Ex Parte Cremer et al

Patent Trial and Appeal Board

Jun 27, 2018

14095217 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/095,217 12/03/2013
22928 7590 06/29/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Melissa Danielle Cremer
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.
SP12-385 1026
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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 MELISSA DANIELLE CREMER, SHANDON DEE
HART, DAVID HENRY, SHAWN MICHAEL O'MALLEY,
and VITOR MARINO SCHNEIDER
Appeal2017-008798
Application 14/095,217 1
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER L. OGDEN, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11, 15-18, 22, and 24--27. We have jurisdiction.
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest. Appeal Br. 3.
Appeal2017-008798
Application 14/095,217
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "methods and
formulations for spray coating sol-gel thin films on substrates." Spec. ,r 2.
The composition could be used, for example, to enhance glass strength for
automobiles. Id. at ,r 61. Claims 1 and 25, reproduced below with emphases
added to certain key recitations, are illustrative of the claimed subject
matter:
1. A method for forming a thin layer on a substrate, the
method comprising:
selecting a sol-gel or sol-gel precursor containing a
material for forming a thin film layer on a substrate;
selecting a solvent, wherein the solvent comprises at least
dipropylene glycol monomethyl ether (DPM) and tripropylene
glycol monomethyl ether (TPM);
combining the sol-gel or sol-gel precursor with the
solvent into a mixture, wherein the mixture contains from 1
%, to 60%, by volume of dipropylene glycol mono methyl ether
(DPM) and the mixture contains from 1 %, to 20%, by volume
of tripropylene glycol mono methyl ether (TPM);
applying the mixture onto a surface of the substrate;
permitting the mixture to spread and level on the surface;
and
at least one of drying and curing the mixture to form the
thin layer on the substrate.
25. A method for forming a thin layer on a substrate, the method
compnsmg:
selecting a sol-gel or sol-gel precursor containing a material for
forming a thin film layer on a substrate;
2 In this Decision, we refer to the Final Office Action dated August 15, 2016
("Final Act."), the Appeal Brief filed February 14, 2017 ("Appeal Br."), the
Examiner's Answer dated March 30, 2017 ("Ans."), and the Reply Brief
filed May 26, 2017 ("Reply Br.").
2
Appeal2017-008798
Application 14/095,217
selecting a solvent, wherein the solvent comprises propylene
glycol methyl ether acetate (PGMEA) and a second solvent or
combination of solvents with a higher boiling point than PGMEA;
combining the sol-gel or sol gel precursor and the solvent
into a mixture, wherein the mixture contains from 1 %, to 30%, by
volume of PGMEA, and wherein the second solvent or
combination of solvents is present in equal or greater quantities
than the PGMEA;
applying the mixture onto a surface of the substrate by
spraymg;
permitting the mixture to spread and level on the surface; and
at least one of drying and curing the mixture to form the thin
layer on the substrate.
Appeal Br. 38, 42 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Masumoto et al. us 4,865,948 Sept. 12, 1989
("Masumoto ")
Asakawa et al. US 2004/0071889 Al Apr. 15, 2004
("Asakawa")
Tsuchiya et al. US 2006/0006541 Al Jan. 12,2006
("Tsuchiya")
Yan et al. US 2008/0003373 Al Jan.3,2008
("Yan")
Choi et al. US 2010/0330278 Al Dec. 30, 2010
("Choi")
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1--4, 7-10, 15, 18, 22, and 22-26 under 35
U.S.C. § 103 as unpatentable over Tsuchiya. Final Act. 2.
3
Appeal2017-008798
Application 14/095,217
Rejection 2. Claim 5 under 35 U.S.C. § 103 as unpatentable over
Tsuchiya in view of Choi. Id. at 6.
Rejection 3. Claims 1--4, 6-8, 10-11, 15, 18, 22, and 24 under 35
U.S.C. § 103 as unpatentable over Masumoto. Id. at 7.
Rejection 4. Claim 5 under 35 U.S.C. § 103 as unpatentable over
Masumoto and further in view of Asakawa and referring to the Roughness
Chart for evidence only. Id. at 11.
Rejection 5. Claims 1--4, 6-10, 15-18, 22, and 24--27 under 35
U.S.C. § 103 as unpatentable over Yan. Id. at 12.
Rejection 6. Claim 5 under 35 U.S.C. § 103 as unpatentable over Yan
and further in view of Asakawa and referring to the Roughness Chart for
evidence only. Id. at 15.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant presents separate arguments for claims 1 and 25 and do
not present separate arguments for the rejections addressing claim 5 (i.e.,
4
Appeal2017-008798
Application 14/095,217
rejections 2, 4, and 6). Appeal Br. 7. We thus limit our discussion to claims
1 and 25. All remaining claims will stand or fall with the claim from which
they depend from which they depend. 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
Rejections 1 and 2. The Examiner rejects claims 1--4, 7-10, 15, 18,
22, and 24--26 as obvious over Tsuchiya and rejects claim 5 as unpatentable
over Tsuchiya in view of Choi. Final Act. 2-3, 6. We first address claim 1.
The Examiner finds that Tsuchiya teaches a sol-gel precursor with
material for forming a thin layer on a substrate. Final Act. 2 ( citing
Tsuchiya). The Examiner finds that Tsuchiya teaches that its solvent may
comprise DPM and TPM, and that a skilled artisan would have had a
reasonable expectation of success in selecting these two solvents. Id. at 3--4.
The Examiner finds that Tsuchiya does not explicitly teach the percent DPM
and TPM in the mixture but finds that the amount of solvent can be tailored
based on "desired solids content for the target application thickness and
storage stability." Id. at 3.
Appellant first argues that Tsuchiya merely teaches DPM and TPM
within a long list of hundreds of possible solvents rather than teaching the
claimed combination in the claimed ratios. Appeal Br. 9-10. Tsuchiya,
however, teaches use of both DPM and TPM (Tsuchiya ,r 108, 111) and
suggests use of more than one of its identified solvents (id. ,r 105 (referring
to using "at least one solvent")). Although the Tsuchiya's list of possible
solvents is long, a prior art reference's teachings can render a claim obvious
even where a component appears without emphasis in a longer list. See
Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
("That the '813 [prior art] patent discloses a multitude of effective
combinations does not render any particular formulation less obvious. This
5
Appeal2017-008798
Application 14/095,217
is especially true because the claimed composition is used for the identical
purpose taught by the prior art"); see also In re Susi, 440 F.2d 442, 445
(CCPA 1971) (affirming obviousness rejection where disclosure of the prior
art was "huge, but it undeniably include[ d] at least some of the compounds
recited in appellant's generic claims and [was] of a class of chemicals to be
used for the same purpose as appellant's additives"). Claim 1 uses DPM and
TPM for the identical purpose taught by Tsuchiya (i.e., as a solvent), and on
this record, the solvents disclosed in Tsuchiya are functionally equivalent.
Thus, selecting DMP and TPM would have been no "more than the
predictable use of prior art elements according to their established
functions." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
With respect to Appellant's argument that Tsuchiya does not teach the
recited amounts of DPM and TPM, we agree with the Examiner that
Tsuchiya teaches that its amount of solvent can be adjusted to reach desired
properties. Final Act. 3 ( citing Tsuchiya ,r 104 ). Determining total amount
of solvent therefore would be a matter of routine experimentation. In re
Aller, 220 F.2d 454, 456 (CCPA 1955) ("where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.").
Appellant further argues that Tsuchiya fails to appreciate the relative
ratio of two or more solvents in a sol-gel mixture as result effective. Appeal
Br. 13; see also Reply Br. 3 ( arguing that Examiner has not identified a
property to optimize by adjusting amount of each solvent). The evidence
before us, however, provides no indication that relative amount of solvent
matters to the result, such that selecting a relative amount would require
more than ordinary skill in the art. Appellant does not argue criticality of
6
Appeal2017-008798
Application 14/095,217
choice of solvent or relative ratios of different solvents. Cf In re Hoeschele,
406 F.2d 1403, 1406 (C.C.P.A. 1969) (holding that recited molar
proportions did not confer patentability where references broadly taught
ingredients and where was no evidence "pointing to any critical significance
in the claimed molar proportions or ranges of molecular weight").
Moreover, DPM and TPM are similar molecules such that they would
be expected to behave similarly in a sol gel system. It has long been held
that "it is prima facie obvious to combine two compositions each of which is
taught by the prior art to be useful for the same purpose, in order to form a
third composition to be used for the very same purpose." In re Kerkhoven,
626 F.2d 846, 850 (CCPA 1980). The choosing of the amount of each
component to reach a total amount of solvent is arbitrary and equally
obvious absent some evidence that the choice matters. Furthermore, we note
that claim 1 permits a very wide range of relative amounts of DPM to TPM;
the ratio of DPM to TPM could be anywhere from 1 :20 to 60: 1. Under these
circumstances, the recited composition ranges are not sufficient to confer
patentability. Because Appellant's arguments do not identify reversible
error, we sustain the Examiner's rejection of claims 1--4, 7-10, 15, 18, 22,
and 24.
With respect to claim 25, the Examiner finds that Tsuchiya teaches
additionally using PGMEA as a solvent and finds that DPM and TPM have
higher boiling points than PGMEA. Final Act. 5; see also Tsuchiya ,r 103.
The Examiner's rationale with respect to the relative amounts of PGMEA,
DPM, and TPM are similar to those addressed above. Final Act. 5---6.
Appellant's arguments with respect to claim 25 are substantially the
same as those presented for claim 1. Appeal Br. 14--19. Those arguments
7
Appeal2017-008798
Application 14/095,217
do not establish reversible error for the reasons explained above. Thus, we
also sustain the Examiner's rejection of claims 25 and 26.
Rejections 3 and 4. The Examiner rejects claims 1--4, 6-8, 10-11, 15,
18, 22, and 24 as obvious over Masumoto and rejects claim 5 as
unpatentable over Masumoto in view of Asakawa. Final Act. 2-3, 6. These
rejections do not apply to claim 25, so we focus only on claim 1.
The Examiner finds that Masumoto teaches a method for forming a
thin layer on a substrate with a sol-gel containing material and solvent
comprising DPM or TPM. Final Act. 7 ( citing Masumoto ). The Examiner
determines that it would have been obvious to use both DPM and TPM
because a skilled artisan would have had a reasonable expectation of success
in selecting them from the list in Masumoto, and both compositions are
useful for the same purpose. Id. at 7-8 (citing Kerkhoven, 626 F.2d at 850)).
The Examiner also determines that Masumoto teaches that amount of
solvent can be tailored depending on application and is therefore result
effective. Id. at 8.
Appellant's arguments are similar to those addressed above.
Appellant argues that there is no reason to select DPM and TPM from
Masumoto 's teachings. Appeal Br. 20-21. Masumoto, however, teaches
both of these components (Masumoto 4:7-52), and its additional teachings
regarding other possible components does not negate obviousness as
explained above with respect to Rejections 1 and 2.
Appellant also argues that the Examiner has not established that the
concentration of solvents is a result-effective variable. Appeal Br. 29. We
agree with the Examiner, however, that Masumoto teaches that amount of
solvent can be tailored to reach a desired result. Final Act. 8 ( citing
8
Appeal2017-008798
Application 14/095,217
Masmnoto 4:1-57 ("The amount of the organic solvent ... varies ...
according to the concentration of the solution, the kind of base material,
etc.")). Appellant's argument is thus unpersuasive for the reasons explained
above with respect to Rejections 1 and 2.
Because Appellant does not identify reversible error, we sustain these
rejections.
Rejections 5 and 6. The Examiner rejects claims 1--4, 6-10, 15-18,
22, and 24--27 as obvious over Yan and rejects claim 5 as unpatentable over
Yan in view of Asakawa. Final Act. 2-3, 6. We first focus on claim 1.
The Examiner finds that Yan teaches a method for forming a thin
layer on a substrate with a sol-gel containing material and solvent
comprising DPM and TPM. Final Act. 12 ( citing Yan). The Examiner
determines that Yan teaches controlling components (including the solvent)
so that the coating deposited possesses the desired index. Id. ( citing Yan ,r,r
49, 59). The Examiner thus determines that the amount of solvent is result-
effective. Id.
Appellant's arguments are again similar to those addressed in
conjunction with the Examiner's Tsuchiya rejection. Appellant argues that
there is no reason to select DPM and TPM from Yan's teachings. Appeal
Br. 32. Yan, however, teaches both of these components (Yan ,r 47), and its
additional teachings regarding other possible components does not negate
obviousness as explained above with respect to Rejections 1 and 2. Yan also
suggests that more than one of its suggested solvents may be used. Yan ,r 39
( explaining that composition comprises "at least one solvent").
Appellant also argues that the Examiner has not established that the
concentration of solvents is a result-effective variable. Appeal Br. 35. We
9
Appeal2017-008798
Application 14/095,217
agree with the Examiner, however, that Yan teaches that amount of solvent
effects refractive index. Final Act. 12 ( citing Yan ,r,r 47, 57). Appellant's
argument is thus unpersuasive for the reasons explained above with respect
to Rejections 1 and 2.
Because Appellant does not identify reversible error, we sustain this
rejection with respect to claims 1--4, 6-10, 15-18, 22, and 24.
Regarding claim 25, the Examiner finds that Yan teaches use of
PGMEA, TP A, and DPM where TPM and DPM have higher boiling points
than PGMEA. Final Act. 14 ( citing Yan). The Examiner again determines
that Yan teaches controlling components (including the solvent) so that the
coating deposited possesses the require index. Id. ( citing Yan ,r,r 49, 59).
The Examiner, again, thus determines that the amount of solvent is result-
effective. Id.
Appellant's arguments with respect to claim 25 are substantially the
same as those presented for claim 1. Appeal Br. 31-36. Those arguments
do not establish reversible error for the reasons explained above. Because
Appellant does not identify reversible error, we sustain this rejection with
respect to claims 25-27.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-11, 15-18, 22, and 24--27.
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
10