Ex Parte Annamalai et al

Patent Trial and Appeal Board

Feb 26, 2019

14624794 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/624,794 02/18/2015
22928 7590 02/28/2019
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Sezhian Annamalai
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SP14-0ll 9523
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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 SEZHIAN ANNAMALAI and
CARLOS ALBERTO DURAN
Appeal2018-003017
Application 14/624,794
Technology Center 1700
Before DONNA M. PRAISS, JENNIFER R. GUPTA, and
SHELDON M. McGEE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-17. 3 We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 In this Decision, we refer to the Specification filed February 18, 2015
("Spec."), the Final Office Action dated May 23, 2017 ("Final Act."), the
Appeal Brief filed August 2, 2017 ("Appeal Br."), the Examiner's Answer
dated December 1, 2017 ("Ans."), and the Reply Brief filed January 25,
2018 ("Reply Br.").
2 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 3.
3 Claims 18-20 are withdrawn from consideration by the Examiner as
directed to a non-elected invention. Non-Final Office Action dated
January 22, 2016, at 2.
Appeal2018-003017
Application 14/624, 794
The subject matter of the claims on appeal relate to a method for heat
treating a glass article to form a zero crossover temperature (T zc) gradient, or
changing a zero crossover temperature (T zc) gradient, in a glass article.
Spec. ,r 2. Sole independent claim 1, reproduced below from the Claims
Appendix, is illustrative of the claims on appeal.
1. A method for forming a zero crossover temperature (T zc)
gradient in a silica-titania glass article, the method comprising:
contacting a first surface of a silica-titania glass article
with a surface of a first heating module of a heating apparatus,
the silica-titania glass article comprising silica and titania, the
first heating module including a first heating element;
contacting a second surface of the silica-titania glass
article with a surface of a second heating module of the heating
apparatus, the second heating module including a second
heating element;
controlling the first heating element to raise a
temperature of the surface of the first heating module to a first
temperature to heat the first surface of the silica-titania glass
article;
controlling the second heating element to raise a
temperature of the surface of the second heating module to a
second temperature to heat the second surface of the silica-
titania glass article, wherein the first temperature is greater than
the second temperature;
maintaining the first heating module at the first
temperature and the second heating module at the second
temperature for a predetermined period of time, the maintaining
forming a thermal gradient through the silica-titania glass
article; and
cooling the silica-titania glass article at a predetermined
cooling rate, the cooling forming a Tzc gradient through a
thickness of the silica-titania glass article.
Appeal Br. 23 (Claims App.).
2
Appeal2018-003017
Application 14/624, 794
REJECTIONS
The Examiner maintains the following rejections on appeal (Final
Act. 5-14; Ans. 3):
Rejection 1: Claims 1-17 under 35 U.S.C. § 112(b) as indefinite;
Rejection 2: Claims 1-17 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement;
Rejection 3: Claims 1-17 under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement;
Rejection 4: Claims 1--4 and 6-17 under 35 U.S.C. § 103 over
Pressau (US 3,464,807, issued September 2, 1969); and
Rejection 5: Claim 5 under 35 U.S.C. § 103 over Pressau in view of
Gudgel et al. (US 2007/0199348 Al, published August 30, 2007) ("Gudgel")
and Nakamura et al. (US 5,201,927, issued April 13, 1993) ("Nakamura").
DISCUSSION
Rejection 1
The Examiner finds that Appellant's disclosure fails to clearly link or
associate any structure with the claimed functions of the "heating
apparatus," "first heating module," "second heating module," "first heating
element," and "second heating element." Final Act. 5. Given the absence of
such disclosure, the Examiner determines that the claims are indefinite. Id.
"[T]he failure to use the word 'means' ... creates a rebuttable
presumption- ... that§ 112[(±)] does not apply." Williamson v. Citrix
Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (citation omitted).
However, "if the challenger demonstrates that the claim term fails to recite
sufficiently definite structure or else recites function without reciting
3
Appeal2018-003017
Application 14/624, 794
sufficient structure for performing that function," this presumption may be
overcome. Id. (internal quotation marks, brackets, and citation omitted).
Claim 1, the sole independent claim, includes generic structural terms
such as "apparatus," module," and "element." Generic terms such as
"mechanism " "element " "device " and "module " "typically do not connote
' ' ' '
sufficiently definite structure" and therefore may invoke§ 112[fJ. Mass.
Inst. of Tech. & Elecs.for Imaging, Inc. v. Abacus Software, 462 F.3d 1344,
1354 (Fed. Cir. 2006); Williamson, 792 F.3d at 1350 ("'Module' is a well-
known nonce word that can operate as a substitute for 'means' in the context
of§ 112 [(±)]."); see Manual of Patent Examining Procedure (MPEP)
§ 2181 (9th ed., Aug. 2017).
Appellant points to Figures 3, 4, 5, 6A, and 6B in the application, and
paragraphs 26-30 of the Specification as providing supporting structure for
the functions "heating apparatus," "first heating module," "second heating
module," "first heating element," and "second heating element" recited in
the claims. Appeal Br. 14. The identified disclosure and Figures, however,
do not link or associate any structure with the recited heating functions.
Appellant also argues that the terms "heating apparatus," "heating
module," and "heating element" are well understood by persons of ordinary
skill in the art as connoting specific structure for achieving the function of
heating, and that one of ordinary skill in the art can readily envisage the
structure of "apparatuses," "modules," and "elements" for performing the
function of heating disclosed in Appellant's Specification. Appeal Br. 14.
Those arguments are merely attorney argument unsupported by sufficient
factual evidence, and thus are unpersuasive. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
4
Appeal2018-003017
Application 14/624, 794
evidence."). Accordingly, we sustain the rejection of claims 1-17 under
35 U.S.C. § 112(b) as being indefinite.
Rejection 2 - Claim 1
With regard to claim 1, the Examiner finds that there is no support for
the step of controlling the first heating element to raise a temperature of the
first heating module to a first temperature to heat the first surface, or for the
step of controlling the second heating element to raise a temperature of the
surface of the second heating module to a second temperature to heat the
second surface. Final Act. 6.
Appellant argues that support for claim 1 's controlling steps can be
found in paragraphs 5, 6, 26, 27, and 32 of the Specification. Appeal Br. 15.
"[T]he test for [ compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane).
We have reviewed the identified disclosure, in particular paragraph 5,
which states that "[ t ]he method further includes raising the temperature of
the first heating module to a first temperature to heat the first surface of the
glass article, raising the temperature of the second heating module to a
second temperature to heat the second surface of the glass article."
Although the Specification does not contain the limitations of the claims in
haec verba, we find that Appellant's Specification provides adequate written
description for claim 1 's controlling steps as of the application filing date.
Ariad, 598 F.3d at 1352 (explaining that there is no requirement "that the
specification recite the claimed invention in haec verba"). Accordingly, we
5
Appeal2018-003017
Application 14/624, 794
do not sustain the rejection of claims 1-15 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
Rejection 2 - Claims 16 and 17
Claim 16 depends from claim 15, which depends from claim 1, and
recites "the temperature of the furnace is maintained below an annealing
temperature of the silica-titania glass article during the predetermined period
of time." Appeal Br. 25 (Claims App.) (unnumbered) (emphasis added).
Claim 1 7 depends from claim 16 and likewise requires "the
temperature of the furnace is maintained at a temperature between about
50°C and about 150°C less than below the annealing temperature of the
silica-titania glass article during the predetermined period of time." Id.
With regard to claims 16 and 17, the Examiner finds there is no
support for maintaining a furnace temperature particularly "during [a]
predetermined period of time."
Appellant argues that support for maintaining a furnace temperature is
provided in paragraph 27 of the Specification. Appeal Br. 15.
Although paragraph 27 of Appellant's Specification discloses
increasing the furnace temperature to between about 50°C and about 150°C
below the annealing temperature of a glass article, we are not persuaded that
the disclosure provides sufficient written description support for
"maintaining" the furnace temperature between about 50°C and about 150°C
below the annealing temperature of a glass article "for [a] predetermined
period of time." Accordingly, we sustain the rejection of claims 16 and 17
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
6
Appeal2018-003017
Application 14/624, 794
Rejection 3
The Examiner points out that in Appellant's response filed
September 28, 2016, Appellant states that compositions with a silica content
above about 80% are critical or essential to the practice of the invention.
Final Act. 7; Amendment Response to Office Action Request for Continued
Examination dated September 28, 2016, at 10 (stating that in a silica-titania
system, "only compositions with a silica content above about 80% exhibit a
T zc"). Because the present claims do not require a silica content of above
about 80%, the Examiner determines that the claims are not enabled by
Appellant's disclosure. Final Act. 7.
Appellant's argument that the claims are enabled by the disclosure
because one of ordinary skill in the art would recognize that the existence of
a crossover temperature is a function of the composition of a glass and, in
particular, that a silica content above about 80% is needed in order to realize
a crossover temperature in the silica-titania glass system (Appeal Br. 16) is
unpersuasive because it is merely conclusory and unsupported by sufficient
factual evidence.
Moreover, Appellant admits that "a silica content above about 80% is
needed in order to realize a crossover temperature in the silica-titania glass
system." Appeal Br. 16. Because claim 1 fails to recite this essential silica
content, we determine that claims 1-1 7 are not commensurate in scope with
the enabling disclosure. Accordingly, we sustain the rejection of claims 1-
17 under 35 U.S.C. § 112(a) as failing to comply with the enablement
requirement.
7
Appeal2018-003017
Application 14/624, 794
Rejections 4 and 5
For the reasons discussed above, claims 1-17 are indefinite. Thus, we
do not sustain prior art Rejections 4 and 5 because to do so would require
speculative assumptions as to the meaning and scope of the claims. In re
Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that a prior art rejection
cannot be sustained if the hypothetical person of ordinary skill in the art
would have to make speculative assumptions concerning the meaning of
claim language). We emphasize that our reversal of the rejections is
procedural because the claims are indefinite; hence, we do not reach a
decision on the merits of the prior art rejections of claims 1-17.
DECISION
The rejection of claims 1-17 under 35 U.S.C. § 112(b) as indefinite is
affirmed.
The rejection of claims 1-15 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement is reversed.
The rejection of claims 16 and 17 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement is affirmed.
The rejection of claims 1-17 under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement is affirmed.
The rejection of claims 1--4 and 6-17 under 35 U.S.C. § 103 over
Pressau is reversed.
The rejection of claim 5 under 35 U.S.C. § 103 over Pressau in view
of Gudgel and Nakamura is reversed.
8
Appeal2018-003017
Application 14/624, 794
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
9