Ex Parte Buhay et al

Board of Patent Appeals and Interferences

Jan 4, 2012

11085330 (B.P.A.I. Jan. 4, 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.
11/085,330 06/17/2005 Harry Buhay 1637D1 4570
7590 01/05/2012
Andrew C. Siminerio, Esq.
PPG Industries, Inc.
One PPG Place
Pittsburgh, PA 15272
EXAMINER
FERGUSON, LAWRENCE D
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
01/05/2012 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
__________

Ex parte HARRY BUHAY, JAMES J. FINLEY,
JAMES P. THIEL, and JOHN P. LEHAN
__________

Appeal 2010-001870
Application 11/085,330
Technology Center 1700
___________

Before BRADLEY R. GARRIS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001870
Application 11/085,330

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 8-26. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Claim 12, reproduced below, is illustrative of the subject matter on
appeal.
12. An article, comprising:
a substrate;
a functional coating over at least a portion of the substrate; and
a protective coating comprising 35 wt. % to 100 wt. % alumina
and 0 wt. % to 65 wt. % silica over the functional coating, wherein the
functional coating and the protective coating define a coating stack
and the protective coating provides the coating stack with an
emissivity higher than the emissivity of the functional coating alone.
Claims 8-26 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Nietering1 in view of Arfsten2.
B. DISCUSSION
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the

1 US 5,073,450 issued Dec. 17, 1991.
2 US 6,410,173 B1 issued June 25, 2002.
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Application 11/085,330

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burden in this case for substantially the reasons set forth by Appellants in
their Briefs. We add the following for emphasis.
Appellants’ invention is directed to a coated article having a
functional coating and a protective coating for protecting the functional
coating from mechanical and/or chemical damage (Spec. [0012], [0040]).
The protective coating is made sufficiently thick so as to raise the emissivity
of the coating stack over that of the functional coating alone (id.).
The Examiner relies upon Nietering to establish that a coating stack of
dielectric material (as a functional coating) and a silicon dioxide (protective)
coating on a (glass) substrate is known (Ans. 4), but notes that Nietering
“does not teach the presence of aluminum [sic: alumina] in addition to the
silica” (Ans. 5). The Examiner relies upon Arfsten to exemplify that silica
and alumina are “functionally equivalent structure low index of refraction
materials for antireflective coatings in glazing applications. Therefore . . .
one of ordinary skill in the art would have found it obvious to substitute a
combination of silica and alumina . . . for [the] silica [of Nietering]” (id. at
6).
Appellants correctly point out that Nietering expressly teaches that the
function of the silicon dioxide layer is to improve adhesion between two
plys (App. Br. 8). Appellants further explain that Arfsten only teaches the
use of the silica and alumina coating as an outer layer of its antireflection
coating because each of the silica and alumina have similar refractive indices
(id. at 9), and contend that this is insufficient to establish functional
equivalence for the different purpose disclosed in the primary reference of
improved adhesion between two layers (id. at 9, 10; Reply Br. 2). The
Examiner has not directed us to any evidence that Arfsten teaches alumina
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Application 11/085,330

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as useful for the same purpose that the silica is used in Nietering. We
therefore agree with Appellants that the Examiner has not adequately shown
that the alumina taught by Arfsten would have been reasonably expected to
behave as a functional equivalent to the silica of Nietering and provide the
improved adhesion of Nietering’s silica layer (see, e.g., App. Br. 14; Reply
Br. 2). The Examiner has not relied upon any other reason with sufficient
specificity to supplement and/or replace the silica of Nietering with the
alumina of Arfsten (generally Ans.).
The Examiner’s rejection and response to argument presented in the
Answer do not adequately address the concerns raised by the Appellants
outlined above. “[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For the foregoing reasons, and those presented by Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness, and we conclude that the Examiner’s rejection is
also improperly based upon improper hindsight reasoning. KSR, 550 U.S. at
420 (The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning;”
citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”)).
In light of these circumstances, a preponderance of the evidence
supports the Appellants’ position, and the § 103(a) rejection is reversed.
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C. DECISION
The decision of the Examiner is reversed.
REVERSED

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