Ex Parte Richardson et al

Board of Patent Appeals and Interferences

Jan 5, 2012

10960289 (B.P.A.I. Jan. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CORY RICHARDSON and SCOTT V. THOMSEN
____________

Appeal 2010-009824
Application 10/960,289
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
JEFFREY T. SMITH, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 29-34. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of making a coated article comprising
thermally tempering a glass substrate with a low-E coating thereon and, after
the tempering, adhering a flexible polyethylene protective sheet to a top
surface of the low-E coating with an acrylic adhesive layer (claim 29).
Appeal 2010-009824
Application 10/960,289

2
According to the Specification, the protective sheet protects the coating from
damage caused by handling the article after the tempering step (Spec. para.
[0002]).
Further details regarding this claimed method are set forth in
representative claim 29, the sole independent claim on appeal, which reads
as follows:
29. A method of making a coated article for use in an insulating
glass (IG) window unit, the coated article including a multi-layered low-E
coating supported by a glass substrate wherein the low-E coating comprises
at least one infrared (IR) reflecting layer comprising silver sandwiched
between at least first and second dielectric layers, the method comprising:

thermally tempering the glass substrate with the low-E coating
thereon to obtain a tempered coated article;

after said tempering, adhering a flexible protective sheet in non-liquid
form to a top surface of the low-E coating, with an adhesive layer, to form a
protected coated article so that the protective sheet can be peeled off of the
low-E coating to form an unprotected coated article to be coupled to another
substrate to form an IG window unit; and wherein an uppermost layer of the
low-E coating comprises silicon nitride and the protective sheet is adhered to
the layer comprising silicon nitride via the adhesive layer so that the
adhesive layer directly contacts the layer comprising silicon nitride; and
wherein the adhesive layer comprises acrylic, and the protective sheet
comprises polyethylene that is not water soluble.

The prior art listed below is relied upon by the Examiner as evidence
of obviousness:
Hartig 5,344,718 Sep. 06, 1994
Suzuki 6,020,408 Feb. 01, 2000
Veerasamy 6,461,731 B1 Oct. 08, 2002
Medwick 2002/0176988 A1 Nov. 28, 2002
Nobuyuki (JP ‘304) JP 2003082304 Mar. 19, 2003
Hukari 2003/0143401 A1 Jul. 31, 2003
Appeal 2010-009824
Application 10/960,289

3
Thomsen 6,632,491 B1 Oct. 14, 2003

Appellants' Admitted Prior Art (AAPA) Spec. paras. [0003]-[0004].

Under 35 U.S.C. § 103(a), the Examiner rejects:
claims 29, 30, 33, and 34 as unpatentable over the prior art referred to
by Hukari in view of Thomsen and/or Hartig in view of AAPA and further
in view of Suzuki and JP 304;
claim 30 as alternatively unpatentable over the prior art applied
against claim 29 and further in view of Veerasamy; and
claims 31 and 32 as unpatentable over the prior art applied against
claim 29 and further in view of Medwick.
Appellants do not present separate arguments against the rejection of
dependent claims 31 and 32 (Br. 19-20). Accordingly, these dependent
claims will stand or fall with their parent independent claim 29.
We sustain these rejections for the reasons well stated by the
Examiner in the Answer. The following comments are added for emphasis.
In support of their non-obviousness position, Appellants state without
embellishment that:
[C]laim 29 is not obvious because the cited art, along [sic,
alone] and in combination, does not disclose: (i) an uppermost
layer of the low-E coating comprises silicon nitride, (ii) after
said tempering, adhering a flexible protective sheet in non-
liquid form to a top surface of the low-E coating, with an
adhesive layer, to form a protected coated article so that the
protective sheet can be peeled off (iii) the adhesive layer
directly contacts the layer comprising silicon nitride, (iv) the
adhesive layer comprises acrylic, (v) the protective sheet
comprises polyethylene, and (vi) the protective sheet is not
water soluble. Moreover, the Final Office Action has not found
these features in connection with teachings or suggestions of
Appeal 2010-009824
Application 10/960,289

4
prior art references that would be [sic] have been combined by
one of ordinary skill in the art at the time of the invention.
Such forced combination is insufficient to make out a prima
facie case of obviousness and almost certainly involves the use
of impermissible hindsight. Accordingly, for at least the
foregoing reasons, Applicants respectfully request that this
outstanding five- or six-way § 103 rejection be reversed.

(Br. 16-17, emphasis in original).
These unembellished statements are merely assertions of non-
obviousness rather than arguments which address the Examiner's rejection in
an attempt to show factual or legal error. For example, Appellants'
statement regarding feature (i) does not address the Thomsen and Hartig
references which the Examiner finds would have suggested the feature in
question (Ans. para. bridging 4-5). Likewise, the statement regarding
feature (ii) does not address the AAPA which the Examiner finds would
have suggested this feature (id. at 5). In short, Appellants' statements
regarding features (i)-(vi) are merely unembellished assertions which fail to
address, and therefore fail to identify error in, the Examiner's findings of fact
and conclusions of law concerning these features.
Appellants argue that Hukari teaches away from the combination
proposed by the Examiner because "Hukari explicitly teaches that protective
coatings of plastic adhesive-backed films are undesirable and are to be
avoided because they cause the optical coating to be pulled off along with
the protective coating (see paragraphs [0005] and [0006] of Hukari)" (Br.
12, emphasis in original).

Appeal 2010-009824
Application 10/960,289

5
The fundamental deficiency of this argument is that it is based on an
incorrect understanding of Hukari. Contrary to Appellants' belief,
paragraphs [0005] and [0006] of Hukari do not "explicitly teach[] that
protective coatings of plastic adhesive-backed films are undesirable and are
to be avoided" (id., emphasis in original). Instead, these paragraphs simply
teach that "problems are associated with using adhesive films" (Hukari para.
[0006 ]) such as a risk of coating removal or damage (id.). Such potential
problems do not militate against a conclusion of obviousness for the reasons
fully detailed by the Examiner (Ans. 10-11).
Concerning dependent claim 30, Appellants acknowledge the
Examiner's primary position that the claimed visible transmission of less
than 70% would have been an obvious optimization of a result effective
variable but argue that visible transmission has not been established as a
result effective variable (Br. para. bridging 17-18).
The Examiner expressly finds that a result effective variable is one
which achieves a recognized result and that visible transmission achieves
such a recognized result (Ans. para. bridging 13-14). These findings have
not been contested by Appellants (i.e., no Reply Brief has been filed). Based
on these uncontested findings, we agree with the Examiner's conclusion that
it would have been obvious to provide the protective plastic film of Hukari
with an optimized visible transmission of less than 70%.
For the reasons given by the Examiner (id. at para. bridging 14-15),
we also are unpersuaded by Appellants’ argument against the alternative
rejection of claim 30 which includes the Veerasamy reference (Br. 19).
The decision of the Examiner is affirmed.

Appeal 2010-009824
Application 10/960,289

6
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(v).
AFFIRMED

ssl