Guardian Glass, LLC

Patent Trials and Appeals Board

Oct 1, 2020

13835278 - (D) (P.T.A.B. Oct. 1, 2020)

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.
13/835,278 03/15/2013 Vijayen S. VEERASAMY JAR-3691-2864 2793
124194 7590 10/01/2020
Guardian Glass, LLC (Nixon)
c/o KCPS IP Dept./Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
EXAMINER
ROLLAND, ALEX A
ART UNIT PAPER NUMBER
1796
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
koch_pair@firsttofile.com
pair_nixon@firsttofile.com
ptomail@nixonvan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VIJAYEN S. VEERASAMY
____________

Appeal 2019-006866
Application 13/835,278
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to finally reject claims 1–11, 13–20, 28, and 31–37, which are all of
the claims pending in this application.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed Mar. 15, 2018 (“Spec.”);
Final Office Action dated Sept. 4, 2018 (“Final Act.”); Advisory Action
dated Jan. 15, 2019 (“Advisory Act.”); Appeal Brief filed Apr. 4, 2019
(“Appeal Br.”); Examiner’s Answer dated July 23, 2019 (“Ans.”); and Reply
Brief filed Sept. 23, 2019 (“Reply Br. “).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Guardian Glass, LLC as the real party
in interest. Appeal Br. 3.
3 Claims 12, 21–27, 29, 30, and 38 are cancelled. See Claims Listing filed
Jan. 4, 2019; Appeal Br. 9.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates to anti-reflective (AR) coatings and methods of
making the same and, more particularly, to coated articles, including
broadband and omnidirectional AR transparent coatings and methods of
making the same. Spec. ¶¶ 1, 7; Abstract. Claim 1 illustrates the subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief:
1. A method of making a coated article comprising an
antireflective (AR) coating supported by a glass substrate, the
method comprising:
dispensing a solution onto at least one major surface of the
glass substrate;
drying the solution at a first temperature;
forming Benard cells and/or allowing Benard cells to
form during the dispensing and/or drying, the Benard cells
causing nanostructures to self-assemble on the at least one
major surface of the glass substrate in accordance with a desired
template, the desired template exhibiting waveguide modes
that approximate:
(a) a transverse magnetic (TMz) mode in which
, and/or
(b) a transverse electric (TEz) mode in which
,
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where , and ; and
curing at least a part of the solution at a second
temperature that is higher than the first temperature in forming
the AR coating.
Appeal Br. 23 (key disputed claim language italicized and bolded).
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:4
1. Claims 1–11, 13–20, 28, and 31–37 are rejected under 35
U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or for pre-AIA, the applicant regards as the
invention. (“Rejection 1”). Final Act. 4.
2. Claims 1–11, 13–20, 28, and 31–37 are rejected under 35
U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to
comply with the enablement requirement (“Rejection 2”). Final Act. 3.
OPINION
Rejection 1
The Examiner rejects claims 1–11, 13–20, 28, and 31–37 under 35
U.S.C. § 112 for indefiniteness. Ans. 3–5; Final Act. 4. Appellant presents
argument for the patentability of claims 1–11, 13–20, 28, and 31–37 as a

4 The Examiner’s rejections of claims 1–11, 13–20, 28, and 31–37 under
pre-AIA 35 U.S.C. § 103(a) (Final Act. 5–10) are withdrawn at page 3 of the
Answer.
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group. Appeal Br. 15. We select claim 1 as representative and claims 2–11,
13–20, 28, and 31–37 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the “desired template exhibiting
waveguide modes that approximate” recitation of claim 1 is indefinite
because it is unclear what the phrase means when read in light of
Appellant’s Specification and whether one of ordinary skill in the art would
understand what is being claimed. Ans. 4 (determining “the criteria and
determination of approximate equations is unclear”), 5 (explaining “one of
ordinary skill would not have known how to determine if the equations are
approximated or not”); Final Act. 4 (determining “claim 1 merely requires
the template exhibit waveguide modes that approximate the claimed
equations”).
The test for definiteness under 35 U.S.C. § 112 is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
Appellant argues the Examiner rejection of claim 1 should be reversed
because one of ordinary skill in the art at the time of the invention would
have recognized and understood the meaning of that claim language. Appeal
Br. 15–16; Reply Br. 1–5. In particular, Appellant contends that, when read
in light of the Specification, “those skilled in the art would have no difficulty
determining whether a real-life structure approximates [the claimed]
template.” Appeal Br. 16 (citing Spec. ¶ 73); see also Reply Br. 5 (arguing
those skilled in the art “would understand that the structures formed
approximate the mathematical equations when the guidance of paragraph 73
[of the Specification] . . . is taken into account”). Appellant further contends
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that paragraph 44 and Figure 4 “provide a standard for measuring the
meaning of the term” and “an objective example of how this language could
be met.” Appeal Br. 16. Appellant also contends the Examiner’s rejection
relates to the breadth of the claims and not to indefiniteness. Id.
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection. Rather, on this appeal record and based on the
fact-finding and reasons the Examiner provides at pages 3–5 of the Answer
and page 4 of the Final Office Action, which a preponderance of the
evidence supports, we agree with the Examiner that claim 1 is indefinite. In
particular, on this appeal record, we determine the meaning of the “desired
template exhibiting waveguide modes that approximate” recitation of the
claim is indefinite because it is subject to multiple plausible interpretations
and unclear what is actually claimed when read in light of Appellant’s
Specification. See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential) (“[I]f a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim unpatentable under 35 U.S.C. § 112 2nd paragraph, as
indefinite.”).
Although the portions of the Specification Appellant identifies and
principally relies on to show that the claim language is not indefinite
describe certain embodiments where some nanostructures may meet the
claimed criteria (see Spec. ¶¶ 44, 73, Fig. 4), they do not sufficiently specify
or make clear what exactly the phrase “desired template exhibiting
waveguide modes that approximate” means or what one of ordinary skill in
the art would understand it to mean.
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Paragraph 73 of the Specification, for example, states:
It is noted that certain example embodiments may not
achieve the exact structure indicated by these equations. Thus,
although certain example embodiments are described as
providing nanostructures that meet these criteria, approximate
these equations, and/or are formed “in accordance” with the
equations, it will be appreciated that an exact match is not
required. Instead, there may be some tolerance for at least
manufacturing variations, incidental or deviations, etc. In some
situations, nanostructures may meet these criteria, approximate
these equations, and/or be formed “in accordance” with the
equations, provided that they serve the same or similar functions
/ provide a performance boost (e.g., in terms of visible
transmission gain and/or reflection reduction) as set forth herein.
Spec. 20.
Absent more, we are not persuaded this description sheds any light or
provides any meaningful clarification as to the meaning of the phrase
“desired template exhibiting waveguide modes that approximate” sufficient
for one of ordinary skill in the art to understand what is actually being
claimed. The other portions of the Specification Appellant identifies and
relies on in response to the Examiner’s rejection in this regard (see Spec. ¶
44, Fig. 4) are equally unpersuasive because they, too, merely describe
specific embodiments, and we decline to read the limitations of specific
embodiments from the Specification into the claims because the claim
language is broader than the embodiments.
Accordingly, we affirm the Examiner’s rejection of claims 1–11,
13–20, 28, and 31–37 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112
(pre-AIA), second paragraph, for indefiniteness.
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Rejection 2
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we reverse the Examiner’s
rejection of claims 1–11, 13–20, 28, and 31–37 under 35 U.S.C. § 112 for
non-enablement for essentially the reasons Appellant provides at pages 9–14
of the Appeal Brief and 6–7 of the Reply Brief, and set forth below.
The Examiner rejects claims 1–11, 13–20, 28, and 31–37 under 35
U.S.C. § 112 for non-enablement. Final Act. 3–4. The Examiner contends
Appellant’s Specification does not teach “how to produce a template
exhibiting the claimed transverse magnetic and electric mode equations” in
such a way to enable one of ordinary skill in the art to make and use the
claimed invention and that undue experimentation would be required. Id.
at 3.
For an enablement rejection, the PTO must “set[] forth a reasonable
explanation as to why it believes that the scope of protection provided by
that claim is not adequately enabled by the description of the invention.” In
re Wright, 999 F.2d 1557, 1561–62 (Fed. Cir. 1993). “[T]o be enabling, the
specification of a patent must teach those skilled in the art how to make and
use the full scope of the claimed invention without ‘undue
experimentation.”’ Id. at 1561. Some experimentation, however, even a
considerable amount, is not “undue” if it is merely routine, or if the
specification provides a reasonable amount of guidance as to the direction in
which the experimentation should proceed. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988).
Appellant argues the Examiner’s rejection should be reversed because
the Examiner has not adequately explained or identified evidence sufficient
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to support a determination of non-enablement. Appeal Br. 9–14; Reply
Br. 6–7. Appellant maintains that, in contrast to the Examiner’s rejection, the
Specification, read as a whole, does provide sufficient guidance and
description such that those skilled in the art would be able to make and use
the claimed invention and would be able to do so without undue
experimentation. Appel Br. 14; Reply Br. 7.
The weight of the evidence supports Appellant’s argument. On this
appeal record, we are not persuaded the Examiner adequately explains or
direct us to evidence in the record sufficient to establish that the claims are
not enabled. The Examiner’s statements at pages 3–4 of the Final Action are
conclusory and, without more, are insufficient to support the Examiner’s
rejection. The Examiner’s assertions that there are no working examples
(Final Act. 4; Ans. 6) are not persuasive because the fact that the
Specification may not provide working examples, without more, does not
establish or necessarily mean that the Specification would not have enabled
a person skilled in the art to practice the invention commensurate in scope
with the claims.
We are also not persuaded the Examiner provides sufficient analysis
of the factors in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) to show
that undue experimentation would have been required to make or use the
claimed invention. See Final Act. 3–4; Ans. 6–7. For example, although the
Examiner asserts that the quantity of experimentation needed to make or use
Appellant’s claimed invention is “unduly large” (Final Act. 4; Ans. 6), the
Examiner does not provide any meaningful analysis or identify persuasive
evidence in the record to adequately support that assertion.
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In contrast, at pages 9–14 of the Appeal Brief and pages 6–7 of the
Reply Brief, Appellant provides a fairly detailed analysis and identifies
evidence, including specific citations to disclosures in the Specification to
show that, based on those disclosures, the Specification provides guidance
and direction sufficient for one ordinary skill in the art to make and use the
claimed invention and that undue experimentation would not be required
(analyzing the Wands factors and citing Spec. ¶¶ 33, 38, 39, 40–45, 49, 50,
53, 54, 55–60, 61–66, Figs. 3a, 3b, 4). We find a preponderance of the
evidence supports Appellant’s contentions in this regard.
Accordingly, we reverse the Examiner’s rejection of claims 1–11,
13–20, 28, and 31–37 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, for failing to comply with the enablement
requirement.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11,
13–20, 28,
31–37
112 indefiniteness 1–11,
13–20, 28,
31–37

1–11,
13–20, 28,
31–37
112 enablement 1–11,
13–20, 28,
31–37
Overall
Outcome
1–11,
13–20, 28,
31–37

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (1)(iv).
AFFIRMED