Ex Parte RIDEALGH et al

Patent Trial and Appeal Board

Feb 28, 2019

14392110 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/392,110 11/23/2015
1678 7590 02/28/2019
MARSHALL & MELHORN, LLC
FOUR SEA GA TE - EIGHTH FLOOR
TOLEDO, OH 43604
FIRST NAMED INVENTOR
JOHN ANDREW RIDEALGH
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.
1-24561 3732
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
MAIL DATE DELIVERY MODE
02/28/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN ANDREW RIDEALGH,
SIMON JAMES HURST, and SIMON JOHN SLADE
Appeal2018-004352
Application 14/392,110
Technology Center 1700
Before JEFFREY B. ROBERTSON, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21--41. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Pilkington Group Limited of Great Britain,
which, according to the Appeal Brief, is also the real party in interest.
Appeal Br. 3.
Appeal2018-004352
Application 14/392, 110
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a window glazing that
uses UV patterns visible to birds in order to prevent birds from flying into
the glass. Spec. 1:3-2:7. Claim 21, reproduced below, is illustrative of the
claimed subject matter:
21. A glazing for minimising or preventing bird collisions
with windows or other glazings, the glazing comprising at least
one substrate, an antireflection coating, and a UV reflectance
coating, the antireflection coating being between the UV
reflectance coating and the substrate, wherein the UV
reflectance coating is provided in a patterned arrangement
comprising a plurality of separate elements, each element being
spaced apart from a neighbouring element.
Appeal Br. 14 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Anderson et al. ("Anderson")
Nelson
Alvarez
Alsip et al. ("Alsip")
us 5,952,084
us 6,165,598
US 2009/0130349 Al
US 2013/0003208 Al
REJECTIONS
The following rejections are before us on appeal:
Sept. 14, 1999
Dec. 26, 2000
May 21, 2009
Jan.3,2013
2 In this Decision, we refer to the Final Office Action dated March 16, 2017
("Final Act."), the Appeal Brief filed October 17, 2017 ("Appeal Br."), the
Examiner's Answer dated January 25, 2018 ("Ans."), and the Reply Brief
filed March 20, 2018 ("Reply Br.").
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Application 14/392, 110
Rejection 1. Claims 21-33, 35, 38, 40, and 41 under 35 U.S.C. § 103
as unpatentable over Alsip in view of Anderson. Ans. 2.
Rejection 2. Claim 34 under 35 U.S.C. § 103 as unpatentable over
Alsip in view of Anderson and further in view of Alvarez. Id. at 5.
Rejection 3. Claims 36, 37, and 39 under 35 U.S.C. § 103 as
unpatentable over Alsip in view of Anderson and further in view of Nelson.
Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
The Appellant does not present substantively separate arguments for
any rejections or for any claims aside from claims 21, 40, and 41. See, e.g.,
Appeal Br. 10 ( explaining that claims 29-33 and 3 8 are patentable over the
art of record for the same reasons as claim 21 ). We therefore limit our
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Application 14/392, 110
discussion to those claims. All remaining claims stand or fall with claim 21.
37 C.F.R. § 4I.37(c)(l)(iv) (2013).
The Examiner rejects claim 21 as obvious over Alsip in view of
Anderson. Ans. 2. The Examiner finds that Alsip teaches a glass window
with a patterned UV-reflecting layer for preventing bird collisions where the
separate elements are spaced apart from each other. Id. ( citing Alsip). The
Examiner finds that Alsip does not teach claim 21 's antireflection coating.
The Examiner, however, finds that it is well known to apply antireflection
coatings to glass windows. Id. The Examiner cites Anderson as teaching an
antireflection coating to improve visibility through the glass. Id. ( citing
Anderson). In particular, Anderson states that a substrate coated with an
antireflection coating "will thus have an increase in its transmitted-
light/reflected-light ratio, which improves the visibility of objects placed
behind it." Anderson 1 :28-31. The Examiner determines, "[i]t would have
been obvious to one of ordinary skill in the art at the time the invention was
made to apply an anti-reflection coating to the window of Alsip, as doing so
would improve visibility through the window." Ans. 2.
Appellant presents four arguments why a person of skill in the art
would not have added an antireflection coating to Alsip. First, Appellant
argues that Alsip teaches that clear windows cause birds to crash into them
and that a person of skill in the art, therefore, would not want to improve the
visibility of Alsip's window. Appeal Br. 7-8. Alsip, however, teaches (as
does Appellant's Specification) the use of markings which reflect ultraviolet
light visible to birds but are substantially transparent to light in humans'
visible spectrum. Alsip ,r 16. Alsip thus seeks windows that are optically-
clear to humans. Ans. 7; Alsip ,r 14 ("The visibility of the glass after
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Application 14/392, 110
treatment is very high."). The evidence supports that adding an
antireflection coating would add visibility through the window for humans
(Anderson 1 :28-30), and Appellant presents no evidence that a person of
skill in the art would have believed that this increased human visibility
would have increased bird crashes. This argument is thus unpersuasive.
Second, Appellant argues that adding a UV-reflective layer would
make Alsip's markings more obtrusive to humans. Appeal Br. 8-9; Reply
Br. 2. In particular, Appellant argues that the UV-reflecting layer reflects
light and modifying the remainder of Alsip' s window with an antireflection
coating would increase the contrast between Alsip's layers. Reply Br. 2.
The reflective portion of Alsip cited by the Examiner, however, reflects UV
light that is almost invisible to humans. Ans. 8; Alsip ,r 16 ("Such
ultraviolet light reflecting markings would be visible to flying birds
(provided the markings are positioned on the exterior surface of the glass)
but would be almost invisible to people inside the building looking out of
the glass."). Because the cited UV-reflective markings of Alsip is almost
invisible to humans, the evidence does not support that making the other
portions of Alsip anti-reflective would make the markings more obtrusive.
Alternatively, even if the antireflection coating did make Alsip' s
markings more obtrusive, a person of skill in the art would have weighed
this drawback against the benefit of having the Alsip glass become more
transparent as taught by Anderson. Anderson 1 :28-30. The existence of
advantages and disadvantages of the antireflection coating does not negate
the Examiner's stated reason to combine. See Medi chem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action often
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Application 14/392, 110
has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine.").
Third, Appellant argues that Alsip does not address how a reflective
coating would impact the Alsip glass's ability to minimize bird collisions.
Appeal Br. 9. Alsip, however, indicates that it is its UV-reflective markings
that are visible to birds and minimize bird collisions. Alsip ,r 16. Appellant
has not persuasively explained why a person having ordinary skill in the art
would have expected a treatment on the non-marked portions of Alsip's
window to harm the effectiveness of Alsip's markings. Rather, based on
Anderson, a person of ordinary skill would have had had a reasonable
expectation of success in modifying Alsip with Anderson's antireflection
coating in order to improve visibility. Anderson 1 :28-31. Moreover, as the
Examiner explains (Ans. 8), Appellant's recognition of improved
minimization of bird collisions does not negate that a person having ordinary
skill in the art would have reached the same antireflection coating in order to
reduce glare and improve visibility through the window. Appellant's
argument is, therefore, not persuasive.
Fourth, in the Reply Brief, Appellant argues that there is no reason to
modify Alsip to make its windows transparent because they already have
high visibility. Reply Br. 1-2. This argument is not persuasive because
Anderson teaches that an antireflective coating improves visibility over
windows lacking such a coating. Anderson 1:28-30. Because Appellant's
arguments do not identify reversible error, we sustain the Examiner's
rejection of claim 21.
Claims 40 and 41 recite that the UV reflectance coating covers "at
least 20% of the subjacent surface." Appeal Br. 18 (Claims App.).
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Appellant argues that Alsip teaches away from using this much UV
reflectance because it teaches "provid[ing] a glass treatment which is as
unobtrusive as possible. To achieve this goal, the total surface area occupied
by markings 22 should be no greater than 15%." Appeal Br. 11-12. The
Examiner finds, however, that Alsip merely teaches that using a coverage
greater than 15% will result in the UV reflectance layer being more
obtrusive to human viewers. Ans. 9. Alsip does not indicate that a higher
percentage is unworkable. Appellant's argument is unpersuasive because
Alsip teaches a tradeoff between obtrusiveness and preventing bird
collisions (see, e.g., Alsip ,r 18) and therefore supports the Examiner's
determination that one of ordinary skill would have known to select a
coverage percentage that appropriately protects against bird strikes in a
given application. Ans. 9. We thus sustain the Examiner's rejection of
claims 40 and 41.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 21--41.
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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