Ex Parte Sherrett et al

Board of Patent Appeals and Interferences

Jun 25, 2009

10734836 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CRAIG E. SHERRETT et al.
____________________

Appeal 2009-006144
Application 10/734,836
Technology Center 3600
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Decided:1 June 26, 2009
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Before SALLY G. LANE, SALLY C. MEDLEY and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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Application 10/734,836

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A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Kensington
Windows, Inc., under 35 U.S.C. § 134(a) from a final rejection of claims 1-
20. Appellants request reversal of the Examiner’s rejection of those claims.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Mucaria 4,368,226 Jan. 11, 1983
Ford 4,459,789 Jul. 17, 1984
Hood 5,784,853 Jul. 28, 1998
Smith 6,108,999 Aug. 29, 2000
France 6,286,288 Sep. 11, 2001

The Rejections on Appeal
The Examiner rejected claims 1-2, 4-5, 10, 13, 15-16, and 18-20 under
35 U.S.C. § 102(b) as anticipated by Mucaria. The Examiner rejected claim
3 under 35 U.S.C. § 103(a) as unpatentable over Mucaria in view of France.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Mucaria in view of France and Hood. The Examiner rejected claims 7-
9, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Mucaria in view
of Hood. The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Mucaria in view of Smith. The Examiner rejected claim
17 under 35 U.S.C. § 103(a) as unpatentable over Mucaria in view of Ford.

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The Invention
The invention relates to an impact resistant glass structure having
three distinct spaced apart layers, wherein the third layer has a laminate film.
(Spec. ¶¶ 0005-6; App. Br. Claims App’x, p. 9).2
Appellants provide arguments for independent claim 1 and state that
the remaining claims, 2-20, are patentable for the same reasons. (App. Br.,
pp. 6-8). Claim 1 is representative of the claimed invention and is
reproduced below:
1. An impact resistant glass structure comprising:
a generally planar glass first layer having an outer edge;
a generally planar impact resistant plastic second layer spaced
from and substantially parallel with said first layer, said second layer
having an outer edge;
a generally planar glass third layer with a laminate film
disposed on a surface thereof spaced from and substantially parallel
with said first layer and said second layer, said third layer having an
outer edge;
a first spacer disposed between said first layer and said second
layer adjacent the respective outer edges thereof; and
a second spacer disposed between said second layer and said
third layer adjacent the respective outer edges thereof, wherein the
outer edge of said first layer, the outer edge of said second layer, and
the outer edge of said third layer are adapted to be disposed in a
window casing.

(App. Br. Claims App’x, p. 9).

B. ISSUE
Have Appellants demonstrated that their claims exclude additional
glass layers?

2 References to the specification are to U.S. Publication 2005/0126091.
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C. FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.

1. Mucaria discloses a glass unit including a plurality of layers.
(Mucaria, col. 1, ll. 50-56).
2. Mucaria’s only Figure, reproduced below, depicts the glass unit and
shows the plurality of layers.

Mucaria’s Figure is reproduced above and depicts the glass unit and
shows the plurality of layers. (Id. at Figure).
3. Mucaria teaches two generally planar laminated glass layers 1 and 2.
(Id. at col. 1, ll. 61-66).
4. The laminated glass layers are formed having two glass layers
separated by a polyvinyl butyral (laminate) layer. Specifically, laminated
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glass layer 1 has two glass layers 3 and 4 separated by a laminate layer 5 and
laminated glass layer 2 has two glass layers 6 and 7 separated by laminate
layer 8. (Id. at Figure, col. 1, ll. 66 to col. 2, ll. 11).
5. In addition to the structure recited in Appellants’ claims, Mucaria
describes a first layer having an additional laminate film 5 and glass layer 3
and a third layer that has an additional glass layer 7. (Id.).

D. PRINCIPLES OF LAW
We give claims their broadest reasonable interpretation consistent
with the specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Comprising is a term of art used in claim language to signify that a claim is
inclusive or open-ended and does not exclude the presence of additional,
unrecited elements. CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356,
1360-61 (Fed. Cir. 2007). As such, a comprising claim is anticipated when
each and every element as set forth in the claim is found even though the
prior art may include an additional element. Medichem, S.A. v. Rolabo S.L.,
353 F.3d 928, 934-35 (Fed. Cir. 2003).

E. ANALYSIS
As discussed above, Appellants argued the patentability of all of their
claims, claims 1-20, as standing with independent claim 1. Independent
claim 1, along with claims 2, 4-5, 10, 13, 15-16, and 18-20, was rejected
under 35 U.S.C. § 102(b) as anticipated by Mucaria.
The Examiner found that Mucaria teaches a glass structure meeting all
of the limitations of claim 1. (Ans., pp. 3-5 and 10-11). For example, the
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Examiner found that Mucaria teaches a first glass layer, a plastic second
layer and a third layer having a laminate film 8. (Id.).
Appellants contend that the Examiner’s findings were improper.
(App. Br., pp. 5-6). Appellants acknowledge that both Appellants and
Mucaria are directed to an impact resistant glass structure having a plurality
of layers. (Id. at p. 5). Appellants, however, contend that Mucaria requires
laminated glass layers whereas Appellants’ claims are directed to a
laminated film. Specifically, Appellants state that laminated glass is glass
made with plates of plastic or resin between two sheets of glass whereas a
“film” is a substance spread over a single surface. (Id. at 6). Appellants
attempt to distinguish their claims by stating that neither their first, second
nor third layer include a laminated glass structure, as their invention is a
laminated film. (Id. at pp. 5-6). The Examiner disagrees and determined
that Appellants’ laminate film does not need to be open on one side and
instead may be sandwiched between two glass layers. (Ans., pp. 10-11).
Mucaria describes a glass structure having a first glass layer 3, a
second plastic layer 9 and a third layer having a laminate film disposed
thereon 6 and 8. Mucaria’s structure differs from that of Appellants’ in that
Mucaria’s first and third layers include additional layers. Specifically,
Mucaria’s structure describes a first layer having additional laminate film
and glass layers and Mucaria’s third layer includes an additional glass layer.
(FF 5).
Appellants have not demonstrated that a film ceases to be a film
simply because another layer is placed on top of the film. Moreover,
Appellants have also failed to demonstrate that Mucaria’s additional layers
are excluded from its “comprising” transition language. We find that
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Appellants have not demonstrated that the Examiner erred in finding that
Mucaria describes Appellants’ claimed structure because Appellants’ claims
do not exclude the presence of the additional layers, e.g., a glass layer
overlying the laminated film.

F. CONCLUSION
Appellants have not demonstrated that their claims exclude additional
glass layers.

H. ORDER
The rejection of claims 1-2, 4-5, 10, 13, 15-16, and 18-20 under 35
U.S.C. § 102(b) as anticipated by Mucaria are affirmed.
The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Mucaria in view of France is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable
over Mucaria in view of France and Hood is affirmed.
The rejection of claims 7-9, 12, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Mucaria in view of Hood are affirmed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over Mucaria in view of Smith is affirmed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Mucaria in view of Ford is affirmed.

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)(iv).
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AFFIRMED

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