Ex Parte Prone et al

Board of Patent Appeals and Interferences

Mar 22, 2012

11196514 (B.P.A.I. Mar. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL F. PRONE and MATTHEW ZABIEGA
____________________

Appeal 2010-003104
Application 11/196,514
Technology Center 3700
____________________

Before: JOHN C. KERINS, GAY ANN SPAHN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003104
Application 11/196,514
2
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
5 and 7-22. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

The claims are directed to a heatable vehicle window utilizing a silver
inclusive epoxy electrical connection and the method of making it. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of making a heatable vehicle window, the method
comprising:
forming a substantially transparent coating including at least
one heatable layer on a glass substrate;
providing first and second conductive bus bars on the glass
substrate over at least the coating, in a manner so that the first
and second conductive bus bars are in electrically
communication with the heatable layer of the coating;
electrically connecting an external conductive connector to one
of the bus bars using a silver inclusive epoxy, and wherein
silver content of the silver inclusive epoxy is from about 65-
95%.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Michalek
Leon
Baigrie
Woodard
US 3,915,833
US 4,755,659
US 5,382,384
US 6,204,480 B1
Oct. 28, 1975
Jul. 5, 1988
Jan. 17, 1995
Mar. 20, 2001
Sol US 2003/0019859 A1 Jan. 30, 3003
EPO-TEK E415G Formulation Data Sheet (“EFDS”), retrieved on Nov. 2,
2007 from http://www.polytec-pi.fr/EPOTEK-1
/datasheets/E415G%20CFDS.PDF.
Appeal 2010-003104
Application 11/196,514
3
Silver Conductive Epoxy 8331 (“SCE”), MG Chemicals product database of
Thermally Conductive Adhesives, retrieved on Nov. 2, 2007 from
http://www.mgchemicals.com/products/tcadhesive.html.

REJECTIONS
Claims 1-3, 5-11, 13-17, and 19-22 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Woodward, Leon and Baigrie. Ans. 3.
Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Woodward, Leon, Baigrie and Sol. Ans. 8
Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Woodward, Leon, Baigrie, and Michalek with EFDS and
SCE providing evidence as to the meaning of the term “silver hardener”
used by Michalek. Ans. 9.

OPINION
The Examiner correctly found that Woodard disclosed the basic
claimed device and method including first and second bus bars 14, 14’ and
an external conductive connector 16 electrically connecting to one of the bus
bars 14, 14’. Ans. 4. The Examiner also correctly found that Woodard does
not detail how the connector is electrically connected to the bus bars. Ans. 4.
The Examiner found that “connecting an external conductive connector to
one of the bus bars using silver inclusive epoxy” was demonstrated by Leon
to be known in the art. Ans. 4-5 citing Leon, col. 3, ll. 36-49. However,
while Leon discloses an adhesive 7 containing a conductive filler 8, that may
be silver, Leon employs that adhesive to connect the bus bar and lead
assembly 3 to the conductive layer 2. Leon, col. 3, ll. 18-45, fig. 2. Leon
does not specify how the electrical attachment means or “connector” 6 is
connected to lead portion 5 of the bus bar. Each of the independent claims
Appeal 2010-003104
Application 11/196,514
4
involved in this appeal require the silver inclusive epoxy to connect the
external connector to the bus bar and neither Woodard nor Leon teach such
an arrangement. The Examiner does not provide any further evidence or
reasoning to account for this deficiency. Baigrie is cited by the Examiner
only as demonstrating that the particular silver content percentage claimed
and two-part epoxies were known in the art. Ans. 5-6. Michalek, as applied
by the Examiner, also does not remedy this deficiency. The key to
supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103
is the clear articulation of the reason(s) why the claimed invention would
have been obvious. See In re Kahn, 441 F. 3d 977, 988 (Fed. Cir. 2006) cited
with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Although the Examiner provides a well-reasoned analysis of many of the
issues involved in this appeal, since the Examiner has failed to set forth
evidence or reasoning sufficient to make a prima facie case that the claimed
subject matter would have been obvious, we are constrained to reverse the
Examiner’s rejections.

DECISION
The Examiner’s rejections of claims 1-5 and 7-22 are reversed.

REVERSED

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