Ex Parte Weber et al

Patent Trial and Appeal Board

Sep 27, 2017

13121385 (P.T.A.B. Sep. 27, 2017)

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.
13/121,385 03/28/2011 Douglas Weber P8954US1 8442
7590 09/29/201762579
APPLE INC.
c/o Brownstein Hyatt Farber Schreck, LLP
410 Seventeenth Street
Suite 2200
Denver, CO 80202
EXAMINER
HERRING, LISA L
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
patentdocket @ bhfs. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS WEBER,
CHRISTOPHER PREST, and STEPHEN PAUL ZADESKY
Appeal 2017-002319
Application 13/121,385
Technology Center 1700
Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-002319
Application 13/121,385
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—10, 12, 13, and 31—40.2 (Appeal Br. 1.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The Specification describes methods for improving the strength of a
thin glass member for an electronic device. (Spec. 14.) Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for producing a glass cover for an exposed surface
of a consumer electronic product, the method comprising:
obtaining a glass sheet;
singulating the glass sheet into a plurality of glass covers,
each of the glass covers being suitably sized to be provided on
the exposed surface of a handheld electronic product, and each
of the glass covers having a thickness that is less than 1 mm;
chemically pre-treating the glass covers in a preliminary
cleansing bath to cleanse the glass covers prior to chemically
strengthening the glass covers;
chemically strengthening the glass covers;
cleansing the glass covers in an intermediate cleansing
bath after chemically strengthening the glass covers; and
subsequently chemically toughening the glass covers.
1 According to the Appellants, the Real Party in Interest is Apple Inc.
(Appeal Brief filed May 6, 2016, hereinafter “Appeal Br.,” 1.)
2 Claims 11 and 14—30 have been canceled. (See Appeal Br. 1.)
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THE REJECTIONS
I. The Examiner rejected claims 1—10, 12, 13, and 31—40 under 35
U.S.C. § 103(a) obvious over Allan,3 Brown,4 Tachiwana,5 and
Isono.6
II. The Examiner rejected claim 12 under 35 U.S.C. § 103(a)
obvious over Allan, Brown, Tachiwana, Isono, Eto,7 and
Davidson.8
III. The Examiner rejected claims 13 and 32—38 under 35 U.S.C.
§ 103(a) obvious over Allan, Brown, Tachiwana, Isono, and
Ellison.9
IV. The Examiner rejected claim 31 under 35 U.S.C. § 103(a)
obvious over Allan, Brown, Tachiwana, Isono, Ellison, Eto, and
Davidson.
(Final Rejection mailed October 8, 2015, hereinafter “Final”;
Examiner’s Answer mailed October 11, 2016, hereinafter “Ans.”)
Rejection I
We confine our discussion to appealed claims 1, 6, and 7, which
contain claim limitations representative of the arguments made by
Appellants, pursuant to 37 C.F.R. § 41.37(c)(l)(iv).
3 US 2010/0009154 Al, published January 14, 2010.
4 US 6,325,704 Bl, issued December 4, 2001.
5 EP 2 036 867 Al, published March 18, 2009.
6 US 2007/0003796 Al, published January 4, 2007.
7 US 2004/0163414 Al, published August 26, 2004.
8 US 2005/0193772 Al, published September 8, 2005.
9 US 2008/0286548 Al, published November 20, 2008.
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Application 13/121,385
Claim 1
The Examiner found that Allan discloses glass used in consumer
products, including electronic devices and cover plates, where the glass is
subject to multiple ion exchange processes, the first ion exchange process
corresponding to the chemically strengthening step recited in the claims, and
the second ion exchange process corresponding to the chemically
toughening step recited in the claims. (Final 3.) The Examiner found that
Allan fails to disclose the step of singulating a glass sheet as recited in the
claims. (Id.) The Examiner found that Brown discloses a manufacturing
process for glass flat panel display substrates that require sizing including
scoring, grinding, and polishing of the edges of glass sheets to improve
strength and edge quality. (Id.) The Examiner concluded that one of
ordinary skill in the art would have found it obvious to have strengthened a
plurality of covers obtained from singulating a glass sheet into a plurality of
covers prior to chemical strengthening. (Id. at 3—4.)
The Examiner found also that Allan fails to disclose chemically pre­
treating the glass in a preliminary cleansing bath prior to chemically
strengthening the glass covers. (Id. at 4.) The Examiner found that, in view
of Brown’s disclosure of cutting, grinding, and polishing a glass sheet for
sizing and strength, which would leave debris and particles, it would have
been obvious to have added a cleaning process prior to chemical
strengthening the glass. (Id.) The Examiner pointed to Tachiwana as
evidence that it was known to remove foreign matter on glass substrates in a
cleaning process prior to chemical strengthening. (Id.) The Examiner
further cited to Isono as evidence that the use of a bath in cleaning processes
is well known. (Id. at 4—5.) The Examiner further found that Allan
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discloses washing in order to avoid contamination between chemical
strengthening and toughening, such that it would have been obvious to have
employed a cleansing bath in order to perform cleaning of the glass
substrate. {Id. at 5.)
Issue
Appellants contend that one of ordinary skill in the art in looking to
strengthen glass by chemical strengthening would not look to Brown,
because Brown discloses grinding and polishing glass edges and not
chemically strengthening glass edges. (Appeal Br. 6.) Appellants argue that
even if combined, Allan and Brown would only result in chemical
strengthening of the glass sheet, which would then be scored, grinded, and
polished. {Id.) Appellants contend that because Allan uses glass sheets that
do not need to be grinded or polished, no pretreating of the glass sheet would
be necessary. {Id. at 7.) Appellants argue also that Tachiwana discloses
magnetic disks formed of glass, which is not analogous to a glass cover for a
consumer electronic product, because the surface smoothness of magnetic
disks is not relevant to the glass strengthening of Allan or edge finishing as
taught in Brown. {Id. at 7—8.)
Accordingly, the dispositive issue is:
Have Appellants shown that the Examiner reversibly erred in
determining that the combination of Allan, Brown, Tachiwana, and Isono
renders obvious the method of producing a glass cover claimed in claim 1?
Analysis
We are not persuaded by Appellants’ argument that the combination
of prior art cited by the Examiner does not render claim 1 obvious. In
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particular, we agree with the Examiner that, rather than addressing the prior
art as a whole, Appellants focus on the individual teachings of each of the
references. (Ans. 3.) In responding to aprima facie case of obviousness,
one cannot show nonobviousness by attacking references individually where
the rejections are based on combinations of references. In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
That is, as discussed above, the Examiner acknowledged that Allan
does not disclose the singulating step recited in claim 1, and relied on Brown
for that missing step. In arguing that one of ordinary skill in the art would
not have turned to Brown for strengthening glass edges chemically,
Appellants do not address the Examiner’s reasoning. The Examiner’s
reference to Brown is for techniques that would be used by one of ordinary
skill in the art in singulating glass sheets in order to effectuate the end uses
disclosed in Allan. (Ans. 3—5.) Indeed, Brown discloses that in
manufacturing specific sized glass substrates, the edges of the glass sheets
can be finished by grinding and polishing the glass sheet edges. (Brown col.
2,11. 8—13, 30-52.) Thus, whether Brown discloses chemical strengthening
is not indicative of error on the part of the Examiner, as Brown provides
further details on preparing glass sheets for particular uses as disclosed in
Allan (114).
In addition, we do not agree with Appellants that combining Allan and
Brown would necessarily result in singulating the glass sheet after the
chemical strengthening process has been performed. Appellants have not
provided any persuasive evidence that one of ordinary skill in the art
necessarily would have to perform the steps of the combination of Allan and
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Brown in the order argued by Appellants. Similarly, the idea that Allan
would not require pre-treating because Allan does not use glass sheets that
need to be grinded or polished does not account for the Examiner’s rejection
as a whole and the steps that one of ordinary skill in the art would use to
produce suitably sized glass covers for the end uses disclosed in Allan.
(Allan 1114, 18.)
We are also not persuaded by Appellants’ argument that Tachiwana is
non-analogous art.
Two criteria are relevant in determining whether prior art
is analogous: “(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir.
2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir.
1992)). Whether a reference in the prior art is “analogous” is a
fact question. In re Clay, 966 F.2d at 658.
Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
We agree with the Examiner that Tachiwana is in the field of
Appellants’ endeavor as involving processes related to the chemical
strengthening of glass, and includes cleansing the glass prior to chemical
strengthening. (Ans. 7; Tachiwana H 12, 182, 185.)
We observe also that Tachiwana is concerned with the strength of
glass substrates, and the use of chemical strengthening to strengthen glass
substrates, flflf 3, 182.) Similarly, Appellants are also concerned with
chemical strengthening of glass substrates. (Spec. 1 6.)
Accordingly, we are not persuaded that Tachiwana is non-analogous
art.
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As a result, we affirm the Examiner’s rejection of claim 1.
Claim 6
Claim 6 is reproduced below.
A method as recited in claim 1,
wherein the chemically strengthening of the glass covers produces an
initial compressive surface stress of the glass covers, and
wherein the chemically toughening of the glass covers limits
reduction of the initial compressive surface stress relative to a predetermined
compressive limit, so as to produce a reduced compressive surface stress that
remains substantially greater than the predetermined compressive limit.
(Appeal Br., Claims Appendix, A2.)
The Examiner found that Allan discloses that immersion in sodium
nitrate, which corresponds to chemical toughening, reduces the integrated
compressive stress. (Final 6, citing Allan 131.) The Examiner stated that in
order to reduce the compressive stress, an initial compressive stress must
have been present after the chemical strengthening treatment. (Final 6.) The
Examiner found that Allan fails to disclose a reduced compressive stress that
remains substantially greater than a predetermined compressive limit. (Id.)
The Examiner further found that Allan discloses that the multiple ion
exchange method disclosed therein may be used to produce a desired level
or profile of compressive stress in glass. (Id.) The Examiner concluded that
it would have been obvious that the reduced compressive stress can be
substantially greater than a predetermined compressive limit in view of
Allan’s disclosure. (Id.)
Appellants contend that the Examiner has alleged that the
compressive stress recitations in claim 6 are inherent, such that the
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Examiner’s rejection, which is based on obviousness is improperly based on
hindsight. (Appeal Br. 6—7.)
We are not persuaded by Appellants’ argument. The Examiner’s
rejection is not based on inherency, but, rather, the ability of one of ordinary
skill in the art to adjust the compressive properties as desired in view of the
recognition in Allan that such properties can be controlled as a result of the
ion exchange treatments. (Ans. 8—9; Allan 131.) Thus, contrary to
Appellants’ contentions, the Examiner provided a rationale that is supported
by the references, and did not rely on hindsight.
Accordingly, we affirm the Examiner’s rejection of claim 6.
Claim 7
Claim 7 is reproduced below:
7. A method as recited in claim 1,
wherein the chemically strengthening of the glass covers produces an
initial central tension in the glass covers, and
wherein the chemically toughening the glass covers reduces the initial
central tension in the glass covers to a reduced central tension.
(Appeal Br., Claims Appendix, A-3.)
The Examiner found that Allan’s disclosure with respect to reducing
the integrated compressive stress, which would also lower the integrated
central tension, meets the limitations in claim 7, because in order to reduce
the central tension, an initial central tension must have been present after
immersion in the first ion exchange bath. (Final 6—7.)
Appellants contend that Allan is silent as to the central tension of the
glass covers, and only generally states that the time the glass is immersed in
the potassium nitrate salt bath produces a much deeper layer of compressive
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stress and that the brief exchange in the sodium nitrate bath reduces the
integrated compressive stress and lowers the integrated central tension.
(Appeal Br. 12—13, citing Allan 131.)
We are not persuaded by Appellants’ argument. Allan specifically
discloses lowering the central tension. (Ans. 9-11; Allan 131.) Appellants’
argument does not adequately explain the source of any error on the part of
the Examiner.
Accordingly, we affirm the Examiner’s rejection of claim 7.
Rejection III
Claim 13 is similar to claim 1, and additionally recites, inter alia,
“preheating the glass covers to limit thermal shock to the glass covers in
chemically strengthening the glass covers.”
The Examiner found that Allan discloses pre-heating to avoid thermal
shock during immersion in the molten bath for the second ion exchange
treatment. (Final 11, citing Allan 123.) The Examiner stated that one of
ordinary skill in the art would have recognized that pre-heating could also be
applied to the first chemical strengthening treatment, because both chemical
treatments are at high temperatures. (Final 11—12.) Thus, the Examiner
concluded that it would have been obvious to have modified the process of
Allan to pre-heat the glass prior to the first ion exchange process to avoid
thermal shock. (Id. at 12.)
Appellants present similar arguments for claim 13 as for claim 1.
(Appeal Br. 15—19.) Appellants additionally argue that Allan fails to
disclose pre-heating the glass sheet prior to the first chemical treatment. (Id.
at 20.) Appellants argue that there is no reasonable rationale for modifying
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the process of Allan to pre-heat the glass prior to the first ion exchange
process, especially since it is not taught or suggested in Allan, therefore the
Examiner’s rejection is based on hindsight. (Id.)
Appellants’ argument does not adequately address the Examiner’s
reasoning. Although Allan does not expressly disclose pre-heating prior to
the first chemical strengthening treatment, the Examiner has provided a
rational basis to explain the reasoning for the rejection, i.e., the fact that both
treatments in Allan occur at high temperature. (Ans. 16—17; Allan 131.) In
this regard, Allan discloses that both the first ion exchange treatment with
potassium nitrate and the second ion exchange treatment performed with
sodium nitrate are performed at 410°C. (Allan ^31.) In addition, Allan
discloses that the example in which there is pre-heating to avoid thermal
shock between the first and second strengthening steps is a non-limiting
example. (Id. 123.)
Accordingly, we are not persuaded by Appellants’ arguments. We
affirm the Examiner’s rejection of claim 13. Appellants do not present
separate arguments for claims 32—38. (Appeal Br. 21—23.) Therefore, we
affirm the Examiner’s rejection of claims 32—38 for the same reasons.
Rejections II and IV
Appellants do not present separate arguments for the Examiner’s
rejections of claims 12 and 31, but, rather, rely on the dependency of these
claims from claims 1 and 13, respectively. (Appeal Br. 15, 23.)
Accordingly, we affirm the Examiner’s rejections of claims 12 and 31 for
the reasons discussed above with respect to claims 1 and 13.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—10, 12, 13, and
31—40 under 35 U.S.C. § 103(a).
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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