Ex Parte Milia et al

Patent Trial and Appeal Board

Sep 11, 2017

13683133 (P.T.A.B. Sep. 11, 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.
13/683,133 11/21/2012 Charlotte Diane Milia SPl 1-278 1913
22928 7590 09/13/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1 GUO, TONG
CORNING, NY 14831
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/13/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLOTTE DIANE MILIA
and WAGEESHA SENARATNE
Appeal 2017-001741
Application 13/683,133
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 15—26 of Application
13/683,133 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 26,
2015). Appellants1 seek reversal of these rejections pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
1 Coming Incorporated is identified as the applicant and real party in
interest. Appeal Br. 3.
Appeal 2017-001741
Application 13/683,133
BACKGROUND
The ’133 Application describes smudge-resistant or anti-smudge
coatings. Spec. 12. In particular, the ’133 Application describes oleophilic
coatings disposed on the surfaces of touch-activated or -interactive devices,
thereby providing these devices improved smudge-resistance. Spec. 2—3.
Claim 15 is representative of the ’133 Application’s claims and is
reproduced below from the Claims Appendix:
15. A coated article, comprising:
a glass or glass-ceramic substrate; and
an oleophilic coating having an average thickness of less
than or equal to about 100 nanometers disposed on at least a
portion of a surface of the glass or glass-ceramic substrate;
wherein the oleophilic coating comprises a partially-
cured siloxane comprising a plurality of pendant hydroxyl
groups;
wherein a concentration of the pendant hydroxyl groups
in the partially-cured siloxane of the oleophilic coating is at
least about 25 percent of a concentration of any pendant
hydrogen and hydrocarbon groups in the partially-cured
siloxane;
wherein a contact angle between a drop of oleic acid and
the oleophilic coating is about 20° to about 40°;
wherein a contact angle between a drop of ethylene
glycol and the oleophilic coating is about 45° to about 65°;
wherein a contact angle between a drop of hexadecane
and the oleophilic coating is about 15° to about 30°; and
wherein a contact angle between a drop of water and the
oleophilic coating is about 70° to about 100°.
Appeal Br. 20 (Claims App.).
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Appeal 2017-001741
Application 13/683,133
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 15—23 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Invie2 and Kondos.3
Answer 2.
2. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Invie, Kondos, and Baca.4
Answer 7.
3. Claims 15—23 and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kondos and Invie.
Answer 8.
4. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kondos, Invie, and Baca.
Answer 13.
DISCUSSION
Rejection 1. In rejecting claim 15, the Examiner found that Invie
describes each limitation of the claim, but does not teach or suggest, inter
alia, the claimed contact angle ranges formed between the oleophilic coating
and a drop of oleic acid, ethylene glycol, hexadecane, and water,
respectively. Answer 2—3.
The Examiner relies on Kondos for disclosing that a suitable
composition for a siloxane-based oleophilic coating “can comprise siloxane
2 US 6,277,485 Bl, issued August 21, 2001.
3 US 2009/0239043 Al, published September 24, 2009.
4 US 2012/0281292 Al, published November 8, 2012.
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Appeal 2017-001741
Application 13/683,133
formed from at least partially hydrolyzing an organoalkoxysilane [and], as
the result of the hydrolyzing, there will be [a] hydroxyl functional group in
the coating composition before the coating composition is cured.” Id. at 3
(citing Kondos ^fl[ 59, 64).
The Examiner found that Kondos’ oleophilic coating exhibits a
contact angle with water from 50° to less than 78°, which overlaps the
claimed contact angle range formed between a drop of water and an
oleophilic coating. Answer 3; see also Kondos Abstract. According to the
Examiner, “if[] Kendo’s [oleophilic coating] can have an overlapping
contact angle with water, it is expected that the contact angle with other
chemicals would overlaps as well.” Answer 4; see also id. at 5, 16.
The Examiner further found Kondos discloses that a partially-cured
siloxane-based oleophilic coating can exhibit improved gloss, improved
stain and sebum resistance, and/or improved cleaning ability. Id. at 3 (citing
Kondos 23, 59; Abstract). According to the Examiner, Kondos teaches
that such improved physical properties are due to the cured siloxane having
a partially crosslinked network. Answer 3 (citing Kondos 123).
Based on these findings, the Examiner determined that a person of
ordinary skill in the art at the time of the invention would have replaced
Invie’s partially-cured alkoxysilane with Kondos’ at least partially
hydrolyzing and partially-cured alkoxysilane. Answer 4. According to the
Examiner, the ordinary skilled artisan would have been motivated to do so
“in order to achieve the desired contact angle for various chemicals and
achieve improved physical properties[,] such as improved gloss, improved
stain and sebum resistance, and/or improved cleaning ability.” Id.
Appellants argue that the rejection of claim 15 should be reversed
because the Examiner’s conclusion of obviousness is in error. Appeal Br. 6.
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Application 13/683,133
In particular, Appellants argue that (1) Kondos does not disclose the
relationship between the degree of crosslinking and a desired contact angle
for various chemicals, id. at 6, 10; (2) the Examiner lacks a technical basis in
finding that Kondos’ oleophilic coating would have been expected to form
contact angle ranges with other chemicals that overlap the claimed ranges,
id. at 10; (3) Kondos teaches that removal of silicon additives is the only
way to change a contact angle, id. at 11—12; and (4) the Examiner fails to
identity where the applied prior art teaches the claimed 25% concentration
of pendant hydroxyl group relative to the concentration of any pendant
hydrogen and hydrocarbon groups, id. at 13.
The patent examiner bears the initial burden of establishing a prima
facie case that an application’s claims would have been obvious based upon
what was known in the prior art. In re Dillon, 919 F.2d 688, 701 (Fed. Cir.
1990). Furthermore, the patent examiner’s “[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)).
We agree with Appellants that the Examiner erred in finding that
Kondos’ oleophilic coating would have been expected to form contact angle
ranges with other chemicals that overlap the claimed ranges as well. We,
therefore, reverse the rejection of claim 15. We express no opinion
regarding Appellants’ other arguments for reversal of the rejection of claim
15.
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Application 13/683,133
For the following reasons, we determine that the Examiner erred by
finding that Kondos’ oleophilic coating would have been expected to form
contact angle ranges with other chemicals that overlap the claimed ranges.
The Examiner identified support for this finding in Appellants’
disclosure—“it appears” from 171 of the Specification “that the contact
angle with various chemicals is a result of the functional group of the
coating layer.” Answer 3—4, 5.
This reasoning is insufficient because the disclosure the Examiner
relied upon is directed to “implementations where the glass or glass-ceramic
substrate is strengthened.” Spec. 171. Such disclosure is not pertinent to
the functional group of the coating layer nor the contact angle. Furthermore,
the Examiner has not met the requisite burden of establishing a prima facie
case because the applied prior art does not teach or suggest that Kondos’
oleophilic coating would have been expected to form an overlapping contact
angle with other chemicals. As Appellants note, Kondos’ disclosed
“[cjontact angle with water is an indication of hydrophilicity.” Appeal Br.
10. The Examiner has not provided articulated reasoning why one of
ordinary skill in the art would have been able to draw conclusions about the
expected contact angles formed with oleophilic liquids, such as oleic acid.
In view of the foregoing, we reverse the Examiner’s rejection of
independent claim 15. Thus, we also reverse the rejection of claims 16—23
and 26, which ultimately depend from claim 15.
Rejection 2. Appellants argue that the limitations recited in claims 24
and 25 provide “[a]n additional difference between the prior art” of Invie,
Kondos, and Baca. Appeal Br. 14—16. Appellants, therefore, argue that the
Examiner’s rejection of claims 24 and 25—which depend from claims 15
and 24 respectively—should be reversed. Id.
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Application 13/683,133
Because we have reversed the rejection of independent claim 15 and
Baca does not cure the deficiencies in the rejection of these claims, we also
reverse the rejection of claims 24 and 25.
Rejection 3. The Examiner’s rejection of claim 15 relies on the same
flawed reasoning described in Rejection 1. Answer 9-10.
In view of the foregoing, we reverse the rejection of claim 15—23
and 26.
Rejection 4. Appellants rely on the same arguments urging reversal
of Rejection 2 of claims 24 and 25. Appeal Br. 18.
In view of the foregoing, we also reverse the rejection of claims 24
and 25.
CONCLUSION
For the reasons set forth above, we reverse the rejections of claims
15—26 of the ’133 Application.
REVERSED
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