Ex Parte Wang et al

Patent Trials and Appeals Board

Jul 9, 2019

13174310 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/174,310 06/30/2011
124194 7590 07/11/2019
Guardian Glass, LLC
c/o KCPS IP Dept/Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
FIRST NAMED INVENTOR
Jiangping 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.
JAR-3691-2358 1634
EXAMINER
KRINKER, Y ANA B
ART UNIT PAPER NUMBER
1747
NOTIFICATION DATE DELIVERY MODE
07/11/2019 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
koch_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANPING WANG,
RUDOLPH HUGO PETRMICHL, and JEAN-MARC LEMMER
Appeal 2017-011244
Application 13/17 4,310
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-5, 7-9, 11, 12, and 14--16 of
Application 13/174,310 under 35 U.S.C. § 103(a) as obvious. Final Act.
(July 5, 2016). Appellants 1 seek reversal of these rejections pursuant to
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
We held oral argument in this appeal on June 17, 2019. 2 For the
reasons set forth below, we affirm.
1 Guardian Industries Corp. is identified as the real party in interest. Appeal
Br. 2.
2 A transcript of the hearing will be a part of the record once it becomes
available.
Appeal 2017-011244
Application 13/174,310
BACKGROUND
The '310 Application describes methods for making acid-etched glass
articles. Spec. ,r,r 67-98. Glass made by these methods may be used to
make, for example, shower enclosures. Id. ,r 69. According to the
Specification, when the glass substrate is so-called "float glass," residual tin
and tin oxide may build up on the tin side of the substrate while it is in the
tin bath. Id. ,r 75. This tin and tin oxide is believed to be at least partially
responsible for post-heat treatment haze observed in some situations. Id.
The methods described and claimed in the Specification are said to reduce
post-heat treatment haze. Id. ,r 90.
Claim 1 is representative of the '310 Application's claims and is
reproduced below from the Claims Appendix.
1. A method of making a coated article, the method
compnsmg:
providing a glass substrate including first and second
major surfaces, the first major surface being exposed to a tin
bath during fabrication of the glass substrate and the second
major surface being opposite the first major surface and being
acid etched;
ion beam treating the first major surface of the substrate
so as to remove a surface portion of the substrate, the surface
portion comprising tin, tin oxide, and/or surface contaminants
comprising tin;
disposing a zirconium-inclusive layer directly on and
directly contacting the first major surface following said ion
beam treating, so that no layer is located between the ion beam
treated surface of the glass substrate and the zirconium-
inclusive layer; and
disposing a layer comprising diamond-like carbon
(DLC), directly or indirectly, on the zirconium-inclusive layer;
wherein the glass substrate with the zirconium-inclusive
layer and the layer comprising DLC is heat treatable at a
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Application 13/174,310
temperature sufficient for thermal tempering, heat
strengthening, and/or heat bending so as to cause bumoff of the
layer comprising DLC but without also causing significant
bumoff of the zirconium-inclusive layer, and
wherein the ion beam treating is performed in a manner
effective to reduce post-heat treatment haze of the coated article
to an amount lower than it otherwise would be if the first major
surface were not ion beam treated, so that the ion beam treating
reduces post heat treatment haze of the coated article by at least
0.5% compared to if the first major surface was not ion beam
treated.
Appeal Br. 16-17 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-3, 5, 8, 9, 11, 14--16 and 23-24 are rejected under 35
U.S.C. § I03(a) as unpatentable over the combination of
Veerasamy '431, 3 Veerasamy '250, 4 and Trouve. 5 Final Act. 2.
2. Claims 4, 7, and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination of Veerasamy '431, Veerasamy
'250, Trouve, and O'Shaughnessy. 6 Final Act. 6.
DISCUSSION
Appellants argue for reversal of the rejections on appeal on the basis
of limitations present in independent claims 1 and 11. Appeal Br. 10-14.
3 US 2005/0095431 Al, published May 5, 2005.
4 US 2002/0117250 Al, published August 29, 2002.
5 US 6,471,880 Bl, issued October 29, 2002.
6 US 6,902,813 B2, issued June 7, 2005.
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Application 13/174,310
We, therefore, shall limit our discussion to these claims. Moreover,
Appellants' do not distinguish between independent claims 1 and 11. We,
therefore, limit our discussion to claim 1 with the understanding that our
analysis applies with equal force to claim 11.
The Examiner rejected claim 1 as unpatentable over the combination
ofVeerasamy '431, Veerasamy '250, and Trouve. Final Act. 2--4. In so
doing, the Examiner found that the combination of Veerasamy '431 and
Veerasamy '250 describes or suggests each step of the method recited in
claim 1 except for acid etching the second major surface of the glass
substrate. Id. at 4. The Examiner further found that Trouve describes acid
etching glass. Id.
Id.
The Examiner also found:
Regarding the limitation "wherein the ion beam treating is
performed in a manner effective to reduce a post heat treatment
haze of the coated article to an amount lower than it otherwise
would be if the first major surface were not ion beam treated, so
that the ion beam treating reduces post heat treatment haze of
the coated article by at least 0.5% compared to if the first major
surface was not ion beam treated" it is interpreted that the
manner of ion beam treating as claimed in independent claims 1
and 11 would reduce post heat treatment haze to an amount
lower than it would be if the surface were not ion beam treated
at all, specifically by at least 0.5% compared to no treatment.
Since the combined teachings of Veerasamy [ '431 ],
[Veerasamy] '250 and Trouve teach that the substrate is ion
beam etched to clean the surface of the substrate (Veerasamy
[ '431 ], [0070]), this limitation is met.
Appellants argue that the rejection of claim 1 should be reversed
because ( 1) the claimed haze reduction is not an inherent result of the
Examiner's asserted combination of prior art method steps and (2) the
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Application 13/174,310
unexpected results associated with the claimed process are sufficient to
overcome any prima facie case of obviousness. Appeal Br. 11.
First, Appellants do not argue that the combination of references
applied by the Examiner fails to describe or suggest each step recited in
claim 1. See id. at 12-14. Rather, Appellants argue that the ion beam
treatment described in the prior art "would not necessarily (i.e., inherently)
result in a reduction of haze of the sort expressly contemplated in claim 1 ( or
claim 11)." Id. at 13.
We determine that the Examiner has correctly found that the
combination of Veerasamy '431, Veerasamy '250, and Trouve describes or
suggests each step performed in the claimed method. It has long been the
law that under such circumstances, the Examiner can assume that the
product produced by a process that is substantially identical to the process
used to produce the claimed product inherently has the same properties as
the claimed product. In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In re
Best, 562 F.2d 1252, 1255 (CCPA 1977).
In this case, Appellants do not point to any record evidence that claim
1 's method creates a glass substrate that is patently distinct from that created
by following the method described or suggested in the applied combination
of references. Instead, Appellants present speculative attorney argument:
"For instance, 'light' treatments could be insufficient to 'claim' problem-
causing tin deposits, and 'harsh' treatments could affect haze in
unpredictable ways." Appeal Br. 13-14 (emphasis added).
This argument is not persuasive. As an initial matter, attorney
argument cannot take the place of factually supported objective evidence.
E.g., In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); see also Icon Health & Fitness, Inc. v.
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Application 13/174,310
Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) ("Attorney argument is
not evidence."). Moreover, the ion beam milling described in the prior art
removes the same amount of material from the glass substrate as the ion
beam milling described in the '310 Application. For example, Veerasamy
'250 describes the removal of 2-lOOA of glass from the substrate using ion
beam milling. Veerasamy '250 ,r 50. The '310 Application's Specification
teaches the removal of at least 2A of glass from the substrate to prevent haze
formation. Spec. ,r 80. Appellants do not provide any persuasive technical
reasoning, or present any evidence, to explain why removal of at least 2A of
glass in the claimed process is sufficient to prevent haze but removal of
between 2 and 1 OOA of glass as described in the prior art would not achieve
the same result.
In sum, we determine that the Examiner had a reasonable basis for
concluding that the combination of Veerasamy '431, Veerasamy '250, and
Trouve achieves the same result as the claimed process. Appellants have not
persuaded us otherwise.
Second, Appellants argue the '310 Application's Specification reports
unexpected results associated with claim 1 sufficient to rebut the Examiner's
prima facie case of obviousness. Appeal Br. 11. This argument is not
persuasive. As discussed above, the process recited in claim 1 is
substantially the same as that described or suggested by the asserted
combination of prior art references. Appellants may have been the first to
recognize that this method reduces post-heat treatment haze. This, however,
is insufficient to support the patentability of the claimed method. In re
Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (rejecting the appellants'
argument that "a structure suggested by the prior art, and, hence, potentially
in the possession of the public, is patentable to them because it also
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Application 13/174,310
possesses an [i]nherent but hitherto unknown, function which they claim to
have discovered"); Ex parte Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The
fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be obvious.").
CONCLUSION
In view of the foregoing, we affirm the rejections of claims 1-5, 7-9,
11, 12, and 14--16 of the '310 Application.
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
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