Ex Parte Holland et al

Board of Patent Appeals and Interferences

Sep 7, 2010

11543615 (B.P.A.I. Sep. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOHN RICHARD HOLLAND,
KARIKATH SUKUMAR VARMA, and DAVID WILLIAM
HOLDEN
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Appeal 2009-014835
Application 11/543,615
Technology Center 1700
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Before TERRY J. OWENS, PETER F. KRATZ, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014835
Application 11/543,615

A. Introduction2
John Richard Holland, Karikath Sukumar Varma, and David William
Holden (“Holland”) timely appeal under 35 U.S.C. § 134(a) from the final
rejection3 of claims 1-5, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to glass laminates that are said, in
embodiments, to have improved impact resistance properties, although the
fire performance was not significantly different from comparative
formulations. (Spec. 9 [0030].)
Representative Claim 1 reads:
1. A glass sheet having a clear dried interlayer upon one
surface thereof
produced by pouring a solution onto the surface of the
glass and drying it under controlled conditions,
said solution comprising sodium silicate waterglass,
in which the weight ratio of SiO2:Na2O is less than 3.0,
at least 8% by weight of water soluble polyhydric
organic compound, and
from 30 to 70% by weight of water,

2 Application 11/543,615, Fire Resistant Glazings, filed 5 October 2006 as a
division of an application that was filed as the National Stage of an
international application filed on 16 March 2001, claiming the benefit of an
application filed in the UK on 18 March 2000. The specification is referred
to as the “615 Specification,” and is cited as “Spec.” The real party in
interest is listed as Pilkington Group Limited, a wholly owned subsidiary of
Nippon Sheet Glass Limited of Japan (Appeal Brief, filed 12 March 2009
(“Br.”), 3.)
3 Office action mailed 16 September 2008 (“Final Rejection”; cited as
“FR”).
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Appeal 2009-014835
Application 11/543,615

wherein during the drying step
the water content of the solution is reduced to
between 10 and 35% by weight of the dried
interlayer and
the concentration of the organic polyhydric organic
compound is increased to between 10 and 40% by
weight of the dried interlayer.
(Claims App., Br. 20; indentation and paragraphing added.)
Representative Claim 3 reads:
3. A fire resistant glass laminate, comprising
a first glass sheet having
a clear dried interlayer upon one surface thereof
and
a second sheet juxtaposed on the inter layer opposite said
first glass sheet,
said interlayer produced by pouring a solution onto the
surface of the first glass sheet and drying it under
controlled conditions,
said solution comprising sodium silicate waterglass,
having
a weight ratio of SiO2:Na2O of less than 3.0,
at least 8% by weight of water soluble
polyhydric compound, and
from 30 to 70 % by weight of water,
and a second glass sheet juxtaposed on the interlayer
opposite said first glass sheet.
(Claims App., Br. 20; indentation and paragraphing added.)
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Appeal 2009-014835
Application 11/543,615

The Examiner has maintained the following grounds of rejection:4
A. Claims 1-3 stand rejected under and 35 U.S.C. § 102(b) in view
of Toussaint.5
B. Claim 4 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Toussaint and Nolte.6
C. Claim 5 stands rejected under 35 U.S.C. § 103(a) in view of the
combined teachings of Toussaint and Goelff.7
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Holland argues the Examiner erred in rejected claims 1 and 3 as being
anticipated by Toussaint separately, under separate headings, but for
substantially the same reasons. More particularly, Holland argues that
Tousssaint “discloses an interlayer with an adjuvant such as glycerine
(glycerol) in an amount of not more than 10% (col. 3, lines 67-68).” (Br. 12,
3d para (addressing claim 1); id. at 15, 3d para. (addressing claim 3).) In
contrast, according to Holland, claim 1 requires “a dried interlayer that has a
concentration of between 10 and 40% by weight of an organic polyhydric
organic compound.” (Id. at 12, 3d para.) Moreover, according to Holland,
“[c]laim 3 states that the interlayer has a water content of from 10 to 35% by
weight.” (Id. at 16, 1st full para.) Both the interlayer recited in claim 1 and

4 Examiner’s Answer mailed 28 May 2009. (“Ans.”).
5 Francois Toussaint and Pierre Goelff, Transparent Fire-Screening Panels,
U.S. Patent 4,873,146 (1989).
6 Hans-Henning Note, U.S. Patent 4,451,312 (1984).
7 Pierre Goelff et al., U.S. Patent 5,434,006 (1995).
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Appeal 2009-014835
Application 11/543,615

the interlayer recited in claim 3, Holland argues, are outside the range
described by Toussaint and are therefore not anticipated. (Id. at 12, 3d para.;
(id. at 16, 2d full para.).)
Holland does not argue substantively for the separate patentability of
claim 2. (Br. 14.) Accordingly, claim 2 stands or falls with claim 1.
(Br. 14.) Claims 4 and 5 are not argued substantively separately from
claim 3 (id. at 17, 18) from which they depend, and therefore they stand or
fall with claim 3.
The disposition of this appeal depends on the proper construction of
claims 1 and 3, and on the proper understanding of the disclosure of
Toussaint.
As both the Examiner and Holland recognize, claims 1 and 3 are both
product-by-process claims. As such, they are anticipated if the applied prior
art describes a product that meets each and every limitation, explicitly or
inherently, In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009), regardless of
how the prior art product was made, In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985). Our reviewing court has also made clear that inherency “may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal quote and
citations omitted).
As Holland points out, claim 1 requires that as a result of drying, “the
concentration of the organic polyhydric organic compound is increased to
between 10 and 40% by weight of the dried interlayer.” (Br. 12.) According
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Appeal 2009-014835
Application 11/543,615

to Toussaint, however, preferred embodiments of the disclosed invention
have not more than 10% of polyhydric adjuvants such as glycerol in the
intumescent layer separating the sheets of glass. (Toussaint, col. 3,
ll. 66-67.) We are unable to say that an unexpressed implication that a
higher amount of polyhydric adjuvant might be expected to provide
acceptable results amounts to a clear statement that the missing descriptive
matter is necessarily present in the thing described in the reference.
Accordingly, we REVERSE the rejection of claim 1 as anticipated by
Toussaint.
In contrast, however, claim 3 does not limit the composition of the
dried interlayer between the glass sheets. Holland’s statements to the
contrary (Br. 16) are not supported by the language of claim 3, which is
limited to a recitation of the properties of the solution comprising sodium
silicate waterglass prior to drying. It is improper to read limitations into the
claims from the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323
(Fed. Cir. 2005) (en banc). Holland does not dispute the Examiner’s finding
that Toussaint describes solutions comprising up to 10% by weight of water
soluble polyhydric compounds, which exceed the “at least 8%” limitation
recited in claim 3. Nor has Toussaint controverted the Examiner’s findings
that Toussaint describes compositions meeting the SiO2:Na2O weight ratio
or the water requirement. We conclude that Holland has failed to prove
harmful error in the Examiner’s rejection of claim 3 as anticipated by
Toussaint.
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Appeal 2009-014835
Application 11/543,615

C. Order
We REVERSE the rejection of claims 1 and 2 under
35 U.S.C. § 102(b) in view of Toussaint.
We AFFIRM the rejection of claim 3 under 35 U.S.C. § 102(b) in
view of Toussaint.
We AFFIRM the rejection of claim 4 under 35 U.S.C. § 103(a) in
view of the combined teachings of Toussaint and Nolte.
We AFFIRM the rejection of claim 5 under 35 U.S.C. § 103(a) in
view of the combined teachings of Toussaint and Goelff.
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-IN-PART
tc

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