Ex Parte ENDO et al

Patent Trial and Appeal Board

Jul 31, 2018

14597587 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/597,587 01/15/2015 Jun ENDO
22850 7590 08/02/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
447250US99CONT 9969
EXAMINER
YANG, ZHEREN J
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
OBLONPAT@OBLON.COM
tfarrell@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUN ENDO, SHUSAKU AKIBA,
KAZUTAKA ONO, and TETSUY A NAKASHIMA
Appeal2018-005947
Application 14/597 ,587
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 31-35 and 37--42 of Application
14/597,587 under 35 U.S.C. § 103(a) as obvious. Final Act. (April 21,
2017). 1 Appellants2 seek reversal of this rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6. We affirm.
1 The '5 87 Application has been granted special status through the Patent
Prosecution Highway program. Office of Petitions Decision (December 2,
2015). We, therefore, take up this appeal out of tum.
2 Applicant Asahi Glass Co. is identified as the real party in interest. Appeal
Br. 2.
Appeal2018-005947
Application 14/597,587
BACKGROUND
The displays on mobile devices, liquid crystal display televisions, and
touch panels are frequently protected by a cover glass. Spec. 1. Cover glass
plates need to have high strength and be very thin. Id. One way to achieve
this combination of properties is to form a compressive stress layer on the
surface of the cover glass. Id. The compressive stress layer can be created
either by a physical tempering method or a chemical tempering method.
Id. at 1-2.
The '5 87 Application describes a glass composition that is said to be
particularly useful as a chemically-tempered cover glass. Id. at 3.
Claim 31 is representative of the '587 Application's claims and is
reproduced below from the Claims Appendix:
31. A plate glass which comprises, as represented by mole
percentage based on oxides,
from 62 to 66% of Si 02,
from 7.5 to 12% of Ab03,
from 8 to 13% ofMgO,
from 9 to 16% ofNa20,
from 0.5 to 7% ofK20,
0% B203,
0%Zn0, and
from O to 1 % of CaO,
wherein the difference obtained by subtracting the content of
Ab03 from the total content ofNa20 and K20 is at most 9%,
and Zr02 is contained in an amount of at most 0.6%,
wherein the plate glass has a glass transition point of at least
570°C and a specific gravity of at most 2.55.
Appeal Br. 10 (paragraphing supplied).
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Application 14/597,587
REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 31-35 and 37--42 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Speit3 and Kurachi. 4 Final Act. 3.
DISCUSSION
Appellants argue for reversal of the rejection of claims 31-35 and
37--42 as a group. We, therefore, choose independent claim 31 as
representative of the claims on appeal. The remaining claims on appeal will
stand or fall with claim 31. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
After consideration of the Final Action, the Appeal Brief, and the
Examiner's Answer, we affirm the rejection of claim 31 for the reasons
expressed in the Final Action and the Answer. We add the following,
primarily for emphasis.
In rejecting claim 31, the Examiner found that Speit describes a
chemically-treatable glass having a composition in terms of mole
percentages that overlap the ranges recited in claim 31. Final Act. 3. The
Examiner also found that Speit is silent regarding the inclusion of Zr02. Id.;
see also Speit Abstract. The Examiner further found that Kurachi describes
the addition of 0-1 wt. % Zr02 to an aluminosilicate glass to improve the
heat resistance of the glass. Id. at 3--4 (citing Kurachi ,r 112). The Examiner
found that Speit describes a glass composition falling within its disclosed
ranges as having a glass transition temperature of 595°C. Id. at 5. The
Examiner also found that the addition of the small amount of Zr02 described
3 US 5,895,768, issued April 20, 1999.
4 US 2003/0220183 Al, published November 27, 2003.
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Application 14/597,587
in Kurachi would not lower the glass transition temperature below 570°C.
Id. The Examiner further found that, based on the similarities between
Speit' s glass and the claimed composition, Speit' s glass was expected to
have a specific gravity less than 2.55. Id.
Based upon these findings, the Examiner concluded that the
differences between the subject matter of claim 31 and the prior art would
have been obvious to a person having ordinary skill in the art at the time of
the invention.
Appellants argue that the rejection should be reversed primarily
because ( 1) the Examiner had not established that the modification to Speit' s
formulation proposed in the references would not render the glass
composition unsuitable for Speit's intended purpose, Appeal Br. 5---6;
(2) "[ s ]imply describing a glass composition cannot be a sufficient basis for
a conclusion of obviousness of a select species from a very broad generic
description," id. at 7; and (3) the Examiner erred by relying on the principle
of "obvious to try" as the foundation for the rejection; id. at 7-9.
For the following reasons, we are not persuaded that Appellants have
established the existence of reversible error in the rejection of claim 31.
First, Appellants argue that "[ t ]he Examiner has not reasonably
established that a person of ordinary skill in the art would reasonably expect
that by including zirconium oxide from Kurachi into Speit' s glass
composition that the result would still meet Speit's rather strict
requirements .... " Appeal Br. 5. It is true that a proposed modification
which would render modified apparatus unsuitable for the intended purpose
of the base reference is improper. See In re Gordon, 733 F .2d 900, 902
(Fed. Cir. 1984). We, however, are unaware of any case law placing the
burden on an examiner to establish that the proposed modification would not
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Application 14/597,587
have such an effect. Certainly, Appellants cite none. Rather, the burden is
on an appellant to provide arguments and technical reasoning that establish
the unsuitability of the proposed combination for the base reference's
intended purpose.
Second, Appellants argue that the Examiner erred in finding that there
was a prima facie case of obviousness of a specific species based upon an
alleged very broad generic description. Appeal Br. 6-8. Appellants'
argument is not supported by the law. As the Federal Circuit has explained,
where there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of
obviousness. But the presumption will be rebutted if it can be
shown: (1) That the prior art taught away from the claimed
invention, In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997);
or (2) that there are new and unexpected results relative to the
prior art, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) ( emphasis added); see also In re Cyclobenzaprine Hydrochloride
Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1080 n.7 (Fed. Cir.
2012) (explaining that a two-part, burden-shifting inquiry is appropriate in
the prosecution context); Tyco Healthcare Group LP v. Mut. Pharm. Co.,
642 F.3d 1370, 1372-73 (Fed. Cir. 2011) (quoting Iron Grip Barbell). In
cases where the relevant comparison between the claimed invention of prior
art involves overlapping ranges, the Federal Circuit has "consistently held
that even a slight overlap in range establishes a prima facie case of
obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003); see also
In re Brandt, 886 F.3d 1171, 1177-78 (Fed. Cir. 2018) (abutting ranges); In
re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997) (overlap only at end
points).
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Application 14/597,587
In this case, the Examiner has properly established a prima facie case
of obviousness, and Appellants have not presented sufficient evidence or
argument to rebut that case.
Third, as the Examiner explained, the reason for including the Zr02 is
expressly described in Kurachi and discussed in the Examiner's rejection.
See Final Act. 3--4; Answer 12. Thus, the Examiner did not find that the
claimed combination of teachings from Speit and Kurachi was merely
"obvious to try." Rather, the Examiner provided an objective reason to
combine the teachings of these references in the manner proposed in the
rejection in the prior art. This is all the Examiner need do.
We have considered Appellants' other arguments and find them
similarly unpersuasive. We, therefore, affirm the rejection of claims 31-35
and 37--42 of the '587 Application.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims
31-35 and 37--42 as unpatentable over the combination of Speit and
Kurachi.
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
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