14119995 (P.T.A.B. Dec. 6, 2018)

Ex Parte Walther et al

Patent Trial and Appeal BoardDec 6, 2018

14119995 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/119,995 02/03/2014 Marten Walther 27623 7590 12/06/2018 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 UNITED ST A TES OF AMERICA 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. 0009488USU/4 l 49 1069 EXAMINER GOLDEN, CHINESSA T ART UNIT PAPER NUMBER 1788 MAIL DATE DELIVERY MODE 12/06/2018 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 MAR TEN WALTHER and MART A KRZYZAK Appeal 2018-001914 Application 14/119,995 Technology Center 1700 Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and LILAN REN, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL 1 1 This Decision includes citations to the following documents: Specification filed Nov. 25, 2013 ("Spec."); Final Office Action dated Oct. 26, 2017 ("Final Act."); Appeal Brief filed Mar. 9, 2017 ("Br."); and Examiner's Answer dated Sept. 18, 2017 ("Ans."). Appeal 2018-001914 Application 14/119,995 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision finally rejecting claims 34--36, 38--40, 42--44, 46--48, 50-54, 56, and 74--97. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. The invention relates to a substrate element having an easy-to-clean coating. Spec. 1 :5---6. The invention may be used in touchscreens for smart phones, automated teller machines, etc. Id. at 1 :22-24. An exemplary embodiment of the invention is shown in Figure 2, reproduced below. 2 Appellants identify Schott AG as the real party in interest. Appeal Br. 1. 3 Claim 37, which depends from claim 34, is included in the lists of pending and finally rejected claims on the Office Action Summary sheet of the Final Office Action (Final Act. 1) and is listed as rejected in the Notice of Panel Decision from Pre-Appeal Brief Review, date Feb. 9, 2017. The Examiner notes that claim 37 was missing from the claims submitted with Appellants' amendment filed August 22, 2016. Id. at 2. In the "Listing of the Claims" in the August 22, 2016 amendment (page 2), claim 37 is not identified as cancelled, but the amendment states that the "listing of claims will replace all prior listings of claims in the application." Claim 37 is also listed in the Appeal Brief as pending and on appeal. Br. 2. Claim 37 is not, however, included in the Claims Appendix to the Appeal Brief. Neither the Final Office Action, the Answer, nor the Appeal Brief includes a discussion of claim 37 or lists it as included in a specific ground of rejection. The status of claim 3 7 is unclear and we do not address claim 3 7 in this Decision as no arguments have been presented in support of or against patentability of this claim. 2 Appeal 2018-001914 Application 14/119,995 ;---------"--------, Figure 2, above, is a cross-sectional view of an embodiment of the inventive coated substrate element. In the embodiment shown in Figure 2, coated substrate element 12 comprises antireflection coating 4 sandwiched between outer layer 6 and support material 2. Spec. 41 :25-31. Support material 2 may be a glass sheet. Id. at 41 :31-32. Antireflection coating 4 comprises high-index layer 44, applied to surface 20 of support material 2, low-index layer 43, high-index layer 42, and low- index adhesion promotor layer 41. Id. at 41 :27-30. In the exemplary embodiment, high index layers 42, 44 comprise a titanium oxide having a refractive index of 2.0, and low-index layer 43 comprises a silicon oxide with a refractive index of 1.46. Id. at 42: 1--4. Low index, adhesion promoter layer 41 has a refractive index of 1.4 and comprises a mixed oxide, preferably a silicon oxide mixed with an oxide of another element such as aluminum. Id. at 42:4--6, 29-32. Outer layer 6 has 3 Appeal 2018-001914 Application 14/119,995 sufficient open porosity such that, on application of an easy-to-clean layer, there is interaction between the molecules of the easy-to-clean layer ( e.g. an antifingerprint coating or an antistick coating) and adhesion promoter layer 41, thereby ensuring higher long-term stability of the easy-to-clean coating. Id. at 42:8-14, 43:12-14. In another embodiment, antireflection coating 4 comprises a single, mixed oxide layer having a molar ratio of aluminum to silicon of 3 to about 30% and having a refractive index in a range from 1.35 to 1.7. Spec. 18:18-24. The Examiner relies on the following references as evidence of unpatentability: Iryo et al. ("Iryo") Anderson et al. ("Anderson") Matsufuji et al. ("Matsufuji") Amin et al. ("Amin") Morimoto et al. ("Morimoto") Radcliffe et al. ("Radcliffe") Bewig et al. ("Bewig")4 us 5,789,476 US 2002/0001724 Al US 2002/0018886 Al US 2009/0197048 Al US 2010/0014163 Al US 2010/0079866 Al WO 2006/114321 Al The status of the claims on appeal is listed below: Aug. 4, 1998 Jan.3,2002 Feb. 14,2002 Aug. 6,2009 Jan. 21, 2010 Apr. 1, 2010 Nov. 2, 2006 1. Claims 76, 90, and 93 are finally rejected under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph, as indefinite. 2. Independent claim 34, and its dependent claims 35, 36, 38--40, 42--44, 46--48, 50-54, 56, 74--77, 90-92, and 96 are finally rejected under 35 U.S.C. Â§ I03(a) as follows: a. claims 34--36, 39, 40, 42--44, 47, 48, 52, 54, 74, and 75 over Morimoto; b. claim 3 8 over Morimoto in view of Anderson; c. claim 46 over Morimoto in view of Matsufuji; 4 Machine translation to which Appellants have not objected. 4 Appeal 2018-001914 Application 14/119,995 d. claims 50, 51, 53, 76, and 77 over Morimoto in view of Bewig; e. claim 56 over Morimoto in view of Radcliffe; f. claims 90-92 over Morimoto in view of Iryo; g. claim 96 over Morimoto in view of Amin; 3. Independent claim 78, and its dependent claims 79--89, 93-95, and 97 are finally rejected under 35 U.S.C. Â§ 103(a) as follows: a. claims 78-87 and 89 over Morimoto in view of Bewig; b. claim 88 over Morimoto in view of Bewig and Matsufuji; c. claims 93-95 over Morimoto in view of Bewig and Iryo; and d. claim 97 over Morimoto in view of Bewig and Amin. Rejection of Claims 76, 90, and 93 under 35 USCÂ§ 112(b) or 35 USCÂ§ 112 (pre-AJA) Appellants do not address the rejection of claims 76, 90, and 93 under 35 U.S.C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA). Accordingly, we summarily sustain this ground of rejection. Section 103 Rejection of Independent Claim 3 4 Independent claim 34 is reproduced below. 34. A coated substrate element, comprising: a support material; an easy-to-clean coating; and an antireflection coating on the support material, the antireflection coating comprising at least one layer, wherein an uppermost layer of the at least one layer is an adhesion promoter layer comprising a mixed oxide covalently bonded to the easy-to-clean coating, wherein the adhesion promoter layer is a silicon oxide layer 5 Appeal 2018-001914 Application 14/119,995 mixed with at least one oxide of aluminum and has a molar ratio of aluminum to silicon of between 3% to 30% and, wherein the adhesion promoter layer has a refractive index in the range from 1.35 to 1.7. Claim 34 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Morimoto. See Final Act. 4; Ans. 3. Morimoto relates to an antireflector and a display device. Morimoto ,r 1. The antireflector includes a substrate (id. ,r 9), an antireflection film comprising at least one layer (id.), and a stain-proof film (id. ,r 83). The Examiner finds Morimoto's substrate, antireflection film, and stain-proof film correspond, respectively, to the claim 34 support material, antireflection coating, and easy-to-clean coating. Final Act. 4. Morimoto discloses the antireflection film comprises an upper, low refractive index layer having a refractive index of 1.3 to 1.6. Morimoto ,r 9. The low refractive index layer may be a silica layer, preferably having a silica atom content of 30 to 60 mass % and oxygen atom content of 40 to 70 mass%. Id. ,r,r 74, 76. According to Morimoto, "[ w ]hen each of the content of the silicon atoms and the content of the oxygen atoms is in one of these corresponding ranges, it is possible to obtain a high transmittance." Id. ,r 76. Morimoto discloses the silica layer may contain an oxide of another metal such as aluminum, provided the amount of the other metal oxide does not adversely affect the required physical property of the low refractive index layer. Id. ,r 77. The Examiner finds that including an aluminum oxide in Morimoto's silica layer in a molar ratio of 3% to 30% aluminum to silicon would have been a matter of routine optimization. Final Act. 4. Appellants argue the Examiner reversibly erred in finding that achieving the claimed molar ratio of aluminum to silicon would require only routine experimentation on the part of an ordinary artisan. Br. 5. As found by the Examiner, Morimoto suggests a low refractive index layer comprising the same components as the claimed adhesion promotor layer and 6 Appeal 2018-001914 Application 14/119,995 provided as the topmost layer of an antireflection coating. See Morimoto ,r,r 9, 28, 76-77, Fig. 1 (low refractive index layer 28). There is substantial overlap between the refractive index ranges of Morimoto' s low refractive index layer and the claimed adhesion promotor layer. Compare Morimoto ,r 9 (1.3 to 1.6), with claim 1 ( 1.3 5 to 1. 7). Although, Morimoto does not disclose molar ratios of aluminum to silica in the low refractive index layer, Morimoto, like Appellants, is concerned with maintaining high transmittance and discloses that other metal oxides may be added to the silica (low refractive index) layer in quantities that do not adversely affect this property. Compare Morimoto ,r,r 76-77, Abstract, with Spec. 10:19-25. Thus, the Examiner had a reasonable basis for finding the ordinary artisan would have adjusted the content of aluminum in Morimoto' s low refractive index layer to the same molar ratio of aluminum to silica recited in claim 34, because, according to the Specification, high transmittance necessarily results with a molar ratio of about 3% to about 30% aluminum to silicon. See Spec. 18:11-26. Appellants argue the Examiner reversibly erred in finding Morimoto's low refractive index layer is an adhesion promoter layer because Morimoto fails to describe it as such. Br. 6. The Specification discloses that the adhesion promotor layer, also described as a low-index layer, is provided as a topmost layer of the antireflection coating. Spec. 11 :22-23. The term "adhesion promotor" is functional language requiring that the layer interact, e.g., by covalently bonding, with a subsequently-applied, easy-to-clean coating to increase long-term stability of the easy-to-clean coating. See id. at 7: 15-25. As discussed above, the Examiner's fact finding and reasoning support a finding that Morimoto suggests an antireflection coating wherein the topmost layer has the same composition as the claimed adhesion promotor layer. Therefore, the 7 Appeal 2018-001914 Application 14/119,995 Examiner had a reasonable basis for finding that Morimoto's topmost layer has the capability of functioning as an adhesion promotor layer. See Intel Corp. v. US. Int'! Trade Comm 'n, 946 F.2d 821, 832 (Fed. Cir. 1991) (explaining that functional language in an apparatus claim is interpreted as requiring that the apparatus possess the capability of performing the recited function). "[W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210,213 (CCPA 1971)); see also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). Appellants have not provided persuasive evidence that Morimoto's topmost layer does not have the capability of functioning as an adhesion promotor layer. In sum, for the reasons discussed above and in the Answer (see Ans. 25-27), Appellants have not identified reversible error in the Examiner's conclusion of obviousness as to claim 34. 5 Section 103 Rejection of Independent Claim 78 Independent claim 78 is reproduced below. 5 As to claim 34, as well as claims 42 and 78, Appellants also argue that Morimoto's uppermost layer has a refractive index of from 1.8 to 2.5. Br. 6, 8-9. We do not address this argument as it appears to be based on a misunderstanding of Morimoto' s disclosure in paragraph 9, as explained in detail by the Examiner. See Ans. 27, 29-30. 8 Appeal 2018-001914 Application 14/119,995 78. A substrate element, comprising: a support material; an antireflection coating on the support material, the antireflection coating comprising an adhesion promoter layer as an uppermost layer, the adhesion promoter layer comprising a silicon oxide layer mixed with at least one oxide of aluminum, and the adhesion promoter layer having a refractive index in the range from 1.35 to 1.7; a porous outer layer on the antireflection coating; and an easy-to-clean coating on the porous outer layer, the porous outer layer having sufficient open porosity for the easy-to-clean coating to covalently bond to the adhesion promoter layer. Claim 78 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Morimoto in view of Bewig. Final Act. 12; Ans. 11. Morimoto is discussed above. Bewig discloses an object (substrate) with a porous anti-reflection layer, and a hydrophobic substance on at least a portion of the anti-reflection layer. Bewig ,r,r 19, 21, 28. Bewig discloses the coated object has improved fog-reducing and self-cleaning properties. Id. ,r 74. The Examiner finds Morimoto discloses or suggests a substrate element as recited in claim 78 with the exception of a porous outer layer between the antireflection coating and easy-to-clean coating. Final Act. 15. The Examiner finds one of ordinary skill in the art would have incorporated Bewig's porous outer layer on Morimoto' s antireflection coating to provide an antireflective article with improved fog-reducing and self-cleaning properties as taught by Bewig. Id. at 16. The Examiner finds the ordinary artisan would have been motivated to modify the open porosity of the porous outer layer for the easy-to-clean coating to covalently bond to the adhesion promoter layer, noting that "where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable 9 Appeal 2018-001914 Application 14/119,995 ranges in open porosity involve only routine skill in the art, ab sen[ t] a showing of criticality." Id. at 15-16. Appellants argue the Examiner's finding that the ordinary artisan would have modified the porosity of the porous outer layer in the Morimoto/Bewig substrate element to enable covalent bonding between the low refractive index/adhesion promotor layer and stain proof/easy-to-clean coating layer is based solely on impermissible hindsight reconstruction. Br. 8. Appellants' argument is persuasive. "Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). As discussed in connection with the rejection of claim 34, the Examiner has identified sufficient evidence to support a finding that Morimoto suggests a low refractive index layer that is capable of functioning as an adhesion promotor layer. However, the Examiner has not identified evidence to support a finding that one of ordinary skill in the art would have recognized that Morimoto' s low refractive index layer and stain proof layer form covalent bonds and would have modified the porosity of Bewig' s layer, when positioned between Morimoto' s low refractive index layer and stain proof layer, to retain such covalent bonding. Nor has the Examiner provided any other persuasive explanation of why the ordinary artisan would have modified the porosity of Bewig's layer. See In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017) ("Missing from the Board's analysis is an explanation as to why it would have been routine optimization to arrive at the claimed invention. Similar to cases in which the Board found claimed inventions would have been 'intuitive' or 'common sense,' the Board must provide 10 Appeal 2018-001914 Application 14/119,995 some rational underpinning explaining why a person of ordinary skill in the art would have arrived at the claimed invention through routine optimization."). Because Appellants have identified reversible error in the Examiner's rejection of claim 78, we do not sustain the rejection of this claim. Section 103 Rejections of Dependent Claims 50 and 51 Claim 50 depends from claim 34, and claim 51 depends from claim 50. Similar to claim 78, claim 50 recites "a porous outer layer disposed between the adhesion promoter layer and the easy-to-clean coating." Br. 15 (Claims Appendix). Unlike claim 78, claim 50 does not require that the porous outer layer have sufficient open porosity to enable covalent bonding between the easy-to-clean coating and the adhesion promoter layer. The Examiner finds one of ordinary skill in the art would have incorporated Bewig' s porous outer layer on Morimoto' s antireflection coating to provide an antireflective article with improved fog-reducing and self-cleaning properties as taught by Bewig. Final Act. 13. Appellants argue the Examiner has not identified evidence to support a finding that the ordinary artisan would have had a reasonable expectation of success in modifying Morimoto to include Bewig' s porous layer for the purpose of achieving fog-reducing and self-cleaning properties. See Br. 7-9. Appellants' argument is persuasive. We agree the Examiner has not identified evidence to support a finding that Bewig' s porous outer layer provides the fog-reducing and self-cleaning properties of Bewig's device. Nor has the Examiner identified evidence to support a finding that Morimoto' s device, if modified to include Bewig' s porous outer layer, reasonably would have been expected to have fog-reducing and self-cleaning properties. 11 Appeal 2018-001914 Application 14/119,995 Accordingly, we do not sustain the Section 103 rejections of claims 50 and 51. Section 103 Rejection of Dependent Claims 7 4 and 7 5 Claims 7 4 and 7 5 depend from independent claim 34 and recite narrower ranges for the molar ratio of aluminum to silicon. Br. 15 (Claims Appendix). In addition to the arguments made in support of patentability of claim 34, Appellants argue the Specification provides evidence of criticality in the claimed ranges. Br. 10-11. Appellants' arguments are not persuasive for the reasons discussed above in connection with the rejection of claim 34. See Ans. 32-33. In addition, Appellants have not directed us to persuasive evidence of criticality in the ranges recited in claims 74 and 75. See id.; Spec. 18:22-23, 29:32-33, 41:9-11 (describing the ranges recited in claims 74 and 75 as preferable); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("[T]he applicant's showing of unexpected results must be commensurate in scope with the claimed range."); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) ("It is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice."); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (explaining that the burden of analyzing and explaining data to support nonobviousness rests with the Appellants). Section 103 Rejections of Dependent Claims 35, 36, 38-40, 42-44, 46-48, 52-54, 56, 76, 77, 90-92, and 96 Claims 35, 36, 38--40, 42--44, 46--48, 52-54, 56, 76, 77, 90-92, and 96 depend from independent claim 34. For the same reasons discussed above in 12 Appeal 2018-001914 Application 14/119,995 connection with the rejection of independent claim 34, we sustain the rejections of these claims. Section 103 Rejections of Dependent Claims 79-89, 93-95, and 97 Claims 79-89, 93-95, and 97 depend from independent claim 78. For the same reasons discussed above in connection with the rejection of independent claim 78 we do not sustain the rejections of these claims. ORDER 76,90,and Â§ 112(b) 76,90,and 93 orÂ§ 112, 93 2nd para. 34--36, 39, Â§ 103(a) Morimoto 34--36, 39, 40, 42--44, 40, 42--44, 47, 48, 52, 47, 48, 52, 54, 74,and 54, 74,and 75 75 38 Â§ 103(a) Morimoto and 38 Anderson 46 Â§ 103(a) Morimoto and 46 Matsufu"i 50,51,53, Â§ 103(a) Morimoto and 53, 76,and 50, 51, 78-87, 76-87, and Bewig 77 and 89 89 56 Â§ 103(a) Morimoto and 56 Radcliffe 88 Â§ 103(a) Morimoto, 88 Bewig, and Matsufuji 90-92 Â§ 103(a) Morimoto and 90-92 Iryo 13 Appeal 2018-001914 Application 14/119,995 93-95 Â§ 103(a) 96 Â§ 103(a) 97 Â§ 103(a) Summary Morimoto, Bewig, and Iryo Morimoto and 96 Amin Morimoto, Bewig, and Amin 34--36,38- 40, 42--44, 46--48,52- 54,56, 74-- 77, 90-93, and 96 93-95 97 50, 51, 78-89, 94, 95, and 97 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 14