Michele Fredholm et al.

Patent Trials and Appeals Board

Jul 10, 2020

2019002299 (P.T.A.B. Jul. 10, 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.
14/621,608 02/13/2015 Michele Fredholm SP14-035 9008
22928 7590 07/10/2020
CORNING INCORPORATED
SP-TI-3-1
CORNING, NY 14831
EXAMINER
HOFFMANN, JOHN M
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
07/10/2020 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):
usdocket@corning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELE FREDHOLM, LAURENT JOUBAUD, and
STEPHANE POISSY1
____________

Appeal 2019-002299
Application 14/621,608
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 13–22. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to mechanisms for bending glass.
E.g., Spec. ¶ 4; Claim 13. Claim 13 is reproduced below from page 19
(Claims Appendix) of the Appeal Brief:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Corning Incorporated. Appeal Br. 1.
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13. A mechanism for bending thin glass comprising:
a seating device;
a mold configured to bend a substrate to a desired shape when
the substrate is on the seating device; and
a programmable counterweight system configured to control a
force of the mold on the seating device based upon at least one
of a pressure profile, a force profile, and a temperature profile,
the programmable counterweight system comprising:
a first adjustable counterweight configured to apply a first
counterweight force to a first portion of the mold; and
a second adjustable counterweight configured to apply a
counterweight force to a second portion of the mold, wherein the
first adjustable counterweight and second adjustable
counterweight are independently controllable such that the first
counterweight force is controlled independently of the second
counterweight force.
ANALYSIS
Claims 13–22 stand rejected under 35 U.S.C. § 103 as unpatentable
over Mumford (US 5,900,034, issued May 4, 1999), Frank (US 4,501,603,
issued Feb. 26, 1985), and Blausey (US 4,071,344, issued Jan. 31, 1978).2
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejection.
Accordingly, we affirm the rejection for reasons set forth below, in the Final
Action dated May 15, 2018, and in the Examiner’s Answer.
In the Appeal Brief, the Appellant includes separate sections for
independent claims 13 and 20. We address those claims below. The

2 In the Examiner’s Answer, the Examiner withdraws rejections under 35
U.S.C. § 112(a) and (b). Ans. 4.
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remaining claims on appeal are not separately argued and will stand or fall
with the independent claim from which they depend. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 13. The Examiner’s statement of the rejection appears at pages
4–10 of the Final Action. Of particular relevance to the issues raised by the
Appellant in this appeal, and with reference to Figure 14 of Mumford, the
Examiner finds that Mumford teaches a mechanism for bending glass
comprising, inter alia, “counterweights 246” that “are adjustable by
[adjusters] 316,” and that “[t]he counterweights can be adjusted
independently of each other.” Final Act. 6. Thus, the Examiner finds that
Mumford teaches first and second “adjustable counterweight[s]” that are
“independently controllable,” as required by claim 13. Id.
As to the requirement of claim 13 that the counterweight system is
“configured to control a force of the mold on the seating device based upon
at least one of a pressure profile, a force profile, and a temperature profile,”
the Examiner finds that the basis upon which the counterweight system is
adjusted or configured is an “intended use” that concerns the manner of
operating the apparatus and, therefore, cannot structurally distinguish the
apparatus of claim 13 from the apparatus of the combined prior art. Id. at 8–
9.
In view of those and other findings less relevant to the issues raised by
the Appellant, the Examiner concludes that the subject matter of claim 13
would have been obvious to a person of ordinary skill in the art.
The Appellant argues that Mumford does not teach “independently
controllable first and second counterweight forces” because Mumford
discloses a single drive motor 288 and a single gas cylinder 274 “that
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appear[] to provide counterbalancing to all of the four vertical connector
rods 248 through [a] single component, which means that Mumford does not
disclose independent control of two counterweight forces.” Appeal Br. 11–
12. The Appellant argues that “Mumford does not disclose that the[]
adjusters 316 are used for independent control of the counterweight forces,
and indeed, even if the adjusters 316 allowed for different counterweight
forces to be applied (which is also not disclosed in Mumford), all four
counterweight forces are still applied with each other at the same time
through a single actuating mechanism.” Id. at 13.
The Appellant’s argument is not persuasive of reversible error in the
Examiner’s rejection. As an initial matter, we observe that the Appellant
does not appear to dispute the Examiner’s finding that what Mumford
describes as “connectors” 246, see, e.g., Mumford Figs. 14 & 15, correspond
to the claimed counterweights. See generally Appeal Br.; see also Ans. 9
(observing that the Appellant does not dispute the Examiner’s determination
that connectors 246 constitute counterweights). Accordingly, we accept as
uncontested the Examiner’s finding that Mumford’s connectors 246
constitute counterweights.
As the Examiner emphasizes in the Answer, the Examiner relies on
adjusters 316 as providing independent control of those counterweights.
Ans. 10. The Examiner finds that, by using the adjusters 316 to shorten or
lengthen the counterweights, the force of the counterweight is altered. Id.
(“A shortening of one adjuster 316 will cause the assembly 28 and mold 38
to rack and thus change the magnitude of the force acting on the mold.”).
That finding is consistent with Mumford itself, which explains, “each
connector 246 includes an adjuster 316 for adjusting its length.” Mumford
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at 13:3–5; see also Fig. 15 (showing that each connector 246 has its own
associated adjuster 316). Accordingly, we determine that a preponderance
of the evidence supports the Examiner’s determination that Mumford
discloses first and second adjustable counterweights that are independently
controllable. That Mumford discloses only a single drive motor and gas
cylinder that apparently would control all of the connectors 246 at the same
time, see Appeal Br. 11–12, does not indicate error in the Examiner’s
findings concerning the interaction between Mumford’s adjusters 316 and
connectors 246. See Ans. 12–13 (“It may be that the Appellant is arguing
that one could not adjust/control a single counterweight during the actuating
of press cycle. The language of the claim is not limited to independent
control during the press cycle.”).
In the Reply Brief, the Appellant does not persuasively contest the
Examiner’s finding that adjusters 316 are structurally capable of
independently controlling counterweights 246. Instead, the Appellant argues
that “the Examiner has failed to provide any reason why a person of ordinary
skill in the art would independently adjust the adjusters 316.” Reply Br. 6
(emphasis in original). That argument is not persuasive. Claim 13 is
directed to an apparatus. For apparatus claims, what is relevant is whether
the combined prior art teaches or suggests a structure that falls within the
scope of the claim. See Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device
is, not what a device does.”). As set forth above, the Appellant has not
identified error in the Examiner’s relevant findings about the structure of the
combined prior art. Arguments about how a person of ordinary skill in the
art may have chosen to use that structure, e.g., whether a person of ordinary
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skill would have independently adjusted the adjusters 316, fail to show
reversible error in the rejection.
In the Reply Brief, the Appellant also raises arguments about the
Examiner’s interpretation of the term “counterweight force.” See Reply
Br. 2–4. However, even assuming we were to agree with the Appellant that
the term “counterweight force” does not require the counterweight system to
“counterbalance[] the entire weight or force of the mold,” id. at 3, we
discern no reason to believe that the term “counterweight force” excludes
that scenario. More importantly, however, we observe that the Appellant
does not propose its own construction for the term “counterweight force,”
and, although the Appellant asserts that the alleged claim interpretation error
“informs the entire § 103 analysis,” the Appellant does not actually identify
how the combined prior art falls beyond the scope of the correct
interpretation of the term “counterweight force.” On this record, the
Appellant’s arguments concerning claim interpretation fail to identify
reversible error in the Examiner’s rejection. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”).
In the Reply Brief, the Appellant also argues for the first time that,
even if Mumford teaches independent control of counterweights, “the
control would not be ‘based upon at least one of a pressure profile, a force
profile, and a temperature profile’ as recited in claims 13 and 20.” Reply
Br. 7.
As noted above, the Examiner made specific findings concerning that
claim recitation in the Final Action. See Final Act. 8–9. The Appellant did
not raise arguments concerning that recitation in the Appeal Brief.
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Accordingly, the argument is untimely. The Appellant has not attempted to
show good cause for presenting it for the first time in the Reply Brief. We
decline to consider it. See 37 C.F.R. § 41.41(b)(2).
We affirm the Examiner’s rejection of claim 13.
Claim 20. Claim 20 is similar to claim 13 and requires, inter alia, a
plurality of “independently adjustable counterweight[s].” As above with
respect to claim 13, the Appellant argues that Mumford does not teach
counterweights that are “independently” adjustable. Appeal Br. 14–17. For
reasons set forth above, we are not persuaded of reversible error in the
Examiner’s rejection. See Jung, 637 F.3d at 1365.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
13–22 103 Mumford, Frank, Blausey 13–22
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