Guardian Glass, LLC

Patent Trials and Appeals Board

Sep 30, 2020

2019007004 (P.T.A.B. Sep. 30, 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.
14/816,697 08/03/2015 Guizhen Zhang JAR-3691-3950 4133
124194 7590 09/30/2020
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
09/30/2020 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 GUIZHEN ZHANG, JEREMY CHENG,
GUOWEN DING, MINH HUU LE,
DANIEL SCHWEIGERT, and YU WANG
____________
Appeal 2019-007004
Application 14/816,697
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 30–38 of Application 14/816,697. We
have jurisdiction under 35 U.S.C. § 6(b).

1 In our Decision, we refer to the Specification (“Spec.”) of Application
14/816,697 (“the ’697 Application”) filed Aug. 3, 2015; the Final Office
Action dated Sept. 11, 2018 (“Final Act.”); the Appeal Brief filed Apr. 15,
2019 (“Appeal Br.”); the Examiner’s Answer dated July 31, 2019 (“Ans.”);
and the Reply Brief filed Sept. 27, 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.
Appeal 2019-007004
Application 14/816,697
2
For the reasons set forth below, we REVERSE.
STATEMENT OF THE CASE
The ’697 Application describes the development of materials for
barrier layers used to protect silver reflective coatings. Spec. ¶ 2. The ’697
Application describes that silver is very sensitive to and can be easily
oxidized by oxygen. Id. ¶ 34. The barrier layer prevents oxygen from
reaching the silver layer through diffusion blocking characteristics. Id. ¶ 35.
In particular, the ’697 Application describes quaternary alloys, in a barrier
layer, said to demonstrate superior transmission and emissivity performance
relative to conventional binary alloys. Id. ¶¶ 37, 38.
Claims 30 and 38, representative of the ’697 Application’s claims, are
reproduced below from the Claims Appendix of the Appeal Brief.
30. A method of making a coated article, the method
comprising:
providing a glass substrate;
forming a first dielectric layer on the glass substrate;
sputter-depositing an infrared (IR) reflective layer
comprising silver on the glass substrate, over at least the first
dielectric layer;
sputter-depositing a barrier layer on the glass substrate,
and over and directly on the IR reflective layer comprising
silver, wherein metal content of the barrier layer consists
essentially of nickel, chromium, titanium, and aluminum,
wherein the barrier layer contains by weight from 5–20%
nickel, from 15–40% chromium, from 20–40% titanium, and
from 20–40% aluminum;
sputter-depositing a second dielectric layer on the glass
substrate, over and directly contacting the barrier layer.
38. A method of making a coated article, the method
comprising:
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Application 14/816,697
3
providing a glass substrate;
forming a first dielectric layer on the glass substrate;
sputter-depositing an infrared (IR) reflective layer
comprising silver on the glass substrate, over at least the first
dielectric layer;
sputter-depositing a barrier layer on the glass substrate,
and over and directly on the IR reflective layer comprising
silver, wherein metal content of the barrier layer comprises, by
weight, from 5–20% nickel, from 15–40% chromium, from 20–
40% titanium, and from 20–40% aluminum;
sputter-depositing a second dielectric layer on the glass
substrate, over and directly contacting the barrier layer.
REFERENCE
The Examiner relies on US 2008/0187692 A1 to Roquiny et al.,
issued Aug. 7, 2008 (“Roquiny”) in rejecting the claims on appeal.
REJECTION
On appeal, the Examiner maintains the rejection of claims 30–38
under 35 U.S.C. § 103(a) as obvious over Roquiny.3 Final Act. 3–4.4

3 Because this application was filed before the March 16, 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
4 The Final Office Action indicates that claim 37 has been withdrawn from
consideration as being directed to a non-elected invention. Final Act. 2.
However, the Examiner’s statement of the rejection includes claim 37 (id. at
3) and there is a substantive rejection of claim 37 included in the Final
Office Action and the Answer (id. at 4; Ans. 3). We assume, therefore, that
claim 37 is subject to present appeal.
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Application 14/816,697
4
DISCUSSION
Rejection of Claims 30–38 as obvious over Roquiny
The Examiner finds that Roquiny teaches or suggests the limitations
of claims 30–38, including the barrier layer’s four metals and each of their
requisite amounts. Final Act. 3–4.
Appellant argues for patentability based on limitations recited in
independent claims 30 and 38. See Appeal Br. 7–14; Reply Br. 2–7.
a) Claim 30
Appellant argues that the § 103(a) rejection over Roquiny should be
reversed because the “subject matter of claim 30 is not found in Roquiny.”
Appeal Br. 8. Appellant argues that the claimed barrier layer’s metal
content “is restricted to the four identified materials” of nickel, chromium,
titanium, and aluminum. Id.
We reverse for the reasons set forth in Appellant’s Appeal and Reply
Briefs. We add the following for emphasis.
The Examiner finds that Roquiny’s “barrier layer comprises nickel,
chromium, titanium, aluminum, and mixtures or alloys thereof.” Final Act.
3 (citing Roquiny ¶ 25). According to the Examiner, the phrase “consists
essentially of,” as recited in claim 30, is construed as having the same scope
as “comprising” because both the Specification and claim 30 lack “an
indication of [what] the basic and novel characteristics” are. Final Act. 3. In
response to Appellant’s arguments, the Examiner argues that the ’697
Application includes a variety of embodiments that are not the claimed
quaternary alloys. Ans. 3.
We disagree with the Examiner’s finding. See Reply Br. 2–3. In our
view, the Examiner’s construction of the phrase “consists essentially of” as
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Application 14/816,697
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having the same meaning as “comprising” is unreasonable because the
Specification emphasizes the superior performance of quaternary alloys as
oxygen barrier layers relative to conventional binary alloys. Spec. ¶¶ 37, 38;
Figs. 5, 6. We agree with Appellant that “[t]he basic and novel properties
referenced by the ‘consists essentially of’ language in claim 30 clearly refer
to the metal content.” Appeal Br. 13.
In view of the proper claim construction, Roquiny does not describe
or suggest a barrier layer which is limited to nickel, chromium, titanium, and
aluminum. The portion of Roquiny relied upon by the Examiner expressly
describes four additional metals, i.e., Nb, Ta, Zn, and Cu, which are suitable
for Roquiny’s method, but are excluded from the scope of the presently
claimed subject matter. See Roquiny ¶ 25. On this basis, the Examiner errs
reversibly in determining claim 30 to be obvious over Roquiny. Therefore,
we do not sustain the rejection of claim 30. For the same reasons, we do not
sustain the rejection of claims 31–37, which depend from claim 30.
b) Claim 38
The Examiner finds that Roquiny does not explicitly disclose “the
particular weight amounts of the components in the alloy,” as required by
claim 38. Final Act. 3.
The Examiner, however, finds that Roquiny teaches that the barrier
layer’s components “are selected to protect the underlying silver-based
reflection layer” as “the barrier layer [is] more readily oxidizing than the
silver layer.” Id. 3–4, (citing Roquiny ¶ 25). The Examiner determines that
it would have been obvious to one of ordinary skill in the art at the time of
the invention “to routinely optimize the relative amounts of components in
the alloy” because the ratio of alloy components “are a result effective
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variable.” Final Act. 4. According to the Examiner, varying the relative
metal content has “the art recognized effect of tuning the sacrificial nature of
the barrier layer to effectively protect the silver layer.” Id.
Appellant argues that there is “no disclosure in Roquiny of combining
Ni, Cr, Ti, and Al” in the barrier layer, nor the layer’s relative metal
amounts. See Appeal Br. 10. Although Roquiny teaches forming a barrier
layer having 80% Ni and 20% Cr, Appellant contends that there is no
teaching or suggestion as to why one of ordinary skill in the art would have
been motivated “to reallocate that 80% [Ni] down to the claimed level” (i.e.,
5–20% Ni). Id. at 12. Appellant argues that Roquiny is also silent as to why
an ordinarily skilled artisan would have “reallocate[d] [Ni] to Ti and Al,
much less to Ti and Al in the claimed amounts (especially since the presence
of Ti and Al have not been established).” Id.
We agree with the Examiner’s statement regarding the obviousness of
discovering an optimum value for a result effective variable. “[D]iscovery
of an optimum value of a result effective variable in a known process is
ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980); see also In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”). The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims. It is well settled that, generally speaking, it
would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters.
However, the law requires “[a] recognition in the prior art that a
property is affected by the variable” to find the variable result-effective. In
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Application 14/816,697
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re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Although
optimization of a variable known to be result effective is generally prima
facie obvious, as the predecessor to our reviewing court explained over
thirty years ago, where “the parameter optimized was not recognized to be a
result-effective variable” is an exception. See In re Antonie, 559 F.2d 618,
620 (CCPA 1977).
On the facts before us, we find nothing to indicate the ratio of the
metals in the barrier alloy was known to be a result-effective variable. On
this basis, the Examiner erred reversibly in determining claim 38 to be
obvious over Roquiny. Therefore, we do not sustain the rejection of claim
38.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
30–38 103(a) Roquiny 30–38
REVERSED