Ex Parte Vikor

Patent Trial and Appeal Board

Jan 30, 2018

13766025 (P.T.A.B. Jan. 30, 2018)

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.
13/766,025 02/13/2013 Gyorgy VIKOR JAR-3691-2904 1044
23117 7590 02/01/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PASKO, NICHOLAS R
ART UNIT PAPER NUMBER
2872
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte GYORGY VIKOR1
Appeal 2017-000633
Application 13/766,025
Technology Center 2800
Before BEVERLY A. FRANKLIN, DONNA M. PRAISS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Guardian Industries Corp.
(Appeal Br. 3.) We note that the Power of Attorney (filed September 11,
2013) is from the Luxembourg entity which is listed in the Bib Data Sheet as
the Applicant. This POA states that the Luxembourg entity is the Assignee.
Hence, it is noted that the assignment of record is to the Luxembourg entity.
Appeal 2017-000633
Application 13/766,025
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—9, 11—29, and 31—332. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
1. A dielectric mirror including a glass substrate supporting a coating,
the coating consisting essentially of moving away from the glass
substrate:
a first transparent dielectric high refractive index layer comprising
niobium oxide, the first transparent dielectric high refractive index layer
having a thickness of from about 70-140 nm;
a second transparent dielectric low refractive index layer comprising
silicon oxide, the
second transparent dielectric low refractive index layer having a
thickness of from about 30-140 nm;
a third transparent dielectric high refractive index layer comprising
niobium oxide;
a fourth transparent dielectric low refractive index layer comprising
silicon oxide;
2 The Rejections and/or Arguments are cited in the Final Action, mailed July
14, 2015 (“Final Act.”); the Appeal Brief, filed Apr. 19, 2016 (“Appeal
Br.”); the Examiner’s Answer, mailed Aug. 10, 2016 (“Answer”); and the
Reply Brief, filed Oct. 11, 2016 (“Reply Br.”).
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Appeal 2017-000633
Application 13/766,025
a fifth transparent dielectric high index layer comprising niobium
oxide;
wherein the first transparent dielectric high refractive index layer
comprising niobium oxide is at least 10 nm thicker than at least one of the
third transparent dielectric high refractive index layer comprising niobium
oxide and the fifth transparent dielectric high index layer comprising
niobium oxide;
wherein the coating does not contain any metallic reflective layer; and
wherein the dielectric mirror has a visible film side reflectance and a
visible glass side reflectance of from about 50-90%, and at all wavelengths
from 500-600 nm has a visible transmission of from about 20-40%.
(Appeal Br., Claims Appendix, 12.)
The Examiner relies on the following prior art references as evidence
of unpatentability:
Ohta, etal., US 6,903,512 B2
(hereinafter “Ohta”)
Oshima et al., US 2010/0310247 A1
(hereinafter “Oshima”)
Buhay et al., US 2003/0180547 Al
(hereinafter “Buhay”)
Shimoda et al., US 7,251,074 B2
(hereinafter “Shimoda”)
June 7, 2005
Dec. 9, 2010
Sept. 25, 2003
July 31,2007
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Appeal 2017-000633
Application 13/766,025
THE REJECTIONS
1. Claims 26, 28, and 29 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as being anticipated by Ohta. Final Act. 2—6.
2. Claims 1—9, 11—14, and 16—20 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ohta in view of
Oshima. Final Act. 7—23.
3. Claims 15 and23—25 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ohta, in view of Oshima, as applied
to claim 1, and further in view of Buhay. Final Act. 23—27.
4. Claims 21 and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ohta, in view of Oshima, as applied
to claim 1, and further in view of Shimoda. Final Act. 28—31.
5. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohta, as applied to claim 26, and further in view of
Oshima. Final Act. 31—33.
6. Claim 31 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohta. Final Act. 33—35.
7. Claim 32 is rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ohta, as applied to claim 26, and further in
view of Shimoda. Final Act. 35—36.
8. Claim 33 is rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ohta, as applied to claim 26, and further in
view of Buhay. Final Act. 36—38.
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Appeal 2017-000633
Application 13/766,025
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we are persuaded of error in the Examiner’s
determination, and reverse the rejections of record, discussed below.
Rejection 1
Appellant argues, inter alia, that claim 26 requires that the coating
“consists essentially of’ the five recited layers, and refers to Figure 1 of
the Specification in this regard. Appeal Br. 8. Appellant argues that
Table 7 of Ohta requires 13 layers to achieve its transmittance values and
certain other desired values. Appeal Br. 8—9. Based upon this, Appellant
submits that respective layers shown in Table 7 of Ohta have a material
effect on the basic and novel characteristics of the mirror film formed
therein, in order to achieve the disclosed transmittance values. Appeal
Br. 9. Appellant argues that it follows that this is evidence that the
additional layers shown in Table 7 of Ohta would materially change the
characteristics of the claimed subject matter and are thus excluded from
the claim because of the language “consisting essentially of’ recited in
claim 26. Appeal Br. 8—9; Reply Br. 1—3. We are persuaded by such
argument. It is the Examiner’s position that the language “consisting
essentially of’ should be construed as being equivalent to “comprising” for
the reasons stated on pages 3^4 of the Answer. However, we agree with
Appellant that this is not a correct interpretation of the claim for the reasons
stated by Appellant in the record. Reply Br. 3^4. We thus reverse Rejection
1.
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Appeal 2017-000633
Application 13/766,025
Rejections 2—8
Because none of the additionally applied references in the other
rejections were relied upon by the Examiner to cure the aforementioned
deficiencies of Ohta, we also reverse Rejections 2—8. We add that we agree
with Appellant’s position in the record that it would not have been obvious
to have eliminated certain layers from Ohta’s film (from 13 layers to 5
layers) because such a modification would have frustrated the objectives of
Ohta.
DECISION
Each rejection under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) is
reversed.
ORDER
REVERSED
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