11524992 (B.P.A.I. Aug. 30, 2012)

Ex Parte Khee et al

Board of Patent Appeals and InterferencesAug 30, 2012

11524992 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/524,992 09/21/2006 Yeo Boon Khee SWL-029 8777 3897 7590 08/31/2012 SCHNECK & SCHNECK P.O. BOX 2-E SAN JOSE, CA 95109-0005 EXAMINER JACKSON, MONIQUE R ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 08/31/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte YEO BOON KHEE, YISHENG DAI, and SICCO W.T. WESTRA ____________ Appeal 2011-008921 Application 11/524,992 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and GEORGE C. BEST, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 1-16 and 18 as unpatentable over Yializis (US 6,083,628 issued July 4, 2000) and of claims 1-11 and 13- 16 as unpatentable over Woodard (US 6,707,610 B1 issued March 16, 2004). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM-IN-PART. Appeal 2011-008921 Application 11/524,992 2 Appellants claim a solar control member comprising an optically massive layer/transparent substrate having a gray metal layer on one side and a titanium nitride layer on the other side (claims 1 and 16) and a method of providing such a solar control member (claim 9). Representative claims 1, 9, and 16, the only independent claims on appeal, read as follows: 1. A solar control member comprising: a gray metal layer; an optically massive layer, said gray metal layer being on a first side of said optically massive layer; and a titanium nitride layer on a second side of said optically massive layer opposite to said gray metal layer, said titanium nitride layer being configured to cooperate with said gray metal layer for dual layer solar selectivity to achieve desired solar performance. 9. A method of providing a solar control member comprising: forming a gray metal layer on a first side of an optically massive layer, including selecting and configuring said gray metal layer to achieve target optical properties at said first side; and reducing reflectivity of visible light while retaining control over visible cracking by forming a titanium nitride layer on a side of said optically massive layer opposite to said first side. 16. A solar control member consisting essentially of: a transparent substrate, said transparent substrate being a flexible polymeric substrate; an optical coating on a first side of said transparent substrate, said optical coating being a crack-retardant gray metal layer; and a titanium-nitride layer on a second side of said transparent substrate. Appeal 2011-008921 Application 11/524,992 3 The Â§ 103 Rejection based on Yializis Concerning the rejection of independent claims 1, 9, and 16, Appellants point out that "[c]laim 1 states that the titanium nitride layer on one side of the optically massive layer is configured to cooperate with the gray metal layer for dual layer solar selectivity to achieve desired solar performance" and argues that "Yializis does not teach this element" (App. Br. 7).1 Appellants' argument is unpersuasive. For the reasons detailed in the Answer, we agree with the Examiner that Yializis teaches or would have suggested a member (i.e., a hybrid film) having the structural limitations required by independent claims 1, 9, and 16 and accordingly that this member would naturally provide (i.e., necessarily possess) the claimed functional characteristics (i.e., solar selectivity and performance) referred to by Appellants (see, e.g., Ans. para. bridging 6-8; see also, e.g., Yializis claims 1-2). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where claimed and prior art products are identical or substantially identical, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product). In rejecting claim 7, the Examiner concludes that it would have been obvious, by routine experimentation, to provide an additional, optimized 1 Because independent claims 9 and 16 do not contain the claim 1 language referred to by Appellants, the above argument appears to have limited or no applicability to claims 9 and 16. Appeal 2011-008921 Application 11/524,992 4 number of layers in the hybrid film of Yializis thereby yielding a film/member having each of the claim 7 layers as well as the claim 7 adhesive in the form of Yializis' acrylate layer (see, e.g., Ans. para. bridging 9-10). Appellants contest this rejection by arguing that routine experimentation "simply cannot be the basis for a finding of obviousness" (App. Br. 10). This argument is contrary to well established precedent. See In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here 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."). In the record before us, Appellants fail to reveal error in the Examiner's obviousness conclusion for claim 7. Concerning claim 8, the Examiner finds that the claimed nickel chromium is functionally equivalent to the gray metal (e.g., aluminum) disclosed by Yializis and concludes that it would have been obvious to use nickel chromium as the gray metal of Yializis' hybrid film (Ans. 4-5). However, we agree with Appellants that the Examiner's above assertion of functional equivalency fails to establish a prima facie case of obviousness for claim 8 (App. Br. 11). The record contains no evidence whatsoever that an artisan would have recognized nickel chromium as Appeal 2011-008921 Application 11/524,992 5 functionally equivalent to the gray metal of Yializis and accordingly would have used nickel chromium as a gray metal in the claimed manner. It follows that we cannot sustain the rejection of this claim based on Yializis. For similar reasons, we also cannot sustain the rejection of claim 18 based on Yializis. According to the Examiner, Yializis' removal of low molecular weight species by plasma treatment corresponds to the claimed removal of a slip agent (Ans. 4, 11). As correctly argued by Appellants, Yializis contains no teaching or suggestion of removing a slip agent or that the disclosed plasma treatment would achieve the slip agent removal required by claim 18 (App. Br. 11-12). The Examiner has provided this record with no support for believing that the low molecular weight species removed by Yializis' plasma treatment would be considered a slip agent by one with ordinary skill in this art. For the above reasons, we sustain the Â§ 103 rejection of claims 1-7 and 9-16 as unpatentable over Yializis but not the corresponding rejection of claims 8 and 18. The Â§ 103 Rejection based on Woodard We agree with the Examiner's conclusion that it would have been obvious to provide Woodard's titanium nitride and gray metal layers on both sides, rather than just one side, of the transparent substrate as required by the independent claims (Ans. para. bridging 5-6, para. bridging 11-12). Appeal 2011-008921 Application 11/524,992 6 The only reasonably specific argument advanced by Appellants against this rejection is that Woodard contains no teaching or suggestion of providing the layers on both sides of the substrate (Reply Br. 4). We find no convincing merit in Appellants' argument. The above provision would have been suggested by Woodard's Background Art disclosure of providing titanium nitride layers on opposite sides of a substrate (see, e.g., col. 1, ll. 26-42) as expressly stated by the Examiner (Ans. sentence bridging 5-6). Woodard also teaches or would have suggested this provision in the column 5, lines 45-51, disclosure cited by the Examiner (id. at para. bridging 5-6) wherein Woodard teaches that each of the Figure 3 substrates 12 and 26 may have nickel chromium and titanium nitride layers thereby resulting in layers on both sides of substrate 26. In light of the foregoing, we sustain the Â§ 103 rejection of claims 1-11 and 13-16 as unpatentable over Woodard. Conclusion In summary, we affirm the Examiner's decision rejecting claims 1-16 but do not affirm the decision rejecting claim 18. The decision of the Examiner is affirmed-in-part. Appeal 2011-008921 Application 11/524,992 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136. AFFIRMED-IN-PART sld