Ex Parte Wang

Patent Trial and Appeal Board

Apr 20, 2018

12074144 (P.T.A.B. Apr. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/074,144 02/29/2008
22928 7590 04/24/2018
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
FIRST NAMED INVENTOR
Wenchao Wang
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.
SP08-033 6581
EXAMINER
DUNNER, DIALLO IGWE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
04/24/2018 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 WENCHAO WANG
Appeal2017-004435
Application 12/074,144
Technology Center 3700
Before MICHELLE R. OSINSKI, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1 and 3-22. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
STATEMENT OF THE CASE
Claims 1, 1 7, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A device comprising:
1 Coming Incorporated is identified in the Appeal Brief as the real party in
interest. Appeal Br. 3.
2 Appeal is taken from the Final Office Action dated January 4, 2016.
Appeal2017-004435
Application 12/074,144
(I) a first substrate;
(II) a resistive-heating element including one or more electrical
leads and having an electrically closed-loop structure bonded to the
first substrate, the closed-loop structure defining a continuous loop
beginning and ending at each of the one or more electrical leads, the
electrical leads being formed of material forming the closed-loop
structure; and
(III) a first layer of frit material bonded to the resistive-heating
element over the surface of the resistive-heating element distal from
the first substrate;
wherein the resistive heating element comprises multiple
adjacent layers of electrically conductive material comprising:
a first layer in proximity to the first substrate, the first
layer having a first CTE; and
a second layer in proximity to the first layer of frit
material, the second layer having a second CTE different from
the first CTE;
wherein the first CTE is closer to a CTE of the first
substrate than is the second CTE.
THE REJECTIONS
I. Claims 1, 13, 17, and 18 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
II. Claims 1 and 8-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Olenick (US 2007/0051193 Al; published Mar. 8, 2007)
and McMillin (US 2005/0145617 Al; published July 7, 2005). 3
3 The Examiner's omission of claims 12 and 19 from the statement of
rejection is a typographical error, as the Examiner provides analysis for
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Appeal2017-004435
Application 12/074,144
III. Claims 3-7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Olenick, McMillin, and Becken (US 2006/0084348 Al;
published April 20, 2006).
ANALYSIS
Rejection I
The Examiner rejects claims 1, 13, 1 7, and 18 as being indefinite for
containing trademarks, namely, "CTE, CTEHELI, CTEHEL2, CTESI,
CTEFLI." Final Act. 2-3. Additionally, the Examiner rejects claim 13 as
being indefinite for containing an abbreviation. Id. at 3.
The Specification expressly discloses that "[t]he term 'CTE' means
coefficient of thermal expansion." Spec. i-f 3 7. The Specification also
expressly discloses that
Layer 901 can be chosen to have a CTE (CTEHELI) close to that
of the substrate 401 ( CTES 1 ), and layer 903 can be chosen to
have a CTE (CTEHEL2) close to that of the frit material
(CTEFLI), and the frit material can be chosen to have a CTE
close to the of the substrate 403 (CTES2).
Id. i-f 49. Thus, in light of the Specification, we determine that the claim
terms identified by the Examiner are clear and have the following meanings:
(i) "CTE" means coefficient of thermal expansion; (ii) "CTEHEL 1" means
the coefficient of thermal expansion of layer 901 (i.e., the CTE of Heating
ELement l); (iii) "CTEHEL2" means the coefficient of thermal expansion of
layer 903 (i.e., the CTE of Heating ELement 2); (iv) "CTESI" means the
coefficient of thermal expansion of substrate 401 (i.e., the CTE of Substrate
rejecting claims 12 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Olenick and McMillin. See Final Act. 3--4, 5.
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Appeal2017-004435
Application 12/074,144
l); and (iv) "CTEFLl" means the coefficient of thermal expansion of the frit
material (i.e., the CTE of Frit materiaL 1).4
Accordingly, we do not sustain the Examiner's rejection of claims 1,
13, 17, and 18 under 35 U.S.C. § 112, second paragraph, as being indefinite.
Rejection II
Independent claim 1 and claims 8-16 depending therefrom
Regarding independent claim 1, the Examiner finds, inter alia, that
Olenick's first ceramic plate 4 corresponds to the claimed first substrate and
Olenick's seals 24, 26 correspond to the claimed first layer of frit material.
Final Act. 4 (citing, e.g., Olenick Figs. 1-9). The Examiner also finds that
Olenick's elements "20, 30, 32, 34, 36, 38, 42" correspond to the claimed
resistive-heating element comprising multiple adjacent layers of electrically
conductive material. 5 Id. (citations omitted). The Examiner relies on
Olenick's disclosure of elements "20, 30, 32, 34, 36, 38, 42" as
corresponding to both the claimed first and second layers of the resistive-
heating element, determining that "first layer 20, 30, 32, 34, 36, 38, 42" is
"in proximity to the first substrate" (i.e., first ceramic plate 4) and has "a
first CTE," and "second layer 20, 30, 32, 34, 36, 38, 42" is "in proximity to
4 The Examiner's reliance on Manual of Patent Examining Procedure
(MPEP) § 2429 as prohibiting the use of "abbreviations that are specific to
the application at issue" is not appropriate because the cited portion of the
MPEP refers specifically to nucleotide and/ or amino acid sequence
disclosures.
5 See Olenick i-fi-135, 38--44 (wherein the cited reference numerals
correspond to solid ceramic electrolyte 20, embedded transmission lines 30
(i.e., 30A, 30B, 30C), signal conductors 32 (i.e., 32A, 32B, 32C), ground
reference conductors 34 (i.e., 34A, 34B, 34C), ports 36 (i.e., 36A, 36B, 36C)
and 38 (i.e., 38A, 38B, 38C), and vias 42 (i.e., 42A, 42B, 42C)); see also
Appeal Br. 17.
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Appeal2017-004435
Application 12/074,144
the first layer of frit material" (i.e., seals 24, 26) and has "a second CTE
different from the first CTE." Id.; see also Ans. 13 ("Olenick teaches ... [a]
layered resistive element wherein the elements are items 20, 30, 32, 34, 36,
38, 42.")
Appellant argues, inter alia, that because "the Examiner asserts that
the same components of the Olenick reference ... are simultaneously
analogous to the first layer of the resistive heating element and the second
layer of the resistive heating element," as recited in claim 1, "it is unclear"
which component(s) of Olenick the Examiner is relying on for disclosing the
first layer distinct from the second layer. Appeal Br. 17.
We are persuaded by Appellant's argument. The Examiner's
findings, which merely list a series of elements disclosed in Olenick, without
identifying which elements correspond to the claimed first and second layers
of the resistive-heating material, is insufficient to support a prima facie case
of obviousness. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(citing Chester v. Miller, 06 F.2d 1574, 1578 (Fed. Cir. 1990) (the Examiner
has failed to make a prima facie case when a rejection is so uninformative
that it prevents Appellant from recognizing and seeking to counter that
rejection)).
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 8-16 depending therefrom under 35 U.S.C.
§ 103(a) as unpatentable over Olenick and McMillin.
Independent claims 17 and 18 and claims 19-22 depending therefrom
The Examiner's findings with respect to independent claims 1 7 and 18
contain the same deficiencies as the Examiner's findings with respect to
independent claim 1 discussed supra. Final Act. 6-8. Accordingly, for the
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Application 12/074,144
same reasons stated supra, we do not sustain the Examiner's rejection of
independent claims 17 and 18, and claims 19--22 depending therefrom under
35 U.S.C. § 103(a) as unpatentable over Olenick and McMillin.
Rejection III
The Examiner's findings with respect to Becken do not cure the
deficiencies in the Examiner's findings as applied to independent claim 1, as
set forth supra. Final Act. 10-11. Accordingly, for the same reasons stated
supra, we do not sustain the Examiner's rejection of claims 3-7, which
depend from claim 1, under 35 U.S.C. § 103(a) as unpatentable over
Olenick, McMillin, and Becken.
DECISION
The Examiner's decision rejecting claims 1 13, 17, and 18 under 35
U.S.C. § 112, second paragraph, is reversed.
The Examiner's decision rejecting claims 1 and 3-22 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
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