Ex Parte Mauro et al

Patent Trial and Appeal Board

Dec 4, 2018

13961211 (P.T.A.B. Dec. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/961,211 08/07/2013
22928 7590 12/07/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
John Christopher Mauro
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.
SP12-204 5876
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
12/07/2018 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CHRISTOPHER MAURO and
MORTEN MATTRUP SMEDSKJAER
Appeal2018-002134
Application 13/961,211
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-17, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Dejneka et al. (US
2010/0291353 Al, published Nov. 18, 2010) ("Dejneka") in view of Ellison
et al. (US 2008/0286548 Al, published Nov. 20, 2008) ("Ellison").
We have jurisdiction over the appeal under 35 U.S.C. § 6(b). 2
1 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest (Appeal Br. 2).
2 We refer to the Specification, filed Aug. 7, 2013 ("Spec."); Appeal Brief,
filed Aug. 31, 2017 ("Appeal Br."); the Examiner's Answer, dated Oct. 19,
2017 ("Ans."), and the Reply Brief filed Dec. 19, 2017 ("Reply Br.").
Appeal2018-002134
Application 13/961,211
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
( emphasis added):
1. A glass, the glass comprising at least about 65 mol%
Si02 and at least about 6 mol% Na20, wherein the glass is free
of B 20 3, the glass having a thickness of less than 400 µm and a
difference between a first coefficient of thermal expansion and
a second coefficient of thermal expansion LiCTE of less than
107 x 1070c-1, wherein the first coefficient of thermal expansion
is the coefficient of thermal expansion of the glass in its liquid
state and the second coefficient of thermal expansion is the
coefficient of thermal expansion of the glass in its glassy state
at room temperature.
ANALYSIS
Appellant's principal argument on appeal is that it would not have
been obvious to modify the glass of Dejneka in view of Ellison so Dejneka's
glass is free of B203, as recited in claim 1 (Appeal Br. 3-7). Specifically,
Appellant contends Dejneka' s glass is described as an "aluminoborosilicate
glass" and therefore includes B203 and the Examiner's proposed
modification would have rendered Dejneka's glass unsuitable for its
intended purpose and would have changed its principle of operation because
Dejneka discloses a densification mechanism for cutting the glass and the
densification mechanism is achieved when a ratio of a sum of B203 and
Ab03 to modifiers is greater than 1, which means Dejneka' s glass includes
B203 to achieve the desired densification mechanism and be cut in a
specified way (Appeal Br. 3-7; Reply Br. 2-5).
Appellant's arguments are unpersuasive. The Examiner finds that
although Dejneka's glass is not free of B203, Ellison discloses an alkali
aluminosilicate glass that can include, among other things, 0-3 mol% B203
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Appeal2018-002134
Application 13/961,211
and discloses B203 functions as a flux that reduces melting temperatures
(Ans. 3). In view of this, the Examiner concludes it would have been
obvious to modify Dejneka' s glass in view of Ellison to prevent a low
melting temperature when a high melting temperature is preferred, resulting
in a glass that is free of B203 (id. at 4).
We agree with the Examiner's findings and conclusion, which are
supported by Ellison's disclosure at paragraphs 2, 6, and 20. Stated another
way, Ellison's disclosure demonstrates B203 content is a result-effective
variable that affects the melt temperature of a glass. "[D]iscovery of an
optimum value of a result effective variable in a known process is ordinarily
within the skill of the art." In re Boesch, 617 F.2d 272,276 (CCPA 1980).
Therefore, it would have been obvious to modify the B203 content of
Dejneka' s glass to affect its melting temperature as a matter of routine
experimentation and design within the level of the ordinary skill, thus
arriving at a glass within the scope of claim 1.
Further, as noted above, the Examiner finds Ellison discloses the use
of O mol% B203 in a glass (Ans. 3; Ellison ,r 6, Examples 1-3 in Table 1).
Moreover, Dejneka's glass and Ellison's glass have overlapping
compositional ranges (e.g., 60-72 mol% Si02 for Dejneka's glass and 64--68
mol% Si02 for Ellison's glass, 9-16 mol% Ah03 for Dejneka's glass and 8-
12 mol% Ab03 for Ellison's glass, and 8-16 mol% Na20 for Dejneka's
glass and 12-16 mol% Na20 for Ellison's glass) (Dejneka ,r 24; Ellison ,r 6)
and the glasses are both suitable for use in mobile electronic devices
(Dejneka ,r 45; Ellison ,r 2). This further demonstrates the obviousness of
applying Ellison's teachings to Dejneka's glass.
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Appeal2018-002134
Application 13/961,211
With regard to the ratio disclosed by Dejneka, Appellant asserts one
of ordinary skill in the art would have had no reason to expect that
Dejneka's glass, as modified in view of Ellison, would exhibit Dejneka's
densification mechanism even if the Dejneka's ratio was changed so B203
content was O mol% (Reply Br. 2). This, however, is only attorney
argument (see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Appellant has not cited evidence or persuasive technical reasoning that the
proposed modification to Dejneka's glass would have rendered it incapable
of achieving a ratio greater than 1.
Indeed, as explained by the Examiner at pages 7-8 of the Examiner's
Answer, Dejneka's ratio may be satisfied even when Dejneka's glass has
been modified to be free of B203, such as by using Ah03 in an amount
sufficient to satisfy Dejneka's ratio, a copy of which is reproduced here from
paragraph 22 of Dejneka:
If necessary to achieve a ratio greater than 1, one may offset a
decrease in the numerator due to B203 content being zero by increasing the
content of Ah03, such as within the range disclosed by Dejneka. Moreover,
one may have decreased the content of alkaline earth metal oxides that
function as modifiers, thus offsetting a decrease in the numerator with a
decrease in the denominator to achieve Dejneka' s ratio.
Appellant's position infers that if one of ordinary skill would have
modified Dejneka's glass to have a zero B203 content they would not have
changed other variables, if necessary, so Dejneka's ratio is greater than 1,
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Appeal2018-002134
Application 13/961,211
even though Dejneka teaches such a result is desirable. However, it is
unreasonable to expect one of ordinary skill in the art would have ignored
the above considerations and would have instead changed only one variable
(i.e., B203 content) in a robotic, uncreative manner if they desired to achieve
a ratio greater than 1. "A person of ordinary skill is also a person of
ordinary creativity, not an automaton" (KSR Int'!. Co. v. Teleflex Inc., 550
U.S. 398,421 (2007)).
In view of the above, Appellant's arguments do not identify a
reversible error in the Examiner's rejection of claim 1. Appellant does not
argue claims 2-17, 19, and 20 separately from claim 1 (Appeal Br. 3-7).
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-17, 19,
and 20 over Dejneka and Ellison.
DECISION
The Examiner's rejection of claims 1-17, 19, and 20 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).
AFFIRMED
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