Ex Parte Krasnov et al

Patent Trial and Appeal Board

Aug 24, 2017

13484894 (P.T.A.B. Aug. 24, 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.
13/484,894 05/31/2012 Alexey KRASNOV JAR-3691-2598 1054
23117 7590 08/28/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXEY KRASNOV, MUHAMMAD IMRAN,
WILLEM DEN BOER, and KEVIN O’CONNOR
Appeal 2016-002234
Application 13/484,894
Technology Center 2800
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
SCOTT B. HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
rejection of claims 1—5, 7, 9, 10, and 13—20, which are all the claims pending
in this application. Claims 6, 8, 11, and 12 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Invention
The disclosed and claimed invention on appeal relates generally to “a
coated article including a low-emissivity (low-E) coating for use in a
window, where the low-E coating is intentionally exposed to intense
Appeal 2016-002234
Application 13/484,894
ultraviolet (UV) radiation in order to improve the coating[,] and thus the
coated article’s electrical, optical and/or thermal blocking properties.”
(Spec. 11).
Illustrative Claim 1
1. A method of making a coated article for use in a window,
the method comprising:
having a coated article including a glass substrate that
supports a low-emissivity (low-E) coating comprising at least
one layer comprising silver located directly on and contacting a
contact layer comprising zinc oxide that can absorb ultraviolet
(UV) radiation, the low-E coating further comprising a dielectric
layer between the contact layer comprising zinc oxide and the
glass substrate, and an upper dielectric layer located over the
layer comprising silver so that the layer comprising silver is
located between the upper dielectric layer and the glass substrate;
directing UV radiation from at least one UV source toward
the coating and
[LI] exposing the coating to UV radiation in order to
reduce a sheet resistance of the coating and/or increase visible
transmission of the coating; and
[L2] wherein the coated article has a visible transmission
of at least about 50% after said exposing.
(bracketed lettering added and contested limitations LI and L2 are
emphasized). Independent method claim 18 similarly recites limitations LI
and L2, but is more narrow is scope than claim 1, replacing “and/or” (claim
1) with “and” (claim 18). Claim 18 also recites a limitation not recited in
claim 1: “contacting a contact layer comprising zinc oxide that has a
bandgap of from 3.2 to 3.4 eF.” (emphasis added).
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Rejections
A. Claims 1, 4, 5, 9, 10, 15, 16, 18, and 20 are rejected as being
unpatentable over Veerasamy (Pub. No. US 2009/0135319 Al; published
May 28, 2009).
B. Claims 2, 14, and 19 are rejected as being unpatentable over
Veerasamy in view of Van Nutt et al. (Pub. No. US 2011/0308693 Al;
published Dec. 22, 2011) (hereinafter “Van Nutt”).
C. Claim 3 is rejected as being unpatentable over Veerasamy in view of
Barnes et al. (Pub. No. US 2013/0122261 Al; published May 16, 2013)
(hereinafter “Barnes”).
D. Claim 7 is rejected as being unpatentable over Veerasamy in view of
Ferreira et al. (Pub. No. US 2010/0295330 Al; published Nov. 25, 2010)
(hereinafter “Ferreira”).
E. Claim 13 is rejected as being unpatentable over Veerasamy in view of
Jahoda et al. (Pub. No. US 2010/0266801 Al; published Oct. 21, 2010)
(hereinafter “Jahoda”).
F. Claim 17 is rejected as being unpatentable over Veerasamy in view of
Fujimori (WIPO Publication No. 2011/068111 Al; published June 2011).
ANALYSIS
We have considered ah of Appellants’ arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection A of Independent Claims 1 and 18 under §103
Issue: Under § 103, did the Examiner err by finding Veerasamy
would have taught or suggested the following contested limitations:
[LI] exposing the coating to UV radiation in order to
reduce a sheet resistance of the coating and/or increase visible
transmission of the coating; and
[L2] wherein the coated article has a visible transmission
of at least about 50% after said exposing [,]
within the meaning of the similar LI, L2 language recited in each of
independent method claims 1 and 18?1 (emphasis added).
In the rejection of claim 1, the Examiner finds Veerasamy teaches:
a method of making a coated article for use in a window
[Abstract], the method comprising: having a coated article
including a glass substrate (202) [0029] that supports a low-
emissivity (low-E) coating [0013] comprising at least one layer
comprising silver (605) located directly on and contacting a
contact layer comprising zinc oxide (603) that can absorb
ultraviolet (UV) radiation, the low-E coating further comprising
a dielectric layer (601) between the contact layer comprising zinc
oxide (603) and the glass substrate (202), and an upper dielectric
layer (623) located over the layer comprising silver (605) so that
the layer comprising silver (605) is located between the upper
dielectric layer (623) and the glass substrate (202) [Figure 6];
directing UV radiation from at least one UV source toward the
coating and exposing the coating to UV radiation [0002] in
order to reduce a sheet resistance of the coating [0050] and/or
increase visible transmission of the coating.
1 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 111 F.3d
1048, 1054 (Fed. Cir. 1997).
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(Final Act. 6) (emphasis added).
However, we note Veerasamy (| 50) is silent regarding any mention
of using UV treatment to reduce a sheet resistance (R, ) of the coating and/or
increase the visible transmission of the coating. Instead, Veerasamy
describes an exemplary range of sheet resistance values (in ohms/square)
“before any optional heat treatment such as tempering.” (Id.) (emphasis
added). Veerasamy additionally describes that “[s]uch low sheet resistance
values are indicative of low emissivity.” (Id. ).
The Examiner further finds Veerasamy does not explicitly teach the
claimed temporal limitation L2, which requires the article to have a visible
transmission of at least about 50% after exposing to UV light:
However, although Veerasamy discloses a light transmission of
about 55% [0012], there is no explicit disclosure that the article
has a visible transmission of at least about 50% after said
exposing [0002, 0041 ]. Veerasamy discloses the claimed
invention except for visible transmission of at least about 50%.
(Final Act. 6) (emphasis added).
The Examiner nevertheless concludes and finds:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to create a low-emissivity
coating with visible light transmission of at least about 50%
since it has been held that where the general conditions of a claim
are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the art. One
would have been motivated to create a low-emissivity coating
with visible light transmission of at least about 50% for the
purpose of producing a glass which allows light to pass, allowing
a user to have visibility beyond the glass, while protecting the
user from some desired proportion of ultraviolet light, to which
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the user might otherwise be exposed. In re Aller, 220 F.2d 454,
456, 105 USPQ 233,235.
(Final Act. 6—7) (emphasis added).
Appellants disagree, and contest limitations LI and L2 of claim 1, by
contending, inter alia:
Turning to co-owned and commonly assigned Veerasamy,
there seems to be no disagreement that Veerasamy fails to teach
or suggest exposing a low-E coating to UV in order to reduce its
sheet resistance and/or increase its visible transmission as
required by claim 1. Moreover, the concept of exposing a low-E
coating to UV in order to reduce its sheet resistance and/or
increase its visible transmission is not inherent in Veerasamy,
as shown above. The Final Office Action on pages 2 and 6 cites
to paragraph [0050] of Veerasamy for allegedly teaching this
subject matter. But paragraph [0050] of Veerasamy discloses
nothing akin to this. There is no teaching or suggestion in
Veerasamy of exposing a low-E coating to UV in order to
reduce its sheet resistance and/or increase its visible
transmission. Veerasamy at [0050] does not even discuss any
particular UV wavelength, and does not indicate any time for UV
treatment. The rejection is fundamentally flawed, and even the
alleged modification fails to meet the claim in this respect.
(App. Br. 11—12) (emphasis added).
At the outset, we note Veerasamy describes in multiple paragraphs
(12—17) that the improvement in visible transmission of the liquid crystal
inclusive layer results not from exposure to UV light, but rather from
electrical activation when a voltage is applied to the liquid crystal
inclusive layer. See e.g., Veerasamy 112:
[A]t least one bus bar in electrical communication with the first
and/or second transparent conductive layer( s) so as to cause
the liquid crystal inclusive layer to become activated when a
voltage is applied thereto; and wherein the multi-layer low-E
UV blocking coating comprises at least one IR reflecting layer
and at least one UV blocking layer so that no more than about
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20% of ambient light having a wavelength of from 380-400 nm
reaches the liquid crystal inclusive layer, and wherein the
coated article has a visible transmission of at least about
55% when the liquid crystal inclusive layer is activated.
(emphasis added).
Given this evidence {id.), we find an artisan having knowledge of
Veerasamy (but having no knowledge of Appellants’ Specification and
claims) would have had no reason to use UV light exposure to improve the
visible transmission of the liquid crystal inclusive layer, because such
problem is already solved in Veerasamy (|| 12—17), by using electrical
activation of the layer.2
We particularly note the Examiner appears to be improperly relying
upon Appellants’ own disclosure in the “Response to Arguments” (Final
Act. 2), as providing a rationale to support modifying Veerasamy in
accordance with the temporal “after said exposing” limitation L2 (claims 1,
18), and/or to support a finding of inherency under §103:
it is understood from the specification that the mere application
of UV radiation is what causes the reduction in sheet resistance
or increase in visible transmission. For this reason, this portion
of the claim is assumed to be inherent to the step of exposing
the coating to UV radiation. Veerasamy discloses at paragraph
[0002] that the coating is prepared by “UV or thermal curing”.
Additionally, the device of Veerasamy is apparently exposed to
UV radiation repeatedly [0041], which would cause the claimed
2 The Supreme Court guides: “‘rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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Application 13/484,894
either reduction in sheet resistance or increase in visible
transmission.
(Final Act. 2).
We note the description of UV curing in the background section of
Veerasamy (1 2), as relied upon by the Examiner (Final Act. 2), is used for
preparing Polymer Dispersed Liquid Crystals (PDLCs):3 “Preparation of
PDLCs involves a phase separation, which is conventionally triggered by
polymerization of the monomer matrix by either UV or thermal curing, or
even rapid evaporation of solvents.” (Veerasamy, 12) (emphasis added).
Appellants’ background section of the Specification (1 4) further
describes: “[t]he quality of room temperature sputter-deposited thin silver
layers is poor, and heat treatment is often require[d] to improve the optical
and electrical properties of the silver to acceptable levels.” However, we
note the prior art heat treatment described in the background section (id.) is
performed using a convection oven, and not using UV treatment: “Such
heat treatment (HT) is typically done in a convection oven, e.g., performed
in combination with glass tempering for temperable products.” (Id.)
(emphasis added).
We note the Examiner (Final Act. 2) does not rely on the prior art
convection oven tempering techniques described in Appellants’ background
section (Spec. H 2-4) for providing any rationale or motivation to modify
Veerasamy. Instead, the Examiner looks to Appellants’ introductory
(paragraph one) description of exemplary embodiments for guidance: “it is
3 We note Veerasamy (131) describes that the liquid crystal inclusive layer
can be, e.g., a PDCL layer 214 (Fig. 2).
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understood from the specification that the mere application of UV
radiation is what causes the reduction in sheet resistance or increase in
visible transmission.” (Final Act. 2) (emphasis added).
See e.g., Spec. 11: “Certain embodiments of this invention relate to
a coated article including a low-emissivity (low-E) coating for use in a
window, where the low-E coating is intentionally exposed to intense
ultraviolet (UV) radiation in order to improve the coating[] and thus the
coated article’s electrical, optical and/or thermal blocking properties.”
(emphasis added).
However, we note Appellants’ background of the invention section
begins with the second paragraph of the Specification — not paragraph one.
Appellants urge (App. Br. 11) that the Examiner’s reliance in the “Response
to Arguments” (Final Act. 2) on portions of Appellants’ disclosure appears
to be improper:
The incorrect, or at least incomplete, reading of the
specification that led to the misunderstanding that "the mere
application of UV radiation is what causes the reduction in sheet
resistance or increase in visible transmission" is not the sort of
scientific evidence and/or reasoning needed to support a rejection
based on inherency. Paragraph 12, for example, describes several
possible UV radiation sources.
(App. Br. 11).
After reviewing the record, we find the Examiner’s proffered rationale
for modifying Veerasamy (Final Act. 2) appears to incorporate
impermissible hindsight, as urged by Appellants (App. Br. 13). In
particular, the Examiner appears to improperly support modifying the single
reference § 103 rejection (over Veerasamy) with the description of the
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improvement invented by Appellants. (Id.; Spec. 11). We note Appellants
specifically summarize their improvement in the Specification (1 5):
It has been found, in accordance with certain example
embodiments of this invention, that UV exposure is highly
advantageous with respect to improving the quality of sputter-
deposited silver layer(s), e.g., in the context of low-E coatings.
For example, the coated article (e.g., glass substrate with a low-
e coating thereon) can be exposed from the coating side so that
the UV is absorbed by part(s) of the coating without damaging
the glass substrate, and much of the UV is able to pass through
the silver layer(s) without being reflected before it can perform
the desired heating by heating up other layer(s) which are capable
of transferring heat to the silver in order to improve its optical
and electrical and properties. Thus, in certain example
embodiments of this invention, UV exposure of a low-E coating
can be used to efficiently improve optical and/or electrical
properties of silver based layer(s), and thus also improve such
properties of the overall coating, such as one or more of solar
heat gain coefficient, emissivity, sheet resistance, and visible
transmission.
(Spec. 15) (emphasis added).
For at least the aforementioned reasons, and on this record, we find a
preponderance of the evidence supports Appellants’ arguments. (See App.
Br. 9—15). In addressing the Examiner’s reliance on Aller, 220 F.2d 454
(CCPA 1955), Appellants persuasively contend:
a particular parameter must first be recognized as a result-
effective variable, i.e., a variable which achieves a recognized
result, before the determination of the optimum or workable
ranges of said variable might be characterized as routine
experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6
(CCPA 1977). In this instance, UV exposure is not recognized
as being effective for reducing sheet resistance or for increasing
visible transmission. The only thing Veerasamy mentions that
UV exposure can be good for is for forming a PDUC film --
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which is not involved in claim 1. To the contrary, Veerasamy
expressly states that UV exposure is bad for the operation of
switchable films — and Veerasamy on the whole leads away from
UV exposure. Thus, there is no recognition of the beneficial uses
of UV exposure called for in claim 1. The only negative uses
lead away from the use of UV and thus lead away from the
subject matter of claim 1. The factual predicate for reliance on
anU//er-type rational simply has not been established, and a full
and complete analysis actually reveals that an U//er-type
rationale leads away from claim 1.
To the extent that lower sheet resistance values were
desired as alleged in the Final Office Action, Veerasamy would
instruct one skilled in the art to use a different means (such as
thermal tempering or other heat treatment) to accomplish this.
Veerasamy does not specifically link UV exposure to sheet
resistance reductions and there would have been many reasons to
have avoided trying to do this, i.e., based on the teachings of
Veerasamy itself.
(App. Br. 14—15) (emphasis added in bold and italics).
To the extent the Examiner alternatively relies on a theory of
inherency (Final Act. 2), our reviewing court has long “recognized that
inherency may supply a missing claim limitation in an obviousness
analysis.” PAR Pharmaceutical, Inc. v. TWIPharmaceuticals, Inc. 773 F.3d
1186, 1194-95 (FedCir. 2014). However,
[t]he mere fact that a certain thing may result from a given set of
circumstances is not sufficient. If however, the disclosure is
sufficient to show that the natural result flowing from the
operation as taught would result in the performance of the
questionedfunction, it seems to be well settled that the disclosure
should be regarded as sufficient.
In re Oelrich, 666 F.2d at 581 (emphasis added)
(citations and quotation marks omitted). Thus, our
early precedent, and that of our predecessor court,
established that the concept of inherency must be
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limited when applied to obviousness, and is present
only when the limitation at issue is the “natural
result ” of the combination ofprior art elements. Id.
PAR Pharmaceutical, Inc., 773 F.3d at 1195 (quoting In re Oelrich, 666
F.2d 578, 581 (CCPA 1981)) (emphasis added).
Applying this guidance here, we find the evidence cited by the
Examiner (Final Act. 2) is insufficient to show that “the natural result
flowing from the operation as taught would result in the performance of the
questioned function.” PAR Pharm., 773 F.3d at 1195 (internal citation
omitted).
Therefore, on this record, and for essentially the same reasons argued
by Appellants in the Brief (9—15), we are persuaded the Examiner erred.4
We agree with Appellants that a preponderance of the evidence does not
support the Examiner’s underlying factual findings and legal conclusion of
obviousness regarding contested limitations LI and L2, which are recited in
similar, commensurate form in independent claims 1 and 18.
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection A of independent claims 1 and 18, and we also reverse
rejection A of the respective associated dependent claims.
Remaining Dependent Claims Rejected under Rejections B—F
Because we have reversed each independent claim on appeal, and
because we find the Examiner has not established that the additionally cited
secondary references for rejections B—F overcome the aforementioned
4 We note Appellants did not file a Reply Brief.
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deficiencies regarding Veerasamy (under rejection A), we also reverse the
Examiner’s rejections B—F of all remaining dependent claims on appeal.
DECISION
We reverse the Examiner’s decision rejecting claims 1—5, 7, 9, 10, and
13-20 under 35 U.S.C § 103(a).
REVERSED
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