Ex Parte Tu et al

Patent Trial and Appeal Board

Nov 14, 2018

14539460 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/539,460 11/12/2014
22928 7590 11/16/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Kun Hung Tu
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.
SP13-372 3975
EXAMINER
SZEWCZYK, CYNTHIA
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
11/16/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUN HUNG TU and
CRAIG STEVEN WEBER
Appeal 2018-001713
Application 14/539,460 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-7.2 We have jurisdiction under
35 U.S.C. § 6(b). 3 We reverse and enter a new ground of rejection pursuant
to 37 C.F.R. § 41.50(b).
1 Appellant is the Applicant, Coming Incorporated, which, according to the
Appeal Brief, is the real party in interest. Appeal Brief (Appeal Br. 2) filed
June 5, 2017.
2 Claims 8-11 have been withdrawn from consideration. Final Act. Office
Action Summary; Appeal Br. 10.
3 Our Decision additionally refers to the Specification filed Nov. 12, 2014
("Spec."), the Final Office Action dated Aug. 26, 2016 ("Final Act."), the
Examiner's Answer dated Oct. 5, 2017 ("Ans."); and the Reply Brief filed
Dec. 4, 2017 ("Reply Br.").
Appeal 2018-001713
Application 14/539,460
BACKGROUND
The subject matter on appeal relates to methods of cutting sheet
material (see, e.g., claim 1 ). The Inventors disclose that lasers used to cut
ion-exchanged glass interact with a chuck on which the glass is mounted,
which damages the chuck and leads to the chuck being serviced or replaced
periodically. Spec. ,r 7. In view of this, the Inventors disclose a method of
cutting a sheet material by placing a porous barrier between the sheet
material and the support so the latter is protected from laser damage while
minimizing chips on the surfaces of the material being cut by the laser. Id.
,r,r 11, 22.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A method of cutting a sheet material, comprising;
mounting the sheet material on a support;
forming a porous barrier structure between the sheet
material and the support by interposing at least one sheet of
porous material between the sheet material and the support;
focusing a laser beam at a target point relative to the
sheet material on the support; and
effecting a relative motion between the focused laser
beam and the sheet material such that the focused laser beam
moves along a predetermined path on the sheet material to cut
the sheet material along the predetermined path while the
porous barrier shields the support from damage by the focused
laser beam.
2
Appeal 2018-001713
Application 14/539,460
REJECTIONS ON APPEAL
I. claims 1, 2, and 4---6 under 35 U.S.C. § I02(a)(l) as being
anticipated by Urairi; 4
II. claim 3 as being unpatentable under 35 U.S.C. § 103 over
Urairi in view of Satou; 5 and
III. claim 7 as being unpatentable under 35 U.S.C. § 103 over
Urairi in view of Rafla-Yuan. 6
DISCUSSION
Rejection I
Claims 1, 2, and 4--6 are rejected under 35 U.S.C. § I02(a)(l) as being
anticipated by Urairi.
The Examiner finds Urairi discloses a method of cutting a sheet
material in which a porous barrier is interposed between the sheet material
and a support, citing the adhesive sheet 3 depicted in Figure 3 ofUrairi.
Final Act. 2.
Appellant contends Urairi does not disclose interposing at least one
sheet of porous material between a sheet material and a support, as recited in
claim 1, because Urairi does not disclose its adhesive sheet 3 as being a
porous material. Appeal Br. 2-5. Appellant argues paragraph 143 ofUrairi
discloses a separator (e.g., one including paper) but paragraph 139 discloses
the separator as being formed on a surface of an adhesive layer of Urairi' s
protective sheet 2, which is not interposed between a sheet material and a
4 Urairi et al., US 2007/0181543 Al, published Aug. 9, 2007 ("Urairi").
5 Satou, US 2006/0196599 Al, published Sept. 7, 2006 ("Satou").
6 Rafla-Yuan et al., US 5,961,852, issued Oct. 5, 1999 ("Rafla-Yuan").
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Appeal 2018-001713
Application 14/539,460
support. Id. at 5. Thus, according to Appellant, the Examiner is conflating
the adhesive layer and separator of Urairi' s protective sheet 2 with the
adhesive sheet 3, which Urairi does not disclose as including a separator. Id.
The Examiner responds to Appellant's arguments with the following:
In paragraph 0144, Urairi states that "[a]s the adhesive
sheet 3, a general material having an adhesive layer laminated on
a base material may be used without particular limitation". This
indicates that the teachings of the adhesive layers of protective
sheet 2 would apply to an adhesive layer of the adhesive sheet 3.
In paragraph 0139, Urairi details that "[t]he adhesive layer
may one [sic] layer or two or more layers. As required, a
separator may be formed on the surface of the adhesive layer".
Paragraph 0143 further recites that "[t]he material for the
separator includes paper".
Therefore, since the teachings of the adhesive layers of
protective sheet 2 apply to the adhesive sheet 3, Urairi teaches a
paper separator layer on adhesive sheet 3, which reads on the
claimed porous barrier.
Ans. 2.
Appellant's arguments are persuasive. Paragraph 139 of Urairi
discloses the protective sheet 2 includes an adhesive layer formed on a base
material and a separator formed on a surface of the adhesive layer.
Paragraph 143 states the separator may include paper or a synthetic resin
film. As shown in Figure 3 of Urairi, the protective sheet 2 is located above
both a workpiece 1 and a stage 5. Therefore, the protective sheet 2 is not
interposed between a sheet material and a support, as recited in claim 1.
Paragraph 144 of Urairi discloses "an adhesive layer laminated on a
base material may be used [ for the adhesive layer 3] without particular
limitation." Although this indicates various materials could be used as the
base material of the adhesive sheet 3, Urairi does not describe the base
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Appeal 2018-001713
Application 14/539,460
material of the adhesive sheet 3 being made of a porous material or that
adhesive sheet 3 can be made of the same materials as the separator of the
protective sheet 2. "A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference." Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628,631 (Fed. Cir. 1987). Here, Urairi's disclosure does not
support the Examiner's findings that Urairi discloses a porous material
interposed between a sheet material and a support, as recited in claim 1.
Nor has the Examiner set forth a proper basis to find that Urairi's
adhesive sheet 3 necessarily includes a porous material. The Examiner's
explanation in the Examiner's Answer relies upon the possibility that the
base material of the adhesive sheet 3 may include the same material as the
separator of the protective sheet 2 because Urairi places no limit on the base
material for the adhesive sheet 3. "Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). To rely
upon a theory of inherency, there must be "a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
ExparteLevy, 17 USPQ2d 1461, 1464 (BPAI 1990).
As a result, the Examiner has not set forth a prima facie case of
anticipation for claim 1. Claims 2 and 4---6 depend from claim 1.
For these reasons, we do not sustain the Examiner's§ 102 rejection of
claims 1, 2, and 4--6 over Urairi.
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Application 14/539,460
Re} ections II and III
Claims 3 and 7 depend from claim 1. The § 103 rejections of claims 3
and 7 include Satou and Rafla-Yuan in addition to Urairi and have the same
deficiencies as the § 102 rejection of claim 1. Although each of the
remaining § 103 rejections relies on additional prior art references, the
Examiner's findings and conclusion for these rejections do not remedy the
deficiencies in the § 102 rejection over Urairi. Therefore, we do not sustain
the § 103 rejections of claims 3 and 7.
NEW GROUNDS OF REJECTION
Claims 1-6 are rejected as being unpatentable under 35 U.S.C. § 103
over Urairi in view of Satou.
As noted, Urairi discloses providing an adhesive sheet between a
support and a sheet material to be cut, and that, for the adhesive sheet, "a
general material having an adhesive layer laminated on a base material may
be used without particular limitation." Urairi ,r 144. Satou discloses
processing a composite green sheet by irradiating the green sheet with a
laser while the green sheet is supported on a base member to form a through
hole. Satou ,r 10. Satou discloses that the base member can be "a porous
base material such as porous PET, porous PEN or the like impregnated with
a liquid, or a fibrous base material such as paper impregnated with a liquid."
Id. ,r 69. Thus, Satou demonstrates it was known in the art of laser
processing/cutting to support a workpiece with a porous member, such as a
fibrous base material, particularly paper. As a result, it would have been
obvious to one of ordinary skill in the art to select a fibrous base material as
the base material for Urairi' s adhesive sheet 3 in light of its known
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Application 14/539,460
suitability for that purpose. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416-417 (2007). Selecting paper, which inherently is porous and fibrous,
also meets the limitations of claims 2 and 3.
With regard to claims 4--6, Appellant does not direct us to any error in
the Examiner's findings of fact or conclusions of law as applied to the
further limitations recited in these claims. Compare Final Act. 3, with
Appeal Br. 6 (arguing only that claims 4--6 depend from claim 1). We adopt
the Examiner's findings set forth in the Final Office Action for rejecting
claims 4--6.
Claim 7 is rejected as being unpatentable under 35 U.S.C. § 103 over
Urairi and Satou and further in view of Rafla-Yuan.
We adopt the Examiner's findings and conclusion (Final Act. 5) that,
in light of Rafla-Yuan, it would have been obvious to operate Urairi's laser
with a pulse duration in a nanosecond regime. Appellant does not challenge
that finding. See App. Br. 7.
DECISION
The Examiner's decision rejecting claims 1-7 is reversed. We enter
new grounds of rejection for claims 1-7 under§ 103.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
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Application 14/539,460
37 C.F.R. § 4I.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(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 prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
REVERSED
37 C.F.R. § 4I.50(b)
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