90010016 (B.P.A.I. Jan. 19, 2012)

Ex Parte 7090906 et al

Board of Patent Appeals and InterferencesJan 19, 2012

90010016 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,020 01/07/2008 7090906 303202-999003 1563 20583 7590 01/20/2012 JONES DAY 222 EAST 41ST ST NEW YORK, NY 10017 EXAMINER STEIN, STEPHEN J ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,010 10/23/2007 7090906 OKEF-08011US0 2807 20583 7590 01/20/2012 JONES DAY 222 EAST 41ST ST NEW YORK, NY 10017 EXAMINER STEIN, STEPHEN J ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) 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. 90/010,016 08/29/2007 7090906 12305-001-999 1173 20583 7590 01/20/2012 JONES DAY 222 EAST 41ST ST NEW YORK, NY 10017 EXAMINER STEIN, STEPHEN J ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 01/20/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ ANEMOSTAT PRODUCTS and TECHNICAL GLASS PRODUCTS Requesters and Respondents v. Patent of O’KEEFFE’S, INC. Patent Owner and Appellant ____________ Appeal 2011-005771 Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016 Patent US 7,090,906 B2 Technology Center 3900 ____________ Before RICHARD E. SCHAFER, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON REHEARING Appeal 2011-005771 Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016 Patent US 7,090,906 B2 2 Technical Glass, who is the Requester and Respondent, requests rehearing pursuant to 37 C.F.R. § 41.52 (“Req. Reh’g”). Technical Glass identified an error in our Decision mailed September 22, 2011 in our affirmance of Ground 17 in which we misidentified the rejected claims in the “Summary” section on page 49 of the Decision. This error was corrected on page 50 of the corrected Decision mailed September 29, 2011 (“Corrected Decision”). Technical Glass identified an error in our Decision mailed September 22, 2011 in which we identified Rejection 19 as a ground of rejection, but failed to address the rejection in the body of the decision. This error was corrected on page 47 of the corrected Decision mailed September 29, 2011, in which we reversed the rejection. With respect to Rejection 19, Technical Glass also identified an error in our citation of the patent number and first listed inventor for said patent. We thus correct the errors as follows: Corrected Decision, page 6 (replace with): 19. Claims 1, 6 and 7-28 under 35 U.S.C. § 103(a) are obvious over Teddington (‘940)18 in view of the Glass Age article (Ground 25); 18 U.S. Patent No. 5,645,940 issued July 8, 1997. Corrected Decision, page 47 (replace with): 19. OBVIOUSNESS IN VIEW OF TEDDINGTON (‘940) AND GLASS AGE Appeal 2011-005771 Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016 Patent US 7,090,906 B2 3 The claims all require a fire resistant film which contains PET. The Examiner appears to rely on the Glass Age publication for this teaching. However, under Rejection 1, we concluded that the Glass Age does not necessarily describe a PET film. The Examiner did not explain why the choice of a PET film would have been obvious to the ordinary skill worker. Consequently, we are compelled to reverse the rejection of claims 1, 6, and 7-28 as obvious in view of Teddington (‘940) and Glass Age. Corrected Decision, page 50 (replace with): 19. The rejection of claims 1, 6, and 7-28 under 35 U.S.C. § 103(a) as obvious in view of Teddington (‘940) and Glass Age is reversed. In correcting the error we made in referencing the cited ‘940 patent in Rejection 19, we have reconsidered the rejection and now modify our Corrected Decision in which we reversed the Examiner’s decision. The Examiner found that Teddington (‘940) “discloses a shatter resistant glass sheet (safety glass) having a PET film which satisfies ANSI standard Z97.1 (100 ft lbs impact resistance) (See column 3, lines 39-42, column 4, lines 41-43, column 6, lines 6-14).” (RAN 84.) The Examiner concluded that “it would have been obvious to a person of ordinary skill in the art at the time of the invention to made to select wired glass as the type of glass to apply the PET film of US ‘940 to the glass of the Glass Age Article, since it is disclosed that this type of glass is suitable for producing an laminated glazing having the desired impact resistance.” (Id.) O’Keeffe contends that PET films are not necessarily fire resistant and therefore the disclosure in the ’940 patent does not meet the claim limitation Appeal 2011-005771 Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016 Patent US 7,090,906 B2 4 of a “fire-resistant film” which contains PET (O’Keeffe’s App. Br. 27). However, we concluded in the Corrected Decision that a PET film would inherently be fire-resistant as required by the claim (Corrected Decision at FF20; p. 29, ll. 13-14; p. 38, ll. 16-18). Thus, O’Keeffe’s reasoning is not persuasive. O’Keeffe also contends that the claims are patentable for the same reasons discussed under Rejections 5 and 17 (O’Keeffe’s App. Br. 27). We have addressed these reasons in the Corrected Decision and found them unpersuasive. In sum, upon reconsideration of Rejection 19, we conclude that claim 1 is obvious in view of Teddington (‘940) and Glass Age and affirm the Examiner’s decision. Claims 6-28 were not argued separately and thus fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). REHEARING GRANTED bim FOR PATENT OWNER: JONES DAY 222 EAST 41ST STREET NEW YORK, NY 10017 Appeal 2011-005771 Reexamination Control Nos. 95/001,010, 95/001,020 & 90/010,016 Patent US 7,090,906 B2 5 FOR THIRD-PARTY REQUESTER: NICHOLAS J. TUCCILLO McCORMICK, PAULDING & HUBER, LLP CITYPLACE II 185 ASYLUM STREET HARTFORD, CT 06103-4102 FOR THIRD-PARTY REQUESTER: ROBERT F. SCOTTI KLARQUIST SPARKMAN, LLP ONE WORLD TRADE CENTER SUITE 1600 121 S.W. SALMON STREET PORTLAND, OR 97204