Ex Parte Click et al

Patent Trials and Appeals Board

Jul 2, 2019

13034407 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/034,407 02/24/2011
27081 7590 07/03/2019
OWENS-ILLINOIS, INC.
ONE MICHAEL OWENS WAY
Plaza One - Legal Department
PERRYSBURG, OH 43551-2999
FIRST NAMED INVENTOR
Carol A. Click
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.
19064 USA 1728
EXAMINER
PENNY, TABATHAL
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
07/03/2019 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 PATENT TRIAL AND APPEAL BOARD
Ex parte CAROL A. CLICK and PRAMOD K. SHARMA
Appeal2018-004847
Application 13/034,407
Technology Center 1700
Before ROMULO H. DELMENDO, BRIAND. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-16, 35, 36, 38, 39, 42, and 44--49. We have
jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants state the following regarding the real party in interest: "This
application is assigned to Owens-Brockway Glass Container Inc ....
Owens-Brockway Glass Container Inc. is a wholly owned subsidiary of
Owens-Brockway Packaging, Inc., which is a wholly owned subsidiary of
Owens Illinois Group, Inc., which is a wholly owned subsidiary of Owens-
Illinois, Inc., who is the real party in interest in this appeal." Appeal Br. 4.
Appeal2018-004847
Application 13/034,407
STATEMENT OF THE CASE2
Appellants describe the invention as relating to "glass containers, and
coating processes for glass containers including methods and materials for
coating glass containers (e.g., glass bottles andjars)." Spec. 1:2--4. In
particular, the Specification discusses, for example, increasing strength
and/or fragment resistance of a glass container by making use of a sol-gel
coating. Id. at 1: 16-2:6. Claims 1 and 36, reproduced below with emphasis
added to certain key recitations, are the only two independent claims on
appeal and are illustrative of the claimed subject matter:
1. A method of coating an exterior surface of a glass
container that includes the steps of:
(a) providing a hybrid sol-gel having a solids content of
greater than 90% by volume and being formed from a
composition including at least one silane and at least one solvent;
(b) heating said hybrid sol-gel to produce a heated
hybrid sol-gel having a target viscosity of between 0.025 Pa· s
and 0.05 Pa·s;
( c) coating the exterior glass surface of the glass
container with said heated hybrid sol-gel; and
( d) heating said coated exterior glass surface of the
glass container to cross-link said hybrid sol-gel and result in a
transparent coating on said exterior glass surface of the glass
container having greater than 90°/o silicate-based material by
weight.
36. A method of coating an exterior surface of a glass container that
includes:
coating an exterior glass surface of a glass container with a
hybrid sol-gel having a temperature between 70 degrees Celsius and
2 In this Decision, we refer to the Final Office Action dated May 22, 201 7
("Final Act."), the Appeal Brief filed October 16, 2017 ("Appeal Br."), the
Examiner's Answer dated February 6, 2018 ("Ans."), and the Reply Brief
filed April 6, 2018 ("Reply Br.").
2
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Application 13/034,407
130 degrees Celsius, a solids content of greater than 90°/o by
volume, and a target viscosity of between 0.025 Pa· sand 0.05 Pa· s;
and
heating the exterior glass surface of the glass container to cross-
link said hybrid sol-gel and result in a uniform coating on the exterior
glass surface of the glass container.
Appeal Br. 42, 46 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Landry et al. us 5,051,298 Sept. 24, 1991
("Landry")
Troczynski et al. US 6,284,682 B 1 Sept. 4, 2001
("Troczynski")
Li et al. US 2009/0208398 Al Aug.20,2009
("Li")
Minou JP 2008-273783 Nov. 13, 2008
C. J. Brinker, HYDROLYSIS AND CONDENSATION OF SILICATES: EFFECTS ON
STRUCTURE, J. of Non-Crystalline Solids 100 (1988) ("Brinker").
Helen M. Synder, COLD-END COATINGS IN GLASS CONTAINER
MANUFACTURE, 5TH TECHNICAL MEETING ON GLASS, Vitro En vases,
Monterey, Mexico, May 25, 1990 ("Snyder").
H. Schmidt & M. Mennig, WET COATING TECHNOLOGIES FOR GLASS, The
Sol-Gel Gateway, Wayback Machine, Mar. 8, 2001 ("Mennig"). 3
M. Zaharescu, SOL-GEL SI02-BASED HYBRID COATINGS DOPED WITH OXIDE
NANOPARTICLES, National Seminar ofNanoscience and Nanotechnology,
March 20, 2008 ("Zaharescu").
3 We refer to this reference as Mennig because the Examiner did so.
3
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Application 13/034,407
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1, 5, 6, 8-10, 15, 16, 44, and 45 under 35 U.S.C.
§ 103(a) as unpatentable over Minou4 in view of Mennig and as evidenced
by Brinker. Final Act. 2; see also Ans. 3--4. 5
Rejection 2. Claims 2--4, 7, 35, 36, 38, 39, 42 and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Minou and Mennig and further in view of
Landry. Final Act. 5; see also Ans. 3.
Rejection 3. Claims 11-14 under 35 U.S.C. § 103(a) as unpatentable
over Minou and Mennig and further in view of Zaharescu. Final Act. 9.
Rejection 4. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
Minou and Mennig and further in view of Snyder. Id. at 10.
Rejection 5. Claims 1, 5, 6, 8-10, 15, 16, 44, 45, and 48 under 35
U.S.C. § 103(a) as unpatentable over Minou in view of Troczynski as
evidenced by Brinker. Id. at 11; see also Ans. 3--4.
Rejection 6. Claims 2--4, 7, 35, 36, 38, 39, 42, 46, and 49 under 35
U.S.C. § 103(a) as unpatentable over Minou and Troczynski further in view
of Landry. Final Act. 15; see also Ans. 3.
Rejection 7. Claims 11-14 under 35 U.S.C. § 103(a) as unpatentable
over Minou and Troczynski further in view of Zaharescu. Id. at 18. 6
4 The Examiner refers to Minou as '783. Final Act. 2.
5 The Examiner provides new grounds of rejection for claims 7, 8, and 14 in
the Answer. Ans. 3--4. We understand, however, that the Examiner's
explanation of the new ground of rejection for these claims incorporates the
prior explanation for the rejection of these claims (in the Final Office
Action) as well as the new explanation provided in the Answer.
6 The Examiner's new rejection of claim 14 also applies the Li reference.
4
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Application 13/034,407
Rejection 8. Claim 47 under 35 U.S.C. § 103(a) as unpatentable over
Minou and Troczynski further in view of Synder. Id. at 20.
Rejection 9. Claim 14 under 35 U.S.C. § 103(a) as unpatentable over
Minou, Mennig, and Zaharescu and further in view of Li. Ans. 4.
Rejection 10. Claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Minou, Troczynski, and Zaharescu and further in view of Li. Id.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We need only address independent claims 1 and 36 to resolve the
issues before us. We focus on the Appellants' arguments that identify error
and on the Examiner's determinations that relate to the error.
Claim 1. The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Minou in view of Mennig and as evidenced by Brinker
(rejection 1, above). Final Act. 2. The Examiner also rejects claim 1 under
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35 U.S.C. § 103(a) as unpatentable over Minou in view of Troczynski as
evidenced by Brinker (rejection 5, above). Id. at 11.
Claim 1 recites a process "result[ing] in a transparent coating on said
exterior glass surface ... having greater than 90% silicate-based material by
weight." The Examiner finds that Minou does not explicitly teach this
recitation. Final Act. 2-3. The Examiner finds, however, that Minou
teaches a desire to control hydrolysis and finds that Brinker evidences that
hydrolysis and condensation of silanes produces silicates. Final Act. 2-3
(citing Minou and Brinker); see also Ans. 7-8. The Examiner thus
determines that "optimization of the degree of hydrolysis and condensation
as suggested by the cited art [i.e., as suggested by Minou] would necessarily
affect the amount of silicate based material formed as evidenced by
Brinker." Ans. 7-8.
Appellants argue that the Examiner has not adequately explained how
optimization of hydrolysis and condensation would affect the amount of
silicate-based material in a resulting coating film. Appeal Br. 20. In
particular, Appellants argue that "silicates" are salts containing anions
composed of silicon and oxygen. Reply Br. 13. Appellants further argue
that Brinker teaches reactions of alkoxylanes (molecules that include anions
composed of silicon and oxygen) that form silica gels and sol-gel glasses.
Id. In other words, Appellants argue that the degree of hydrolysis or
condensation will not necessarily affect the percent of "silicate-based
material by weight" (as recited in claim 1)7 because the hydrolysis and
condensation reactions both begin and end with silicate-based material.
7 The Specification does not suggest any narrow meaning of silicate-based
material. We therefore construe "silicate-based material" based on the
6
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The preponderance of the evidence supports Appellants' position.
Brinker indicates that both the start and end products of its hydrolysis and
condensation reactions are silicon and oxygen containing compounds. See
Brinker 31 (indicating at reactions (1 ), (2), and (3) that both the start and end
products are silicate-based). We, therefore, agree with Appellants that the
Examiner has not adequately explained why optimization of a hydrolysis or
condensation reaction would lead to optimization of claim 1 's recited
percent "silicate-based material by weight" in the transparent coating. On
this basis, we do not sustain the Examiner's rejections of claim 1.
Because the Examiner's treatment of claims depending from claim 1
does not cure this error, we also do not sustain the rejections of those claims.
Claim 36. 8 The Examiner rejects claim 36 under 35 U.S.C. § 103(a)
as unpatentable over Minou and Mennig and further in view of Landry
(rejection 2 above). Final Act. 5; see also Ans. 3. The Examiner also rejects
claim 36 under 35 U.S.C. § 103(a) as unpatentable over Minou and
Troczynski further in view of Landry (rejection 6 above). Final Act. 15; see
also Ans. 3.
Claim 36 recites "coating an exterior glass surface ... with a sol-gel
having ... a solids content of greater than 90% by volume." The Examiner
finds that Minou does not explicitly teach the ratios by weight of the sol-
gel's silane and solvent. Final Act. 6. The Examiner finds, however, that
broadest reasonable interpretation that includes its ordinary meaning: a
"silicate-based material is a material comprising a silicate where a silicate is
a material that includes silicon and oxygen anions."
8 Claim 36 does not recite a film's percent "silicate-based material by
weight" as we discuss above. Our discussion regarding claim 1, therefore,
does not apply.
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Minou teaches that the amount of each component must be determined in
order to ensure the hydrolysis reaction advances sufficiently and determines
that it would have been obvious to determine a workable range of solids by
routine experimentation. Id.
The Examiner also refers back to the Examiner's rationale provided
for claim 1. Id. at 5---6 (stating that rejection is "as applied to claim[] 1 ...
and further in view of Landry"). When addressing claim 1, the Examiner
found that Minou teaches film applied at 3-30% solids by weight and that
the applied film is hardened. Id. at 3 (citing Minou). The Examiner finds
that Mennig teaches that coating thickness is defined by "withdrawal speed,
solid content, dipping angle, and viscosity of the coating." Id. at 3--4 ( citing
Mennig). The Examiner therefore determines that the recited solid content
is a result effective variable that a person of skill would have arrived at
through optimization. Id. at 4.
Appellants argue that the cited references do not provide a reason to
coat the exterior surface of a glass container having a solids content of
greater than 90% by volume. Appeal Br. 10-14 ( arguing in the context of
claim 1 ), 28 (referring back to arguments made for claim 1 ). In particular,
Appellants argue that optimization of a result effective variable may not
extend beyond the teachings of the prior art. Id. at 9. Appellants further
argue that a person of skill in the art would not have had reason to reach a
coating with solids content of greater than 90% by volume because Minou
teaches that high solids content9 is problematic. Id. at 11-12.
9 Appellants recognize that Minou's teaching relates to solids content by
weight rather than by volume (as recited in the claims). Appeal Br. 12.
Appellants provide a conversion calculation establishing that 30% solids by
weight (Minou's suggested maximum) amounts to about 14.6% solids by
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Application 13/034,407
The Examiner responds by emphasizing that Minou, Mennig (for
rejection 2), and Troczynski (for rejection 6) all support that solids
concentration is a "result effective variable[] which can be optimized based
on other process parameters and desired coating thickness." Ans. 6. We
agree with the Examiner that Mennig, for example, teaches that solid content
defines coating thickness. Mennig 2. The preponderance of the evidence,
however, supports Appellants' position that Minou discourages adjusting the
percent solids content applied to the glass container to claim 36's "solids
content of greater than 90% by volume" recitation. Appeal Br. 11-14; see
also Minou ,r,r 18 ( suggesting that the precursor is dissolved to "a solid
content concentration of 3-30% by weight of the solution" prior to applying
to a glass surface), 34 ("If the solid concentration is more than 3 0% [sic] is
not preferable because unevenness and cracks are likely to occur on the
membrane surface."). The Examiner has not adequately explained why,
under a result effective variable rationale, a person skilled in the art would
have had reason to adjust Minou' s solid concentration beyond the upper
limit taught by Minou. See In re Sebek, 465 F .2d 904, 907 (CCP A 1972)
("Where, as here, the prior art disclosure suggests the outer limits of the
range of suitable values, and that the optimum resides within that range, and
where there are indications elsewhere that in fact the optimum should be
sought within that range, the determination of optimum values outside that
range may not be obvious.").
As an additional theory, the Examiner also interprets claim 3 6 as not
requiring a material "having the claimed solids content at the time of
volume (well below claim 36's 90% minimum). Id. at 14. The Examiner
does not refute this calculation.
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coating." Ans. 8. As to claim 36 10, this interpretation is unreasonably
overbroad. Claim 36, by its plain language, requires "coating an exterior
glass surface of a glass container with a hybrid sol-gel having ... a solids
content of greater than 90% by volume." Appeal Br. 46; see also Reply Br.
9 (explaining why the Examiner's construction of claim 36 is overbroad).
Because the Examiner has not adequately explained why a person of
skill in the art would have coated an exterior surface of a glass container
with a hybrid sol-gel having solids content greater than 90% by volume, we
do not sustain the Examiner's rejections of claim 36. The Examiner's
treatment of claims depending from claim 36 does not cure this error, and
we, therefore, also do not sustain the rejections of those claims.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-16, 35, 36, 38, 39, 42, and 44--49.
REVERSED
10 Because we resolve the appeal of claim 1 on a different basis, we do not
need to reach the issue of whether or not the Examiner's claim construction
is correct as to claim 1.
10