Ex Parte Grejda et al

Patent Trial and Appeal Board

Nov 1, 2017

13792964 (P.T.A.B. Nov. 1, 2017)

United States Patent and Trademark Office
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.
13/792,964 03/11/2013 Robert Dennis Grejda SP12-215 5584
22928 7590 11/03/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
EDWARDS, LAURA ESTELLE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
11/03/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DENNIS GREJDA and KEITH ERNEST HANDFORD
Appeal 2017-0031121
Application 13/792,964
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the final rejection of
claims 1,3,4, 6-8, and 10. Claims 11-14 are pending but have been
withdrawn due to a restriction requirement. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION PURSUANT TO § 41.50(b).
Appellants’ invention is directed to a holding device for supporting a
lens or other optical element during surface treatment, such as during a
coating operation (Spec. 1:9-11).
1 The real party in interest as indicated in the Appeal Brief is “Coming
Incorporated.” App. Br. 3.
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Application 13/792,964
Claim 1 is illustrative:
1. A support apparatus for coating optical surfaces, the support
apparatus comprising a platen having one or more holes, wherein each of the
one or more holes in the platen is featured to seat one or more edges of an
optical element against the platen during surface coating, wherein the platen
is formed of a machinable glass ceramic.
Appellants appeal the following rejections:
1. Claims 1, 3, 7, and 8 are rejected 35 U.S.C. § 103(a) as unpatentable
over Addiss (US 3,953,652; issued Apr. 27, 1976) in view of Wall
(GB 2 453 719 A; issued Apr. 22, 2009).
2. Claims 1, 4, 6-8, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim (US 2005/0150461 Al; published July 14,
2005) in view of Holderfield (US 4,881,411; issued Nov. 21, 1989).
Appellants argue the claims as a group (App. Br. 11-15). We select
claim 1 as representative of the claims on appeal. 37 C.F.R. 41.37(c)(l)(iv).
FINDINGS OF FACT & ANALYSIS
Rejection (1): § 103 Addiss in view of Wall.
The Examiner finds that Addiss teaches the subject matter of claim 1,
except for the platen being made of a glass ceramic (Ans. 2-3). The
Examiner finds that Wall teaches providing an optical element support made
from a machinable glass ceramic that has a low thermal expansion
coefficient, is lightweight, and less vibrationally sensitive (Ans. 3). The
Examiner concludes that it would have been obvious to make Addiss’
optical element platen or support from machinable glass ceramic material, as
taught by Wall, to achieve the benefits of using glass ceramics (Ans. 3).
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Appellants argue that one of ordinary skill in the art lacks a rationale
to modify the holder of Addiss to fabricate it from the glass ceramic of Wall,
because one of ordinary skill in the art would have recognized that the
precise permanent optical alignment and tight fitting of multiple optical
components in an optical system as disclosed by Wall would provide no
benefit to the holder of Addiss (App. Br. 12). Appellants contend that
plastics such as polycarbonate have much higher thermal expansion
coefficients than a glass ceramic such as MACOR®,2 which would create
stresses in the plastic optical element and coating formed thereon (App. Br.
13). Appellants argue that one of ordinary skill would have selected a
material for the optical element holder that more closely matches the thermal
expansion coefficient of the plastic optical element to avoid stresses in the
coatings deposited on the optical element (App. Br. 14).
Although Appellants argue that the plastic lenses of Addiss have a
higher thermal expansion coefficient than the thermal expansion coefficient
of a glass ceramic, the Examiner finds that one of ordinary skill would
recognize that the plastic lens and the support would rise in temperature such
that the ordinarily skilled artisan would appreciate the benefit of using
machinable glass ceramic that would stably support the lenses at elevated
temperatures (Ans. 10-11). The Examiner’s response, however, does not
address Appellants’ argument that one of ordinary skill in the art would not
use a material with a lower thermal expansion coefficient to support a plastic
lens with a higher thermal expansion coefficient because of the stresses
formed in the coating (App. Br. 14). Indeed, we find it unclear why one of
ordinary skill in the art would use a material for an optical bench that is used
2 MACOR® is a glass ceramic sold by Coming, Inc. (App. Br. 13.)
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Application 13/792,964
to hold optical members in precise positions to create an optical splitter or
some other optical arrangement to create a support for holding lenses during
coating as in Addiss (Wall 6:7-8, 10:22-24). The preponderance of the
evidence favors Appellants’ argument of nonobviousness.
On this record, we are constrained to reverse the Examiner’s § 103
rejection over Addiss in view of Wall.
REJECTION (2): § 103 Kim in view of Holderfield
The Examiner finds that Kim teaches all the limitations of claim 1,
except for the use of a machinable glass ceramic to make the support (20)
(Final Act. 4 (citing Kim, Fig. 7)). The Examiner finds that Holderfield
teaches to use the machinable glass ceramic MACOR® to make a support
(34). Final Act. 4 (citing Holderfield col. 3,11. 20-28). Holderfield
discloses that the glass ceramic material is durable and has good thermal and
insulating characteristics for processing a substrate. Id. The Examiner
concludes that it would have been obvious to make Kim’s platen or substrate
support from machinable glass ceramic such as MACOR® as taught by
Holderfield because glass ceramics are durable with good thermal and
insulating characteristics (Final Act. 5).
Appellants argue that a person of ordinary skill in the art would be
discouraged from constructing the support of Kim from the glass ceramic of
Holderfield because Kim’s support includes gear teeth machined into the
support and glass ceramic is a brittle material subject to wear and
degradation when deployed in operations requiring persistent mechanical
force (App. Br. 15). Appellants argue that MACOR® has a flexural strength
that is about one-third of that of a steel (App. Br. 15). Appellants contend
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Application 13/792,964
that one of ordinary skill in the art would understand that mechanical wear
and degradation would be particularly pronounced for fine, low dimensional
features such as a gear teeth. Id.
Appellants’ arguments are not persuasive because they fail to provide
evidence in the record to substantiate the mere attorney argument that the
machinable glass ceramic (MACOR®) in Holderfield would have failed if
used as the support material in Kim. In re Schulze, 346 F.2d 600, 602
(CCPA 1965). Although Appellants argue that the flexural strength of
MACOR® is one-third that of steel, Appellants have not shown that under
the conditions in Kim the machining of gear teeth into the MACOR®
material would have failed in the operation disclosed by Kim. We find that
the Examiner has established a reasonable expectation of success in using
Holderfield’s glass ceramic (MACOR®) as the material for Kim’s wafer
support 20.
On this record, the preponderance of the evidence favors the
Examiner’s obviousness conclusion. We affirm the Examiner’s rejection
under § 103 of claims 1, 4, 6-8, and 10 over Kim in view of Holderfield.
NEW GROUND OF REJECTION: CLAIM 3
Claim 3 is rejected under 35 U.S.C. § 103 over Kim in view of
Holderfield.
Claim 3 depends from claim 1 and recites “wherein the machinable
glass ceramic is formed of a combination of borosilicate glass with
fluorophlogopite mica.” The Examiner does not include claim 3 under the
35 U.S.C. § 103 rejection over Kim in view of Holderfield (Final Act. 4-6).
However, the Examiner finds with regard to the § 103 rejection over Addiss
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in view of Wall that MACOR® is a machinable glass ceramic of boro silicate
glass with fluorophlogopite mica (Final Act. 3). The Examiner further finds
that Holderfield discloses using MACOR® to make the substrate support
(Final Act. 4). Therefore, we find that the combined teachings of Kim and
Holderfield would have suggested using a machinable glass ceramic formed
of a combination of boro silicate glass with fluorophlogopite mica otherwise
known as MACOR®.
DECISION
The Examiner’s decision is affirmed-in-part.
We reverse the Examiner’s 35 U.S.C. § 103 rejection of claims 1, 3, 7,
and 8 over Addiss in view of Wall.
We affirm the Examiner’s 35 U.S.C. § 103 rejection of claims 1, 4, 6-
8, and 10 over Kim in view of Holderfield.
A new ground of rejection of claim 3 only is entered pursuant to
37 C.F.R. § 41.50(b) under 35 U.S.C. § 103 over Kim in view of
Holderfield.
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TIME PERIOD FOR RESPONSE
This Decision contains a new grounds of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50 provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
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ORDER
AFFIRMED-IN-PART
37 C.F.R. § 41.50(40
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