly pick
and choose among the disclosures of Tahon and Laroche.
Accordingly, Appellants’ arguments are unpersuasive of reversible
error in the Examiner’s rejection of claim 1. We therefore sustain the
Examiner’s rejection of claims 1–8, 21–24, 26, 27, 29, 31, and 32 under 35
U.S.C. § 103(a).
DECISION
We affirm the Examiner’s rejection of claims 1–8, 21–24, 26, 27, 29,
31, and 32 under 35 U.S.C. § 103(a).
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).

AFFIRMED