Ex Parte Kohli

Patent Trial and Appeal Board

Aug 22, 2016

13219824 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/219,824 08/29/2011
22928 7590 08/24/2016
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Jeffrey T. Kohli
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.
SPll-200 1679
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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 JEFFREY T. KOHLI
Appeal2015-003177
Application 13/219,824
Technology Center 1700
Before: CATHERINE Q. TIMM, WESLEY B. DERRICK, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1-10, 21, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as involving a new ground of
rejection.
1 The real party in interest is identified as Coming Incorporated. (Appeal
Brief, filed August 8, 2014 ("App. Br.") 3.)
2 Final Office Action mailed March 14, 2014 ("Final Rejection"; cited as
"FR.").
Appeal2015-003177
Application 13/219, 824
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to the thermal treatment of glass
manufactured using a process such as the fusion draw process[.]" (Spec.
i-f 1.)3 The claims are directed to an apparatus and method for "enhanc[ing]
the value of a glass sheet by reducing the degree of compaction, structural
relaxation, or dimensional change incurred by the glass sheet in subsequent
thermal processing of the sheet[.]" (Id. i-f 5.)
Figure 2 of the '824 Specification, reproduced below, illustrates "a
cross sectional view" of "a down draw process [that] is heat treated on a bath
of a molten metal" for forming a glass sheet. (Id. i-f 16.)
3 Application 13/219,824, Apparatus and Method for Forming Glass Sheets,
filed August 29, 2011. We refer to the "' 824 Specification," which we cite
as "Spec."
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Application 13/219, 824
57
,.,---- 6.2
FIG.2
Figure 2 is a cross sectional view of an embodiment of Appellants' glass
making process
Figure 2 illustrates that molten glass 40 enters forming body 24
(having "an open channel 42 positioned on an upper surface of the forming
body [24] and a pair of converging forming surfaces 44"), converges at
bottom 46 of the forming body 24, and forms a glass ribbon by being drawn
by rollers 48 "in a first, downward direction 50." (Id. i-f 22.)
"Redirecting apparatus 54" which includes rollers 56 turns the glass
ribbon "through an angle of 90 degrees and second direction 52 is therefore
horizontal." (Id. i-f 23.) Along second direction 52, "the glass ribbon enters
a bath of molten metal 58 contained within a suitable vessel 60, where the
glass ribbon is supported on an exposed surface of the molten metal bath."
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Application 13/219, 824
(Id. i-f 26.) "The temperature of the bath is preferably maintained below
about 750°C but above the melting temperature of the metal." (Id.) Heaters
57 "may be immersed within the bath" to maintain "a temperature gradient
along the length of the bath" from a higher temperature at the inlet of the
bath to a lower temperature at an outlet of the bath. (Id. i-f 28.) Molten metal
bath 5 8 may also include "cover 62 for maintaining a relatively inert
atmosphere 64 above the molten metal," "baffles 63 to aid in segregating
regions of the bath," and rollers 65. (Id. i-fi-126, 28, 30.)
As "individual sheets of glass [66]" exit bath 58, "separator 68" may
be used to separate the glass sheets. (Id. i-f 30.) Thermal treatment chamber
70 subsequently applies further treatments to the glass sheets. (Id. i-f 31.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
A method of forming a glass sheet comprising:
flowing molten glass from a forming body in a down draw
process in a first direction to form a glass ribbon comprising a
viscous portion having a first viscosity equal to or greater than
108 Poise·
'
redirecting the viscous portion to a second direction
different from the first direction and onto a bath of molten metal,
wherein a second viscosity of the viscous portion as it enters onto
the bath of molten metal is equal to or greater than about 109
Poise;
supporting the redirected viscous portion on the bath of
molten metal;
cooling the viscous portion to a third viscosity equal to or
greater than about 1014 Poise as the viscous portion traverses the
bath of molten metal to form an elastic portion; and
separating the elastic portion to form an individual glass
sheet.
(Claim Appendix, App. Br. 22 (emphases added).)
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Appeal2015-003177
Application 13/219, 824
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brichard
Harcuba
Bocko
Pilkington
Chalk
us 3,318,671
us 3,841,857
us 5,597 ,395
us 2,968,893
US 2003/0121287 Al
REJECTIONS
May9, 1967
Oct. 15, 1974
Jan.28, 1997
Jan.24, 1961
Jul. 3, 2003
Claims 1--4 and 6-11 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Brichard, Harcuba, and Bocko. (FR. 2.)
Claim 5 stands rejected under 35 U.S.C. §103(a) as being
unpatentable over Brichard, Harcuba, Bocko, and Pilkington. (FR. 4.)
Claims 21and22 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Brichard, Harcuba, Bocko, and Chalk. (FR. 5.)
OPINION
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Claim 14
Brichard discloses "a process and apparatus for shaping a glass strip
by the flow of molten glass through a slot in the bottom of a melting tank
containing the molten glass." (Brichard, 1, 11. 9-13.) Figure 1 ofBrichard,
reproduced below, illustrates the prior art process:
4 Claims 2--4 and 6-11 stand or fall with claim 1. (App. Br. 10.)
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Appeal2015-003177
Application 13/219, 824
Figure 1 illustrates the glass making process in Brichard
As illustrated in Figure 1 of Brichard, molten glass 5 flows through
glass-melting tank 2 and is then "shaped into a glass strip 7 by drawing."
(Brichard, 2, 11. 69--72.) Glass strip 7 "is advanced by driving rollers 8 ... in
the direction indicated by arrow X" to enter into "a vessel 9 containing a
bath of molten substance 10[.]" (Id. at 3, 11. 3-7.)
Brichard discloses that as glass strip 7 moves from tank 2 to vessel 9,
the viscosity of the glass strip varies "with the condition in which the just
formed glass strip is allowed to cool." (Id. at 3, 11. 27-29.) After the glass
strip enters vessel 9, vessel 9 may further "adjust[] the temperature" of the
glass strip using elements 16 and 17 "by producing a progressive decrease in
such temperature towards the lehr" illustrated as 12. (Id. at 3, 1. 43; 4, 11. 21-
26.) Glass sheet 7 may be subsequently "raised from the bath by the rollers
8, then moved by further rollers through lehr 12." (Id. at 3, 11. 41--42.)
With regard to Harcuba, the Examiner finds that it discloses "an
improved method for the production of glass" which includes "subjecting
the glass while it possesses a viscosity between 103 and 1010 poise."
(Harcuba, 1, 11. 40--41, 11. 66-69; 2, 1. 1 (cited in FR. 3).) Based on the
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Appeal2015-003177
Application 13/219, 824
combined teachings of Brichard and Harcuba, the Examiner finds that it
would have been obvious to the skilled artisan "that the method of Brichard
could have been controlled to 1010 poise as suggested by Harcuba" to
improve the physical properties of the glass sheet. (FR. 3.)
As found by the Examiner, Bocko discloses "a method and apparatus
for precompacting glass" that includes subjecting a glass sheet to
temperatures that "correspond to a glass viscosity of about 1012 to 1017
poises, more preferably about 1014 to 1017 poises" and subsequently cooling
the glass sheet "below which the compaction effect will not relax[.]"
(Bocko, 1, 11. 11-12; 2, 11. 42--48 (cited in FR. 3).) Based on the combined
teachings of Brichard and Bocko, the Examiner finds that it would have been
obvious to the skilled artisan that the glass sheet produced by Brichard's
method may be "cooled to a viscosity of 1014 to 1017" which encompasses
the recited "third viscosity" to achieve the precompaction benefits provided
by Bocko. (FR. 3.)
Appellant, on the other hand, argues that while Harcuba discloses a
glass manufacturing process having a viscosity range of "between 103 and
1010 poise" which overlaps with "a second viscosity" as recited in claim 1, it
does not teach or suggest a value of the "second viscosity" "as [the molten
glass] enters onto the bath of molten metal" as recited in claim 1. (App. Br.
12-13.) Appellant argues that "Harcuba is entirely unrelated" to the process
disclosed in Brichard and that Harcuba does not teach "any processing step
even remotely related to glass entering onto a bath of molten metal." (Id;
Reply 2.) 5
5 Reply Brief filed January 20, 2015 ("Reply").
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Application 13/219, 824
The Examiner responds that based on the viscosity range of "between
103 and 1010 poise" taught in Harcuba, a skilled artisan would have
understood that "the viscosity can be controlled to be 1010 poise along the
production path" taught in Brichard. (Ans. 2.) 6 The Examiner reasons that
the skilled artisan "could have achieved the claimed range through routine
experimentation since flowability of the glass ribbon is directly related to the
viscosity of the glass ribbon." (Id. at 3.)
"[T]he test of obviousness is not express suggestion of the claimed
invention in any or all of the references but rather what the references taken
collectively would suggest to those of ordinary skill in the art presumed to
be familiar with them." In re Rosselet, 347 F.2d 847, 851(CCPA1965)
(emphasis in original).
In this case, Appellant argues that Harcuba does not teach or suggest
"directing a flow of glass onto the surface of a bath of molten metal" but
does not identify error in the Examiner's finding that a skilled artisan would
have known to apply Harcuba' s viscosity range "along the production path''
taught in Brichard which includes the glass entering the metal bath. (See
App. Br. 13; see also Reply 2; Ans. 2.) Appellant does not respond to the
Examiner's finding that "one of ordinary skill in the art would recognize that
a specific and desired viscosity range must be used in the production path in
order for the glass ribbon to be at a high enough viscosity to retain its shape
but also must be at a low enough viscosity for the glass ribbon to be able to
redirect the direction of the ribbon." (See App. Br 13; see also Reply 2;
Ans. 3.) Appellant does not dispute the Examiner's finding that the skilled
artisan "could have achieved the claimed range through routine
6 Examiner's Answer filed November 20, 2014 ("Ans.").
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experimentation since flowability of the glass ribbon is directly related to the
viscosity of the glass ribbon." (See App. Br. 13; see also Reply 2; Ans. 3.)
Other than asserting that Harcuba does not teach or suggest a viscosity
value at the specific instance "as [the molten glass] enters into the bath of
molten metal" as recited in claim 1, Appellant does not address Brichard's
process or identify errors in the Examiner's findings based on the combined
teachings of the references. Appellant does not explain why claim 1 is
patentably distinguished from the combined teachings of the references.
Appellant does not argue that the limitation of "as it enters into the bath of
molten metal" should be interpreted in a particular way. Appellant does not
cite to the '824 Specification for an embodiment related to this limitation.
A finding of obviousness does not always require "explication in any
reference or expert opinion." Peifect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1329 (Fed. Cir. 2009). Given that Appellant does not dispute the
Examiner's finding that the skilled artisan "could have achieved the claimed
range through routine experimentation since flowability of the glass ribbon
is directly related to the viscosity of the glass ribbon" (see App. Br 13; see
also Reply 2; Ans. 3), no reversible error has been identified in the
Examiner's finding of a suggestion to combine.
Furthermore, "all of the relevant teachings of the cited references
must be considered in determining what they fairly teach to one having
ordinary skill in the art." In re Mercier, 515 F .2d 1161, 1165-66 (CCP A
197 5) (emphasis in original, citations omitted). Here, Brichard discloses a
process in which the molten glass first enters into a tank in a vertical
direction and subsequently enters a bath in a horizontal direction. (Brichard,
FIG. 1.) Brichard discloses that after the molten glass 5 is "shaped into a
glass strip 7 by drawing" through slot 4 of a glass-melting tank 2, "the just
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Appeal2015-003177
Application 13/219, 824
formed glass strip is allowed to cool" between tank 2 and the molten metal
bath which would affect the viscosity of the glass strip. (Id. at 2, 11. 70-72;
3, 11. 27-29.)
Given Brichard's teaching that a glass sheet should be "allowed to
cool" before entering the molten metal bath and after exiting the tank (id. at
2, 11. 70-72; 3, 11. 27-29.), a skilled artisan would have known to cool a
"glass ribbon" "as it enters into the bath" after exiting "a forming body" as
recited in claim 1. 7 Based on Harcuba' s teaching of "subjecting the glass
while it possesses a viscosity between 103 and 1010 poise" (Harcuba, 1, 11.
66---69; 2, 1. 1 ), the skilled artisan would have known to cool the glass ribbon
from "a first viscosity [of] ... 108 Poise" to "a second viscosity of ... 109
Poise" as recited in claim 1. That is, the skilled artisan would have been
able to "implement a predictable variation [of the known work]" to cool the
glass sheet and thereby increase the viscosity to the prior art advantageous
viscosity range after the glass sheet exits the drawing tank and before it
enters the molten metal bath. See KSR, 550 U.S. at 417.
Appellant also argues that the Examiner applied hindsight
reconstruction in combing Brichard with Harcuba because "viscosity alone
is not determinative" of the prior art process in Harcuba. (App. Br. 17.)
Based on Harcuba's teaching that "while the molten glass is in a viscosity
range from 103 to 1010 poise, the glass is subjected to a uniform pressure
from a flowable medium between 0. 7 and 6 atmospheres above [standard]
atmospheric pressure which 'tempers' the glass," Appellant argues that "it is
7 We further note that Pilkington also discloses a glass manufacturing
process "by immersion in a bath of molten metal." (Pilkington, 2, 1. 18.)
"Before the ribbon enters the bath 15 it is partially cooled and thereby
stiffened[.]" (Id. at 4, 11. 39-40.)
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the combination of the viscosity of the glass and the uniform pressure that
the glass is subjected to, and not the viscosity alone, as asserted by the
Examiner, that produces the strength improvement in the glass." (Id. at 18
(emphasis and alteration in original).)
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Claim 1, reciting a method "comprising" various steps is an open-
ended claim. Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368
(Fed. Cir. 2003) ("The transition 'comprising' in a method claim indicates
that the claim is open-ended and allows for additional steps."). While claim
1 as it is currently written does not include a limitation related to the
pressure of the process, it certainly does not exclude such a limitation. All
claim 1 requires is the various recited values of the viscosity which the
Examiner finds are known in the prior art.
The determining issue here is not that Harcuba may include
parameters for improving a glass sheet in addition to viscosity, but the issue
is rather whether Appellant's method involves more than routine
experimentation that one of ordinary skill in the art would have conducted to
determine the optimum or workable ranges of viscosity necessary to carry
out the prior art process. See In re Aller, 220 F.2d 454, 456 (CCP A 1955)
(holding that "it is not inventive to discover the optimum or workable ranges
by routine experimentation"). The prior art disclosure that viscosity may
work with additional process variables to improve the final product does not
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Application 13/219, 824
show impermissible hindsight in the reasoning that a skilled artisan would
have known to apply the prior art viscosity values as advantageous to the
process in Brichard. See KSR, 550 U.S. at 418 (holding that to guard against
hindsight reconstruction, it can be important that the Examiner "identify a
reason that would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new invention does").
Appellant next argues that although Bocko discloses "a method and
apparatus for precompacting glass," which includes subjecting a glass sheet
at temperatures that "correspond to a glass viscosity of about 1012 to 1017
poises, more preferably 1014 to 1017 poises" (Bocko, 1, 11. 11-12; 2, 11. 42-
48) overlapping with "a third viscosity [of] ... 1014 Poises" as recited in
claim 1, Bocko does not teach or suggest the process step of "cooling [the
molten glass] ... to a third viscosity" as recited in claim 1. (App. Br. 14.)
Appellant argues that instead of the recited "cooling" step, Bocko teaches
heating a glass sheet to the recited third viscosity. (Id; Reply 3--4.)
Appellant argues that the Examiner also erred for failing to consider the
claim limitation "cooling ... as the viscous portion traverses the bath of
molten metal." (App. Br. 15.)
Brichard discloses "elements, such as 16 and 1 7" shown in Figure 1
which are used for "producing a progressive decrease in such temperature
[in the bath 10] towards the lehr [12]." (Brichard, 4, 11. 20-26.) Based on
the teaching that the temperature in the molten metal bath may
"progressive[ly] decrease ... towards" the lehr, a skilled artisan would have
understood to "cool" the glass sheet as it "traverses the bath of molten
metal" as recited in claim 1. 8 Based on the unrefuted teaching in Bocko that
8 We further note that Pilkington purports to distinguish its disclosure "from
prior art disclosure according to which a glass ribbon is formed by flowing
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glass sheets may be subjected to temperatures that "correspond to a viscosity
of about 1012 to 1017 poises" for "precompacting" purposes, the skilled
artisan would have known to "cool" the glass sheet to the recited viscosity
range encompassed by the prior art range. The skilled artisan would have
been able to "implement a predictable variation [of the known work]" to
cool the glass sheet to the prior art viscosity range for precompacting
purposes as it moves through the molten bath. See KSR, 550 U.S. at 417.
With regard to the argument that the Examiner applied impermissible
hindsight in combining Brichard with Bocko because "Bocko teaches that
... the glass is subjected to an 'omnidirectional pressure"' at the viscosity
range at issue (App. Br. 18; Reply 3--4), we again find the argument
unpersuasive. As analyzed with regard to Harcuba, claim 1 does not exclude
a process step related to the operating pressure. Moreover, a skilled artisan
would have known how to adjust for viscosity by routine experimentation.
Aller, 220 F .2d at 456. We are not persuaded that the rejection is based on
• • •1 1 1 • 1 • 1 ' 1mperm1ss101e nmas1gm.
For the reasons discussed above, the Examiner's decision to reject
claims 1-10, 21, and 22 under 35 U.S.C. § 103(a) based on Brichard,
Harcuba, and Bocko is affirmed. Additional findings of fact, however, were
relied on to support that affirmance. Therefore, we designate the affirmance
as involving a new ground of rejection.
Claims 5, 21, & 22
the molten glass directly upon the surface of a molten metal bath and
gradually cooling the glass by contact with the molten metal as the glass is
advance along the surface thereof." (Pilkington, 6, 11. 38--44.)
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Appellant argues that the rejections of dependent claims 5, 21, and 22
are in error because none of the additional references teach or suggest the
disputed claim limitations of claim 1. (App. Br. 19-21 ). Appellant has not
provided arguments separate from those for claim 1, and we are not
persuaded for the reasons discussed with respect to claim 1 from which these
claims depend. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e
hold that the Board reasonably interpreted Rule 41.3 7 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.").
DECISION
The Examiner's rejections of claims 1-10, 21, and 22 are sustained.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellant, WITHil-.J TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding will be remanded to
the Examiner ....
(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same record ....
AFFIRMED; NEW GROUND OF REJECTION 37 C.F.R. § 41.50(B)
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