Ex Parte Lienhart et al

Patent Trial and Appeal Board

Mar 11, 2019

14352903 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/352,903 04/18/2014 Fabien Lienhart
22850 7590 03/13/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
432447US99PCT 7155
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
03/13/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FABIEN LIENHAR T and MAR TIN PYTHON
Appeal2018-004467
Application 14/352,903
Technology Center 1700
Before LINDA M. GAUDETTE, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Under 35 U.S.C. § 134, Appellants 1 appeal the final rejection of
claims 1--4, 7, 11, 12, 14--16, 18, 19, 21, and 22. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as "Saint-Gobain Glass France."
Appeal Brief 2 ("Appeal Br.," November 27, 2017). In this opinion, we also
refer to the April 27, 2017 Final Action ("Final Act.") and the January 25,
2018 Examiner's Answer ("Ans."). No Reply Brief was filed.
Appeal2018-004467
Application 14/352,903
CLAIMED SUBJECT MATTER
The disclosure is directed to the heat treatment of silver layers
deposited on a substrate. Spec. 1 :2--4. Claim 1, reproduced below, is
representative:
1. A process comprising:
depositing on at least a portion of a face of a substrate, a
stack of thin layers comprising, staliing from the substrate:
a first coating comprising a first dielectric layer;
a silver layer;
optionally an overblocker layer; and
a second coating comprising a second dielectric layer;
then heat treating the stack by irradiating at least one portion of
a surface of the stack with an incoherent light source for an
irradiation time of from 0.1 to 20 millisecond, thereby reducing
a sheet resistance of the stack by at least 15% in relative terms
and optionally reducing an emissivity of the stack by at least
5% in relative terms,
wherein the process is conducted in a deposition line
comprising a deposition unit in which the stack of thin layers is
deposited and the light source, wherein the light source is in the
line directly after the deposition unit such that the substrate is
continuously moved from the deposition unit to the light
source,
wherein the silver layer remains continuous at the end of
the treatment, and
wherein the light source comprises a flash lamp.
Appeal Br. i (Claims Appendix).
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Application 14/352,903
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Hiramoto
Nadaud
Kuroda
Michael
US 6,858,987 B2
US 2010/0071810 Al
US 2011/0171365 Al
US 2012/0156827 Al
REJECTION
Feb.22,2005
Mar. 25, 2010
July 14, 2011
June 21, 2012
The Examiner rejects claims 1--4, 7, 11, 12, 14, 15, 18, 19, 21, and 22
under 35 U.S.C. § I03(a) as unpatentable over the combination ofNadaud,
Michael, and Kuroda. Final Act. 3.
The Examiner rejects claim 16 under 35 U.S.C. § I03(a) as
unpatentable over the combination ofNadaud, Michael, Kuroda, and
Hiramoto. Final Act. 7.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("it has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). Having considered
the evidence presented in this Appeal and each of Appellants' contentions,
we are not persuaded that Appellants identify reversible error. Thus, we
affirm the Examiner's§ I03(a) rejections for the reasons expressed in the
Final Office Action and the Answer. We add the following primarily for
emphasis.
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Application 14/352,903
Claim 12
The Examiner finds that Nadaud teaches all limitations of claim 1
except that the "light source comprise[ s] of [sic] a flash lamp" which the
Examiner finds is taught by Michael in view of Kuroda. Final Act. 4--5.
Appellants first argue that the Examiner reversibly erred in finding
that the Nadaud teaches a process that "reduc[es] a sheet resistance of the
stack by at least 15% in relative terms" as recited in claim 1. Appeal Br. 4.
Specifically, Appellants acknowledge that Nadaud describes a depositing
process using IR lamps which "yielded a reduction of 17% in the sheet
resistance" but cite the breakage of the majority of glass product in Nadaud
as a teaching away from using an IR lamp as an incoherent light source. Id.
at 8.
Although a reference that teaches away is a significant
factor to be considered in determining unobviousness, the
nature of the teaching is highly relevant, and must be weighed
in substance. A known or obvious composition does not
become patentable simply because it has been described as
somewhat inferior to some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). As the Examiner points
out, the particular prior art process conditions-rather than the use of an
incoherent light source in Nadaud-may have caused at least some of the
breakage. Ans. 3. Appellants have not shown evidence that Nadaud
criticizes, discredits, or otherwise discourages the use of an incoherent light
source "thereby reducing a sheet resistance of the stack by at least 15% in
2 Appellants do not present argument separate from those for claim 1 for the
rejection of claims 2--4, 7, 11, 12, 15, and 22. Appeal Br. 4--16. These
claims therefore, stand or fall with claim 1. See id.; see also 37 C.F.R.
§ 4I.37(c)(l)(iv).
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Application 14/352,903
relative terms" as recited in claim 1. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004) ("The prior art's mere disclosure of more than one
alternative does not constitute a teaching away from any of these alternatives
because such disclosure does not criticize, discredit, or otherwise discourage
the solution claimed."). We, therefore, are unpersuaded that Nadaud teaches
away.
Relying on the glass breakage in Nadaud, Appellants argue that the
Examiner reversibly erred in finding that the recited reduction of sheet
resistance may be determined through routine experimentation. Appeal Br.
15 (stating that "the sole disclosure of a sheet resistance reduction of 17%
caused a majority of sheets to break in Nadaud"); see Final Act. 4 (finding
that a skilled artisan would "have determined the optimum values of relevant
process parameters such as the reduction in sheet resistance through routine
experimentation does because Nadaud desired forming film with low
resistivities"). Appellants, however, do not dispute the Examiner's finding
that Nadaud describes the process variables attributable to the sheet
resistance. Compare Final Act. 4 (citing Nadaud ,r,r 71-74) with Appeal Br.
15-16; see Nadaud ,r 74 ("The process according to the invention thus
makes it possible to obtain films having very low resistivities, which hitherto
could only be obtained using a tempering treatment."). Because Nadaud
undisputedly describes a sheet resistance reduction within the recited range
as well as the attributable process variables for the sheet resistance, we are
unpersuaded that the Examiner reversibly erred here. See Iron Grip Barbell
Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)
("[W]here there is a range disclosed in the prior art, and the claimed
invention falls within that range, there is a presumption of obviousness.").
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Appeal2018-004467
Application 14/352,903
For the reasons provided supra, including that N adaud describes the
recited sheet resistance and that process claim 1 does not recite the
properties-such as breakage percentage----of the claimed process, we
disagree with Appellants that the Examiner's rejection is based on
inherency. Appeal Br. 16.
Appellants next argue that the Examiner reversibly erred in finding
that a skilled artisan would have combined Nadaud with Michael. Appeal
Br. 8. Although Appellants acknowledge that "Michael does disclose the
use of an incoherent light source," Appellants argue that Michael "mandates
that the heat treatment occurs before the deposition of the 'first dielectric
layer"' which cannot be combined with Nadaud's teaching to apply heat
treatment to a multilayer stack. Id. at 9 ( citing Michael ,r 8). From the
outset, Michael's paragraph 8 describes an embodiment of "a method of
making a photovoltaic device" which is silent as to whether heat treatment is
restricted to before or after the deposition of a first electric layer. See Ans. 4
(finding that there is no express teaching of such a mandate). There is no
evidence in the record showing that a skilled artisan would have understood
Michael's teaching as Appellants assert.
In addition to failing to supply evidentiary support, Appellants do not
dispute the Examiner's finding that both Nadaud and Michael teach
increasing the crystallinity of a thin film through heat treatment. Compare
Appeal Br. 9-10, with Final Act. 4--5 (citing Nadaud Abs., ,r,r 26, 27, 30, 34;
Michael Abs., ,r,r 32, 52, 58, 59); see also Ans. 3--4. Because this finding is
reasonable and the Appellants have not challenged it, we accept it as fact.
See In re Kunzmann, 326 F.2d 424,425 n.3 (CCPA 1964). Appellants do
not address the Examiner's rationale that a skilled artisan would have
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Application 14/352,903
combined the prior art teachings because "incoherent light was a known heat
source in rapid thermal treatment of [a] deposited layer which increased the
crystallinity of the treated films and allowed for treatment of films on
soda-lime glass substrates." Compare id. at 9-10, with Final Act. 4--5.
Based on the undisputed findings described supra, we are unpersuaded that
the obviousness rejection is not supported by "some articulated reasoning
with some rational underpinning." See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007).
Appellants also argue that "Nadaud expressly teaches that it is
essential to avoid substrate temperatures of 150°C since a majority of the
glass sheets breaks at this temperature" and is not combinable with
Michael's teaching to heat the substrate to around 600°C. Appeal Br. 10
(citing Nadaud ,r 27), 11. Appellants' argument, however, does not address
the passage in Nadaud's paragraph 27 which states, in relevant part: "To
minimize the number of breakages in the case of the largest substrates ( for
example measuring 6 min length by 3 min width), a temperature not
exceeding 100° C., especially 50°C., is preferably maintained .... "
Appellants do not provide evidentiary support for the proposition that a
skilled artisan "would not reasonably expect the heat treatment with an
incoherent light source to avoid heating the substrate to 150°C as mandated
by Nadaud." Appeal Br. 12. Appellants do not sufficiently explain why
these arguments patentably distinguish claim 1, which does not recite a
temperature or whether the end product may suffer breakage. Appellants
also do not dispute the Examiner's finding that Michael teaches that "the
advantage of using an incoherent light source for annealing is that it is able
to heat a deposited coating without excessively heating the substrate up to
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Application 14/352,903
[a] temperature which can cause damage to the substrate." See Ans. 4--5.
Because this finding is reasonable and the Appellants have not challenged it,
we accept it as fact. See Kunzmann, 326 F.2d at 425 n.3. As a result, we are
not persuaded that the Examiner reversibly erred in evaluating the teachings
of Michael and Nadaud in support of the rejection.
With regard to the teaching of Kuroda, Appellants likewise
acknowledge that it "discloses the use of an incoherent light source" in the
form of a flash lamp but argue that Kuroda is limited to heat treating zinc
oxide and does not teach heat treating an intermediate silver layer. Appeal
Br. 13. Appellants, however, do not dispute the Examiner's findings that
Kuroda teaches: (1) a rapid annealing treatment to lower the resistivity of the
film, (2) use of a flash lamp heat to treat a deposited film without damaging
the substrate, and (3) that such a heat treatment may be applied to substrates
made of glass and polymeric materials. Compare id. at 13-14, with Final
Act. 5 (citing Kuroda Abs., ,r,r 1, 12, 20). Because these findings are
reasonable and undisputed, we accept them as facts. See Kunzmann, 326
F.2d at 425 n.3. As a result, we are not persuaded that the Examiner
reversibly erred in evaluating the teachings of Kuroda in support of the
rejection.
Appellants do not address the Examiner's rationale that, based on the
undisputed teaching of Kuroda supra, a skilled artisan would have combined
the prior art teachings because "a flash lamp was a known light source in the
art for performing rapid thermal treatment/annealing of deposited films
without thermally damaging the substrate." Compare Appeal Br. 13-14,
with Final Act. 5. We are accordingly unpersuaded that the obviousness
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Application 14/352,903
rejection is not supported by "some articulated reasoning with some rational
underpinning." See KSR, 550 U.S. at 418.
Claims 14 & 21
The dispositive issue for the rejection of claims 14 and 21 ( dependent
from claim 1) is whether the combined prior art teaches or suggests that the
"energy density of flash lamp is from 15-30 J/cm2" and "15-22 J/cm2,"
respectively.
Appellants do not dispute the Examiner's finding that Kuroda teaches
an overlapping range of flash lamp energy density from 2-30 J/cm2.
Compare Appeal Br. 17-18, with Final Act. 6. Appellants offer Table 1 of
the specification as "rebuttal evidence" (Appeal Br. 18)3 but do not dispute
the Examiner's finding that the results are not commensurate in scope with
claim 1. See Ans. 7 (finding that the "results of Table 1 were not for a stack
comprising a silver layer between two dielectric layers but instead [were] for
a more complex stack comprising a silver layer between a zinc oxide layer
and a titanium layer" and that "the results of Table 1 were for only an
irradiation duration of 3 milliseconds"). We are therefore not persuaded that
the Examiner reversibly erred here with regard to the rejection of claims 14
and 21.
Claims 18 & 19
The dispositive issue for the rejection of claims 18 and 19 ( dependent
from claim 1) is whether the combined prior art teaches or suggests that the
"the sheet resistance is reduced by at least 20% in relative terms."
3 Appellants do not argue that Table 1 supports unexpected results over the
prior art. See Appeal Br. 17-18.
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Application 14/352,903
As we noted supra, Appellants do not dispute the Examiner's finding
that Nadaud describes the process variables attributable to the sheet
resistance. Compare Final Act. 4 (citing Nadaud ,r,r 71-74) with Appeal Br.
15-16; see Nadaud ,r 7 4 ("The process according to the invention thus
makes it possible to obtain films having very low resistivities, which hitherto
could only be obtained using a tempering treatment.").
Appellants also do not dispute the Examiner's finding that the results
are not commensurate in scope with claim 1. See Ans. 7 (finding that the
"results of Table 1 were not for a stack comprising a silver layer between
two dielectric layers but instead [were] for a more complex stack comprising
a silver layer between a zinc oxide layer and a titanium layer" and that "the
results of Table 1 were for only an irradiation duration of 3 milliseconds").
We are therefore not persuaded that the Examiner reversibly erred here with
regard to the rejection of claims 18 and 19.
DECISION
The Examiner's decision is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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