Ex Parte Thiel

Board of Patent Appeals and Interferences

Sep 17, 2010

10841986 (B.P.A.I. Sep. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/841,986 05/06/2004 James P. Thiel 1935A1 2829
7590 09/17/2010
PPG INDUSTRIES, INC.
Intellectual Property Dept.
One PPG Place
Pittsburgh, PA 15272
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1795
MAIL DATE DELIVERY MODE
09/17/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte JAMES P. THIEL
________________

Appeal 2009-005448
Application 10/841,986
Technology Center 1700
________________

Before CHARLES F. WARREN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10-13 and 18, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005448
Application 10/841,986

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The Invention
The Appellant claims a method for coating a substrate in a magnetron
sputtered vapor deposition (MSVD) coater. Claim 1 is illustrative:
1. A method of coating a substrate with a metal layer and a metal
oxide layer in a single zone of a MSVD coater, comprising:

providing a first bay of a zone including a first target
comprising a first metal to deposit a metal coating layer;

providing a second bay of the zone including a second target
comprising one or more metals to provide a metal oxide coating layer;
and

pumping a reactive gas selected from oxygen or nitrogen into
the zone;

wherein the second target has a ΔG of equal to or less than -160
kcal/mole O2 or the difference in ΔG between the first target and the
second target is at least 60 kcal/mole O2.

The References
Hart 4,462,883 Jul. 31, 1984
O’Shaughnessy 6,921,579 B2 Jul. 26, 2005
(§ 371 (c)(1), (2), (4) date Jun. 17, 2002)
The Rejections
The claims stand rejected as follows: claims 1-8, 10-13 and 18 under
35 U.S.C. § 103 over Hart in view of O’Shaughnessy, and claim 18 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
OPINION
We reverse the rejection under 35 U.S.C. § 103 and affirm the
rejection under 35 U.S.C. § 112, first paragraph.

Appeal 2009-005448
Application 10/841,986

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Rejection under 35 U.S.C. § 103
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, coating a substrate with a metal
layer and a metal oxide layer in a single zone?
Findings of Fact
Hart sputters onto a transparent glass or plastic substrate a low
emissivity coating comprising, in order, a layer of silver, a small amount of
an additional metal other than silver, and an anti-reflection metal oxide layer
(abstract). Hart teaches that especially good results have been obtained
using, as the additional metal, metals which are oxidized to form metal
oxides, and that the best results have been obtained using metals whose
oxides have a standard free energy of formation (ΔG) more negative than
-100 kcal/gram mole O2 (col. 3, ll. 34-36, 45-52).
O’Shaughnessy discloses a magnetron sputtering chamber containing
sputtering targets above and below a horizontally moving substrate such as a
glass sheet (col. 1, ll. 7-8, 49; col. 27, ll. 14-29; Fig. 7). “While the
substrate 10 will somewhat divide the sputtering chamber, this does not
preclude gas introduced in one area of the chamber from traveling elsewhere
in the chamber” (col. 27, ll. 54-57). Consequently, O’Shaughnessy teaches,
if an oxide is applied to one side of the substrate in an oxidizing atmosphere,
then one should not attempt to deposit a non-oxidized layer such as a silver
layer onto the other side of the substrate in the same chamber (col. 29, l. 66 –
col. 30, l. 4).

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Application 10/841,986

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Analysis
The Appellant argues that O’Shaughnessy does not suggest depositing
a metal in one zone and a metal oxide in another zone of the same chamber
(Br. 5).
The Examiner argues that “O’Shaughnessy et al teaches in fig. 7 was
cited [sic] for teaching a sputtering chamber (i.e. a single zone) [200] having
separate target bays [220a], [220b] for depositing a metal and a metal oxide”
(Ans. 10).
O’Shaughnessy does not disclose depositing a metal using one of
targets 220a and 220b and depositing a metal oxide using the other.
O’Shaughnessy discloses depositing a metal oxide on the upper and lower
surfaces of a substrate using upper targets 220a and 220b and lower
target 260 (col. 30, ll. 23-41).
Conclusion of Law
The Appellant has indicated reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, coating a substrate with a metal
layer and a metal oxide layer in a single zone.
Rejection under 35 U.S.C. § 112, first paragraph
Issue
Has the Appellant indicated reversible error in the Examiner’s
determination that the rejection of claim 18 under 35 U.S.C. § 112, first
paragraph, is ripe for appeal?
Analysis
The Appellant argues that claim 18, which was added before the final
rejection and was rejected under 35 U.S.C. § 112, first paragraph, written
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Application 10/841,986

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description requirement in the final rejection, has not been twice rejected
under 35 U.S.C. § 112, first paragraph, written description requirement and
that, therefore, that rejection is not ripe for appeal (Reply Br. 2).
As stated in 35 U.S.C. § 134(a), “[a]n applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Board of Patent Appeals and Interferences, having
once paid the fee for such appeal.” Similarly, 37 C.F.R. § 41.31(a)(1) states
that “[e]very applicant, any of whose claims has been twice rejected, may
appeal from the decision of the examiner to the Board . . . .” In the present
case the “any of whose claims has been twice rejected” requirement is met
by the rejection at least twice of any of claims 1-8 and 10-13. Hence, the
jurisdiction of the Board over this appeal includes the rejection of claim 18
under 35 U.S.C. § 112, first paragraph, written description requirement.
Because the Appellant has not challenged the rejection of claim 18
under 35 U.S.C. § 112, first paragraph, written description requirement as to
its merits, we summarily affirm that rejection.
Conclusion of Law
The Appellant has not indicated reversible error in the Examiner’s
determination that the rejection of claim 18 under 35 U.S.C. § 112, first
paragraph, is ripe for appeal.
DECISION/ORDER
The rejection of claims 1-8, 10-13 and 18 under 35 U.S.C. § 103 over
Hart in view of O’Shaughnessy is reversed. The rejection of claim 18 under
35 U.S.C. § 112, first paragraph, written description requirement is affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.
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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-IN-PART

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PPG INDUSTRIES, INC.
INTELLECTUAL PROPERTY DEPT.
ONE PPG PLACE
PITTSBURGH, PA 15272