Ex Parte Lee et al

Patent Trial and Appeal Board

Feb 23, 2018

13690829 (P.T.A.B. Feb. 23, 2018)

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.
13/690,829 11/30/2012 Christopher Morton Lee SP12-249 4786
22928 7590 02/27/2018
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
KAKALEC, KIMBERLY N
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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 CHRISTOPHER MORTON LEE, XIAO-FENG LU,
MICHAEL XU OUYANG, and JUNHONG ZHANG
Appeal 2017-005363
Application 13/690,829
Technology Center 2800
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 18, 20-26, 28—30, and 46—60.3 We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to the Specification filed November 30, 2012
(“Spec.”), the Final Office Action mailed April 21, 2016 (“Final Act.”), the
Appeal Brief filed September 2, 2016 (“Appeal Br.”), the Examiner’s
Answer mailed December 15, 2016 (“Ans.”), and the Reply Brief filed
February 10, 2017 (“Reply Br.”).
2 Appellant is the Applicant, Coming Inc., which, according to the Appeal
Brief is the real party in interest. Appeal Br. 3.
3 Claims 1, 2, 6, 7, 9, 10, 16, 17, 31, 33, 37, 39, 40, and 42 are withdrawn
from consideration by the Examiner as being directed to non-elected
inventions. Non-Final Office Action mailed November 6, 2015, 2.
Appeal 2017-005363
Application 13/690,829
The subject matter of the claims on appeal is directed to a glass article
having an optical coating and an easy-to-clean coating (ETC) thereon.
Spec. 12. Claim 18, reproduced below from the Claims Appendix of the
Appeal Brief, is representative of the claims on appeal.
18. A glass article comprising:
an optical coating; and
an easy-to-clean coating on top of the optical coating,
wherein a variation in a thickness of the optical coating
from a first edge of the optical coating to a second edge of the
optical coating is less than or equal to 4%, and
wherein the optical coating comprises a plurality of
periods comprising a layer of a high refractive index material H
having an index of refraction n greater than or equal to 1.7 and
less than or equal to 3.0, and a layer of a low refractive index
material L having an index of refraction n greater than or equal
to 1.3 and less than or equal to 1.6.
Appeal Br. 15 (Claims App.).
REJECTIONS
The Examiner maintains the following rejections on appeal.
Rejection I: Claims 18, 28—30, 46, and 52—58 on the ground of non-
statutory double patenting as unpatentable over claims 11—13 of U.S.
Patent No. 8,817,376 (“the ’376 patent”) (Final Act. 12—13);
Rejection II: Claims 18, 20—26, and 28—30 under 35 U.S.C. § 103(a)
as unpatentable over Arrouy et al. (US 2008/0002260 Al, published
January 3, 2008) (“Arrouy”) (Final Act. 3—5);
Rejection III: Claims 46—54 under 35 U.S.C. § 103(a) as unpatentable
over Arrouy in view of Klemm et al. (US 2003/0116872 Al, published
June 26, 2003) (“Klemm”) (Final Act. 5—8); and
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Appeal 2017-005363
Application 13/690,829
Rejection IV: Claims 55—60 under 35 U.S.C. § 103(a) as unpatentable
over Arrouy in view of Reymond et al. (US 2009/0104385 Al, published
April 23, 2009) (“Reymond”) (Final Act. 8—10).
DISCUSSION
Rejection I
Appellant states that “[u]pon indication of allowable subject matter,
[they] will address the need to file a Terminal Disclaimer.” Appeal Br. 7,
n. 1. Because Appellant does not present any arguments regarding the
double patenting rejection, we summarily affirm the rejection. See Manual
of Patent Examining Procedure (MPEP) § 1205.02 (9th ed., Mar. 2014) (“If
a ground of rejection stated by the examiner is not addressed in the
appellant’s brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
Rejection II— Claims 18, 20—26, and 28—30
Appellant argues the claims subject to the second-stated ground of
rejection as a group. Appeal Br. 7—11. Thus, we select claim 18 as
representative of the rejected claims, and the remaining claims subject to the
second ground of rejection will stand or fall with claim 18. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellant’s
claims is unpatentable over the applied prior art. We sustain the Examiner’s
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Appeal 2017-005363
Application 13/690,829
§ 103(a) rejection of claims 18, 20—26, and 28—30 essentially for the reasons
set out by the Examiner in the Final Office Action and Answer. We add the
following.
Arrouy discloses an optical article that includes a multi-layer anti-
reflection coating comprised of at least one high refractive index layer and at
least one low refractive index layer. Arrouy, Abstract. The Examiner
principally relies on Arrouy’s Example 1, reproduced below, as disclosing a
glass article that includes an optical coating layer having an index of
refraction of greater than or equal to 1.7 or less than or equal to 3.0 (Zr02),
an optical coating layer having an index of refraction greater than or equal to
1.3 and less than or equal to 1.6 (SiCE), and an easy-to-clean top coating.
Final Act. 3 (citing Arrouy H 165, 235 (Table 1, Example 1)); Spec. 142.
Example (hsvestion)
i"*- I . ■
klSbStlclU:' ' ■ cotil
ZtO> 23 am i
o.tU? Mi E3.U
XrO? 4.1 am
SiCh KB iilil
Top cost
.Air
•v,
1C i
RT 7 7 7
Example 1, shown above, provides one embodiment of Arrouy’s
optical article having a multi-layer anti-reflection coating.
The Examiner acknowledges that Arrouy does not teach or suggest “a
variation in a thickness of the optical coating from a first edge of the optical
coating to a second edge of the optical coating is less than or equal to 4%.”
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Appeal 2017-005363
Application 13/690,829
Final Act. 4. The Examiner, however, finds that variation in the thickness of
an optical coating is a known result-effective variable, which enhances the
clarity of an optical lens,” as evidenced by Murphy (US 5,699,189, issued
December 16, 1997). Final Act. 14; Murphy 4:61—63 (disclosing that a
coating layer applied to a lens substrate should have “generally uniform
thickness” to ensure “clarity of the lens”). The Examiner determines that it
would have been within the skill of the ordinary artisan to optimize the
variation in thickness of Arrouy’s optical coating “to ensure uniformity,”
and thus, clarity of its optical article. Final Act. 4.
Appellant argues that the cited art does not disclose or suggest a glass
article having an optical coating where “a variation in a thickness . . . from a
first edge of the optical coating to a second edge of the optical coating is less
than or equal to 4%,” as recited in claim 18. Reply Br. 2.
Appellant’s argument is not persuasive of reversible error. 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, 620 (CCPA 1977).
“A recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.” In re Applied Materials, Inc.,
692 F.3d 1289, 1297 (Fed. Cir. 2012). The portion of Murphy cited by the
Examiner reasonably supports the finding that coating uniformity (i.e.,
variation in a thickness of a coating) affects lens clarity. Final Act. 14;
Ans. 8. Appellant’s argument that Murphy uses a liquid coating process
rather than a vacuum deposition coating process as in Arrouy (Appeal
Br. 10) is of no import because one of ordinary skill in the art would
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Appeal 2017-005363
Application 13/690,829
reasonably infer that coating uniformity would affect lens clarity regardless
what process is used to produce the coating. Thus, on this record, we are not
persuaded of error in the Examiner’s determination that it would have been
obvious and within the level of ordinary skill in the art to optimize the
variation in thickness of Arrouy’s optical coating to achieve a variation in
thickness from a first edge to a second edge of “less than or equal to 4%,”
and consequently, optimize the clarity of Arrouy’s lens. See In re Boesch,
617 F.2d 272, 276 (CCPA 1980) (“[Djiscovery of an optimum value of a
result effective variable ... is ordinarily within the skill of the art.” (citation
omitted)); see also In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017)
(“The normal desire of artisans to improve upon what is already generally
known can provide the motivation to optimize variables such as the
percentage of a known polymer for use in a known device.” (citation
omitted)). Thus, we sustain the rejection of claims 18, 20—26, and 28—30
under 35 U.S.C. § 103(a) over Arrouy.
Rejections III & IV— Claims 46—60
Appellant does not present any additional substantive arguments for
patentability of claims 46—60. See Appeal Br. 11—13. As with claim 18,
Appellant argues that Arrouy fails to disclose or suggest a glass article
having an optical coating where “a variation in a thickness . . . from a first
edge of the optical coating to a second edge of the optical coating is less than
or equal to 4%.” Appeal Br. 12. In addition, Appellant argues that Klemm
and Reymond fail to remedy the deficiencies of Arrouy. Appeal Br. 12, 13.
Because we find no deficiencies in the Examiner’s findings and reasoning
based on Arrouy’s disclosure, we sustain the Examiner’s rejection of
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Appeal 2017-005363
Application 13/690,829
claims 46—60 for the same reasons we sustain the Examiner’s rejection of
claims 18, 20—26, and 28—30.
DECISION
For the above reasons, the rejections of claims 18, 20-26, 28—30, and
46—60 under 35 U.S.C. § 103(a), and the rejection of claims 18, 28—30, 46,
and 52—58 on the ground of non-statutory double patenting are affirmed.
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
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