Ex Parte Barton et al

Patent Trial and Appeal Board

Oct 31, 2016

12663633 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/663,633 12/08/2009
21839 7590 11/02/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Neil Barton
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.
1021500-000194 5395
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NEIL BARTON and ASHLEY CARL TORR
Appeal2015-002794
Application 12/663,633
Technology Center 1700
Before BEYERL YA. FRANKLIN, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
May 5, 2014 decision finally rejecting claims 1-5, 7-16, and 18-27 ("Final
Act"). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Pilkington Group Limited
(Appeal Br. 2).
Appeal2015-002794
Application 12/663,633
CLAIMED SUBJECT MATTER
Appellants' invention is directed to a method of producing a bent,
coated, laminated glazing, as well as a bent, coated, laminated glazing
having certain characteristics (Abstract). The Specification indicates that
such glazings may be used as automotive glass, for example (Spec. 1 ). The
claimed method involves ( 1) coating two separate plies (e.g. pieces of glass)
with coatings which are identical in composition and thickness, (2) heating
each of the plies to the same temperature, (3) bending the plies to achieve
complimentary shapes which may paired to form a laminate, ( 4) cooling the
bent plies to fix their shape, (5) pairing the plies around a ply of interlayer
material to form a composite, and (6) subjecting the composite to heat and
pressure to laminate the plies together. Details of the claimed method and
glazing are set forth in independent claims 1 and 14, which are reproduced
below from the Claims Appendix of the Appeal Brief (emphasis in italics):
1. A method of producing a bent, coated, laminated glazing
comprising the steps of:
providing a coating on a surface of each of first and
second plies of glazing material, the coating on the first ply
being identical to the coating on the second ply so that the
coating on the first ply possesses the same composition and
thickness as the coating on the second ply;
heating each of the coated plies to the same temperature;
causing each of the coated plies to bend in one or more
directions such that complementary shapes are achieved to
enable subsequent pairing of the plies to form a laminate;
cooling each of the bent, coated plies so as to fix their
bent shapes;
pairing the bent, coated plies about a ply of interlayer
material to form a composite such that the coated surface of the
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Application 12/663,633
first bent ply and the uncoated surface of the second bent ply
are adjacent to the interlayer ply; and
subjecting the composite to heat and pressure to laminate
the glazing plies together.
14. A bent, coated, laminated glazing comprising:
first and second bent plies of glazing material joined
together by a ply of interlayer material between them, each of
the first and second plies being a heat-treated ply which is
heated to the same temperature prior to being joined together by
the ply of interlayer material,
wherein each of the first and second plies has a coating
on one of its surfaces, and the coated surface of the first ply and
the uncoated surface of the second ply are adjacent to the ply of
interlayer material, wherein the coating on the first ply is
identical to the coating on the second ply so that the coating on
the first ply possesses the same composition and thickness as
the coating on the second ply.
DISCUSSION
Claims 1-5, 7-16, and 18-27 (which are all of the claims on appeal)
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown2
with Halberschmidt3 in view of Varanasi. 4 Appellant's separate arguments
for each of independent claims 1, 14, and 27 are not substantively different
(compare Appeal Br. 6-8 (claim 1), with Appeal Br. 8-10 (claim 14), and
Appeal Br. 10-13 (Claim 27)). Therefore, we will focus our discussion on
the rejection of claim 1, but the analysis is equally applicable to claims 14
2 Brown et al., U.S. Patent No. 6,582,799 Bl, issued June 24, 2003.
3 Halberschmidt et al., U.S. Patent No. 3,769, 133, issued October 30, 1973.
4 Varanasi et al., U.S. Patent Pub. 2006/0188730 Al, published August 24, 2006.
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Application 12/663,633
and 27. We also address Appellants' separate arguments regarding
dependent claims 11 and 24.
Claim 1. The Examiner finds that Brown5 discloses each of the
elements of claim 1, except that "Brown et al specifically do not disclose
that functional coating 16 provided on one or more surface[ s] having the
same composition and/or coating" (Final Act. 2-3). The Examiner further
finds that Varanasi, which is directed to a similar laminated glass
construction as Brown, teaches "two glass plies having [the] same identical
functional coating bonded together with a polymeric interlayer to improve
heat gain or loss through a glazing due to environmental differences between
the outdoor air and indoor air" (Final Act. 3, citing Varanasi, i-f 32). The
Examiner cites the disclosure in Varanasi's Paragraph 30 as teaching that the
two surfaces are coated in "the same manner" which, the Examiner finds,
"would result in the same composition and thickness" (Ans. 4, citing
Varanasi, ,-r 30). According to the Examiner, it would have been obvious to
modify Brown so that the coatings on the plies are the same to improve heat
gain or loss (Final Act. 4).
Appellants make several arguments seeking reversal of the rejection.
First, Appellants contend that Brown is directed to a system in which only
one of the plies is coated, which is different from the claims, which recite a
coating on both plies (Appeal Br. 6). Appellants point to sections of Brown
which recite that only one of the plies is coated, and to Brown's statement
5 Some of the findings from Brown are actually from Halberschmidt, which
is incorporated by reference into Brown (Final Act. 2).
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Application 12/663,633
that preferably at least one ply is uncoated (Brown, 6:4--8). However, as
found by the Examiner, Brown explicitly states that:
Although not limiting to the invention, the functional coating
16 is preferably provided on the inner major surface 14 to make
the coating less susceptible to environmental and mechanical
wear than if on an outer surface of the laminate. However the
functional coating 16 could also be provided on one or more
of the surfaces 13, 22 or 236•
(Brown, 3 :46-51, emphasis added). Thus, Brown is quite clear in stating that
the functional coating can be provided on both plies. As this rejection is an
obviousness rejection, and not an anticipation rejection, we determine that
the Examiner's findings support a conclusion that it would have been
obvious in view of Brown to coat both plies. Merck & Co. v. Biocraft Labs.,
Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreforred embodiments, must be
considered") (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
Second, Appellants argue that Brown does not teach heating the
coated plies to the same temperature (Appeal Br. 7). However, as found by
the Examiner, Brown specifically states that a "conventional RPR process,"
in which both plies are heated to the same temperature, can be used with its
system, even though a modified process with different temperatures is
preferred (Brown, 6:18-34). Thus, the preponderance of the evidence
6 Surfaces 22 and 23 are on a different ply than surfaces 16 and 13 (see,
Brown, FIG. 1).
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Application 12/663,633
supports the Examiner's determination that it would have been obvious to
heat the plies to the same temperature.
Third, Appellants argue that Varanasi does not teach that the coatings
on the plies have the same composition and thickness (Appeal Br. 8).
Appellants' argument is not persuasive. Varanasi discloses that the surface
of each glass sheet "is coated by sequentially depositing thereon, by any
suitable method, an electrically conductive metal oxide layer and an
inorganic dielectric oxide layer, of the type, thickness and materials
previously described herein" (Varanasi, i-f 30). Appellants contend that
because an example in Varanasi involves lamination of flat plies rather than
bent ones, it would not have been obvious to ensure that the coatings have
the same composition and thickness when applied to bent plies as recited in
the claimed invention (Appeal Br. 7). However, Appellants have not
pointed to persuasive evidence or provided a persuasive explanation to
support this contention and, therefore, have failed to show harmful error in
the Examiner's obviousness conclusion.
In view of the foregoing, we determine that, based on the
present record, Appellants have not demonstrated reversible error in the
obviousness rejection of independent claims 1, 14, and 27.
Claim 11. Claim 11 recites that the plies of glazing material are
gradually cooled so as to anneal them. Appellants argue that Brown recites
that sidelight glass (which is what is disclosed in Brown) involves tempered
glass, rather than annealed glass, and does not teach or suggest annealing the
plies, as recited in the claim (Appeal Br. 13). However, as found by the
Examiner, Brown only states that sidelight glass is usually tempered, not that
it must be, and that Brown teaches that its cooling station can be for cooling,
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tempering and/or heat strengthening (Brown, 7:6-11). Thus, Examiner finds
that the teachings of Brown encompass cooled glass (annealed), tempered
glass or heat strengthened glass. Appellants have not directly challenged
these findings, and have not demonstrated reversible error in the obviousness
rejection of claim 11.
Claim 24. Claim 24 recites that the first and second plies have the
same thickness. Appellants argue that Brown does not disclose or suggest
this limitation (Appeal Br. 13). However, as found by the Examiner (see,
Ans. 6), Brown states that the second ply is "similar" to the first (Brown,
6:8-10), and provides an example in which both plies have the same
thickness (Brown, 5:38--45). These findings are sufficient to support a
conclusion that it would have been obvious to have two plies with the same
thickness.
CONCLUSION
We AFFIRM the rejection of claims 1-5, 7-16, and 18-27 under
35 U.S.C. § 103(a) as being unpatentable over Brown with Halberschmidt in
view of Varanasi.
AFFIRMED
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