Ex Parte Schield

Patent Trial and Appeal Board

Sep 19, 2013

12500005 (P.T.A.B. Sep. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/500,005 07/09/2009 Edward L. Schield 232116/314A-US/316097 1497
83332 7590 09/19/2013
Jonathan P. O'Brien, Ph.D.
Honigman Miller Schwartz and Cohn LLP
350 East Michigan Avenue
Suite 300
KALAMAZOO, MI 49007
EXAMINER
CHAPMAN, JEANETTE E
ART UNIT PAPER NUMBER
3633
MAIL DATE DELIVERY MODE
09/19/2013 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 EDWARD L. SCHIELD
____________

Appeal 2011-011484
Application 12/500,005
Technology Center 3600
____________

Before EDWARD A. BROWN, LYNNE H. BROWNE and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-011484
Application 12/500,005

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STATEMENT OF THE CASE
Edward L. Schield (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 34-40, 47 and 50-61. App.
Br. 2. Claims 1-33, 41-46, 48 and 49 have been canceled. Id. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER
Claims 34, 47 and 50 are the independent claims on appeal. Claims
34 and 50 are reproduced below:
34. A glazing assembly comprising:
a first pane of glass having a first surface
defining the exterior surface of the glazing
assembly, and an opposite second surface;
the first surface being coated with a smooth,
hardened silica-containing coating comprising
silica and about 5% aluminum and the second
surface being coated with at least one layer of a
low emissivity coating;
a second pane of glass joined to and spaced
from the first pane of glass by a polymeric spacer,
the polymeric spacer having an inner side facing
inwardly toward the interior between adjacent
panes of glass, an opposite outer side facing
outwardly away from the interior, and two
opposite edges adhered to the opposite facing
surfaces of the joined sheets of glass.

50. A glazing assembly comprising:
a first pane of glass having a first surface
defining the exterior surface of the glazing
assembly, and an opposite second surface;
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the first surface being coated with a smooth,
hardened silica-containing coating and the second
surface being coated with at least one layer of a
low emissivity coating, at least one layer of low
emissivity coating consisting of three different
layers;
a second pane of glass joined to and spaced
from the first pane of glass by a polymeric spacer,
the polymeric spacer having an inner side facing
inwardly toward the interior between adjacent
panes of glass, an opposite outer side facing
outwardly away from the interior, and two
opposite edges adhered to the opposite facing
surfaces of the joined sheets of glass.
App. Br., Claims App’x (emphasis added).

REFERENCES RELIED ON BY THE EXAMINER
Cording US 2004/0222724 Al Nov. 11, 2004
Baratuci US 2005/0227025 Al Oct. 13, 2005
Myli US 2006/0121315 Al Jun. 8, 2006
Varanasi US 2006/0188730 Al Aug. 24, 2006
Nadaud US 2006/0222863 A1 Oct. 5, 2006

THE REJECTIONS
Claims 34, 35, 39, 40, 50, 51, 53-56, 60 and 61 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Myli and Baratuci.
Claims 36 and 57 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Myli, Baratuci and Varanasi.
Claims 37, 38, 58 and 59 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Myli, Baratuci and Cording.
Claims 47 and 52 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Myli, Baratuci and Nadaud.

Appeal 2011-011484
Application 12/500,005

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ANALYSIS
Obviousness – Myli and Baratuci
Claim 34 calls for a glazing assembly comprising a first pane of glass
having an exterior first surface “coated with a smooth, hardened silica-
containing coating comprising silica and about 5% aluminum.” (Emphasis
added).
With respect to the “about 5% aluminum” limitation, the Examiner
finds that Myli discloses a first pane of glass having a first exterior surface
“being coated with a silica-containing coating 50 (Myli, Fig. 3) and a small
amount of aluminum (Myli, Paragraph 0086, Lines 13-16)” and that “[w]hile
Myli et al. does not disclose the exact amount of aluminum present, ‘about
5%’ is considered to be a small amount.” Ans. 3-4. Appellant disagrees and
argues that Myli “does not expressly disclose the amount of aluminum in
the coating,” but “does disclose that the coating is applied to the glass using
a sputtering method and that the targets used in the sputtering method have
about 10-15% aluminum” and therefore Myli “discloses that the amount of
aluminum in the coating on the glass is at least 10%, or twice as much as
claimed in claim 34.” App. Br. 6-7 (referencing Myli, paras. [0077] and
[0134]). The Examiner responds that Appellant “has not disclosed or
claimed the criticality and relevancy in only including 5% aluminum,” that
“a small amount is considered to be 10% as much as 5%” and that
“[Appellant] has not shown why 10% has not been considered a small
amount.” Ans. 12.
We agree with Appellant that Myli does not disclose the “about 5%
aluminum” limitation. Myli discloses coating a substrate by conveying it
through sputtering bays having targets carrying sputterable target materials,
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including silicon targets containing “about 10-15% aluminum.” Par. [0077]
(emphasis added); see also para. [0085] and [0134]. Myli also discloses
“that in any embodiments of the invention involving one or more silicon
targets, the silicon can optionally include a small amount of aluminum or
another electrically-conductive material.” Para. [0086] (emphasis added);
see also paras. [0108]. [0211] and [0231]. We are not informed, and have
not found, where Myli discloses using a silicon target containing about 5%
aluminum to coat a substrate, much less that the resulting coating on the
substrate itself would necessarily comprise the same percentage of
aluminum as the silicon target. Even if we assume that the percentage of
aluminum deposited on the substrate would be the same as the percentage of
aluminum contained in the silicon target,1 Myli’s disclosure of a silicon
target containing “a small amount of aluminum” does not mean that the
target necessarily contains any particular amount of aluminum, much less
about 5% aluminum. The Examiner’s position is therefore based on
speculation as to what particular percentage a “small amount” of aluminum
would be.2 Nor does the Examiner’s application of Baratuci provide an
alternative obviousness rationale for the “about 5% aluminum” limitation.
See Ans. 4.

1 See Appellant’s Specification at para. [0015] stating that “[t]he sputter
coating process for depositing the silicon dioxide coating may use a target
comprising silicon with about 5% aluminum, sputtered in a oxidizing
atmosphere.”
2 See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“we may not resolve
doubts in favor of the Patent Office determination when there are
deficiencies in the record as to the necessary factual bases supporting its
legal conclusion of obviousness”).

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Accordingly, we do not sustain the rejection of claim 34, and claims
35, 39 and 40 dependent therefrom, under 35 U.S.C. § 103(a) as being
unpatentable over Myli and Baratuci. As the Examiner does not rely on
Varanasi or Cording to remedy the deficiencies in Myli and Baratuci, we
also do not sustain the rejections under 35 U.S.C. § 103(a) of claim 36 as
being unpatentable over Myli, Baratuci and Varanasi and claims 37 and 38
as being unpatentable over Myli, Baratuci and Cording.3
Obvousness – Myli, Baratuci and Nadaud
Claim 47 calls for a glazing assembly comprising a second pane of
glass joined to and spaced from a first pane of glass by a polymeric spacer,
“wherein the polymeric spacer comprises a strip of polymeric matrix
carrying desiccant material,4 having an inside surface which faces inwardly
into the space between the panes of glass, an outer surface facing outwardly
away from the interior between the panes of glass, and . . . further including
a strip of edge adhesive being positioned on each of the edges of the

3 Because we reject claims 50-61as indefinite under a New Ground of
Rejection, we pro forma reverse the rejections under 35 U.S.C. § 103(a) of
claims 50, 51, 53-56, 60 and 61 as being unpatentable over Myli and
Baratuci; claim 57 as being unpatentable over Myli, Baratuci and Varanasi;
claims 58 and 59 as being unpatentable over Myli, Baratuci and Cording;
and claim 52 as being unpatentable over Myli, Baratuci and Nadaud,
because the rejections necessarily are based upon speculative assumptions as
to the meaning of the claims. See In re Steele, 305 F.2d 859, 862-63
(CCPA 1962).
4 As described in Appellant’s Specification, “[m]atrix layer 25g can be any
of a number of different polymeric materials, including silicone foam the
same sealant adhesive material as is used in the other adhesive layers, e.g.,
butyl adhesive. The desiccant can be carried in a coating or layer applied
over desiccant carrying matrix 25g, but is preferably carried in the matrix
material itself.” Spec. para. [0023].
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polymeric matrix and adhering the opposed panes of glass to the spacer and
a vapor barrier layer on the outer surface of the matrix.”
The Examiner finds that Baratuci discloses the “polymeric spacer”
limitation:
Baratucci, figure 3A discloses said polymeric spacer
28/18/22/24 comprises a strip of polymeric matrix carrying
desiccant material 28 (Baratuci, Paragraph 0038), having an
inside surface 28 which faces inwardly into the space between
said panes of glass, an outer surface 22/24 facing outwardly
away from the interior between said panes of glass, and two
opposite edges 18, a strip of edge adhesive 18 (Baratuci,
Paragraph 0009, Lines 10-13) being positioned on each of said
edges 18/22 of said polymeric matrix 28/18/22/24 and adhering
the opposed panes of glass 12/14 to said spacer, a vapor barrier
layer 26 (Baratuci, Fig. 1) (Baratuci, Paragraph 0032, Lines 6-
9) on said outer surface of said matrix 18 (Baratuci, Fig. 1).
Ans. 9-10, 20-21.
Appellant disagrees and argues that “[Baratuci] does not disclose a
vapor barrier layer on an outer surface of a strip of polymeric matrix along
with a strip of edge adhesive being positioned between edges of the
polymeric matrix and panes of glass” and, further, that “the matrix 18 of
[Baratuci] is an adhesive itself and therefore does not have a strip of edge
adhesive positioned between itself and any pane of glass.” App. Br. 13; see
also Reply Br. 3-4. In the Reply Brief, Appellant argues that “the sealant 18
includes desiccant.” Reply Br. 3. Appellant’s arguments do not persuade us
of Examiner error, for the reasons discussed below.
Appellant’s argument that the sealant 18 includes desiccant (see Reply
Br. 3-4) does not address the rejection as articulated by the Examiner,
specifically, that Baratucci discloses “a strip of polymeric matrix carrying
desiccant material 28.” See Ans. 9. In the embodiment of Baratuci’s
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figure 3A, desiccant-containing topcoat 28 is adhered to the interior-facing
surface of sealant 18 (polymeric matrix). Baratuci, para. [0038]; fig. 3A.
Appellant’s argument that Baratuci does not disclose a vapor barrier
on an outer surface of a strip of polymeric matrix is conclusory and does not
address the Examiner’s finding that a vapor barrier layer 26 is on the outer
surface of “matrix 18.” See App. Br. 13; Ans. 9-10. As shown in figure 3A
of Baratuci, support member 26, which functions as a vapor barrier, is
positioned on the exterior-facing surface of sealant 18. Id. at para. [0032];
fig. 3A.
Appellant’s argument that Baratuci fails to disclose “a strip of edge
adhesive being positioned between edges of the polymeric matrix and panes
of glass” (see App. Br. 13, emphasis added) is not commensurate with the
scope of claim 47, which recites “a strip of edge adhesive being positioned
on each of the edges of the polymeric matrix and adhering the opposed
panes of glass to the spacer” (emphasis added). As shown in Appellant’s
figure 4, edge adhesive sealant strip 25f is positioned on each of the edges of
the polymeric matrix 25g and adheres opposed panes of glass to the spacer,
but is not positioned between the edges of the polymeric matrix and the
panes of glass, contrary to Appellant’s claim interpretation. The side
portions (strips of edge adhesive) of Baratuci’s matrix (U-shaped sealant 18)
are positioned “on the edges” of the middle or lateral portion of Baratuci’s
matrix as recited in claim 47.
Accordingly, we sustain the Examiner’s rejection of claim 47 under
35 U.S.C. § 103(a) as being unpatentable over Myli, Baratuci and Nadaud.

Appeal 2011-011484
Application 12/500,005

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NEW GROUND OF REJECTION
We enter a New Ground of Rejection of claim 50 and its dependent
claims 51-61 under 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which Appellant regards as the invention. Claim 50 pertinently recites that
the second surface of the first pane of glass is coated with “at least one layer
of a low emissivity coating, at least one layer of low emissivity coating
consisting of three different layers.”5
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” See Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted); see also ln re Hammack, 427 F.2d 1378, 1382 (CCPA 1970) (“the
essence of [the] requirement [under 35 U.S.C. § 112, second paragraph] is
that the language of the claims must make it clear what subject matter they
encompass.”).
Here, a skilled person would not understand whether claim 50 is
limited to a single low emissivity coating that consists of three different
layers.6 We discern two ambiguities. First, the skilled person would not
understand whether the recitation “at least one layer of a low emissivity
coating” is distinct from the recitation “at least one layer of low emissivity

5 We note that the Examiner and Appellant take different positions on the
scope and meaning of this claim language. Compare Ans. 14 with App.
Br. 8.
6 The Specification describes low emissivity coating 21b comprising “at
least one layer of low emissivity coating, preferably two and most preferably
three layers of low emissivity coating.” See Spec. para. [0013].
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coating consisting of three different layers.” In other words, it is not clear
whether the phrases “at least one layer of a low emissivity coating” and “at
least one layer of low emissivity coating” refer to the same “at least one
layer.” Second, the phrase “at least one layer of low emissivity coating”
indicates a scope that includes the possibility of one or more layers, while
the phrase “consisting of three different layers” indicates a scope that is
limited to just three layers. Id.

DECISION
We affirm the rejection of claim 47.
We reverse the rejections of claims 34-40.
We pro forma reverse the rejections of claims 50-61.
We enter a New Ground of Rejection of claims 50-61 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which Appellant
regards as the invention.

37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides
that Appellant must, WITHIN TWO MONTHS, exercise one of the
following options:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

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

AFFIRMED-IN-PART

rvb