Nippon Electric Glass Co., Ltd.

Patent Trials and Appeals Board

Jul 10, 2020

2019005363 (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.
14/327,673 07/10/2014 Masahiro TOMAMOTO 2013-0642 4142
513 7590 07/10/2020
WENDEROTH, LIND & PONACK, L.L.P.
1025 Connecticut Avenue, NW
Suite 500
Washington, DC 20036
EXAMINER
FITZHUGH, JULIUS
ART UNIT PAPER NUMBER
1782
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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAHIRO TOMAMOTO, MICHIHARU ETA,
HIDETAKA ODA, TATSUYA TAKAYA, YASUO YAMAZAKI,
HIROSHI TAKIMOTO, SHINICHI ISHIBASHI, KEIJI TAKAGI,
DAISUKE NAGATA, TAKAHIDE NAKAMURA,
TORU SAKURABAYASHI, KATSUTOSHI FUJIWARA,
MITSUHARU NODA, YASUHIKO OGISO, and
TAKAHIDE FUJII

Appeal 2019-005363
Application 14/327,673
Technology Center 1700
____________

Before ROMULO H. DELMENDO, DONNA M. PRAISS, and
N. WHITNEY WILSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2019-005363
Application 14/327,673

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The Appellant1 appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s final decision to reject claims 1–3.2 We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

I. BACKGROUND
The subject matter on appeal relates to a glass roll formed by winding
a glass film into a roll while superposing the glass film on a protective sheet
(Specification filed July 10, 2014 (“Spec.”) ¶ 16). The Inventors explain
that the protective sheet is wound one or more turns around a roll core in
advance in order to prevent flaws on a surface of the glass film (id. ¶ 74;
Drawings filed July 10, 2013, Fig. 1).
Claim 1, the sole independent claim on appeal, is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. A glass roll comprising:
a roll core;
a glass film having exposed front and back surfaces; and a
protective sheet,
wherein the glass film and the protective sheet are wound
around the roll core so that the glass film is superimposed on the
protective sheet, and
wherein a leading end of the protective sheet extending
from an innermost layer of the protective sheet is wound one or
more turns around the roll core prior to a leading end of the
glass film extending from an inner most layer of the glass film

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42—namely, “Nippon Electric Glass Co., Ltd.” (Application
Data Sheet filed July 10, 2014 at 9), which is also identified as the real party
in interest (Appeal Brief filed January 7, 2019 (“Appeal Br.”) at 3).
2 See Appeal Br. 9–15; Final Office Action entered August 6, 2018 (“Final
Act.”) at 3–12; Examiner’s Answer entered May 3, 2019 (“Ans.”) at 3–16.
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being located on the protective sheet and wound around the roll
core.
(Appeal Br. 17 (emphasis added)).
II. REJECTIONS ON APPEAL
The claims on appeal stand rejected under 35 U.S.C. § 103(a) (pre-
AIA), as follows:
A. Claims 1 and 2 as unpatentable over Walty3 in view of
Specogna et al.4 (“Specogna”);
B. Claims 1 and 2 as unpatentable over Walty in view of
Birkeland;5 and
C. Claim 3 as unpatentable over Walty in view of either Specogna
or Birkeland, and further in view of Kondratenko.6
(Ans. 3–16; Final Act. 3–12).
III. DISCUSSION
Rejection A. The Examiner finds that Walty describes a glass roll
comprising a glass sheet 19, two protective webs 23a and 23b, and a spool
core 24, wherein the protective webs are disposed on the outer
circumference of the glass sheet (Ans. 3; Final Act. 3) (citing, e.g., Walty
Fig. 1). The Examiner acknowledges that “Walty is silent regarding a
leading portion of the protective sheet being wound around the roll core one
or more [turns]” (Ans. 4; Final Act. 4). The Examiner finds, however, that

3 WO 87/06626 A1, published November 5, 1987.
4 US 5,472,089, issued December 5, 1995.
5 US 4,455,076, issued June 19, 1984.
6 US 2004/0251290 A1, published December 16, 2004.
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Specogna discloses a package of a web wound on a core, wherein an opaque
flexible material portion 24 (i.e., a leading end) is wrapped around an
outermost first convolution 20 of the roll (i.e., one turn around the roll core)
(Ans. 4–5; Final Act. 4–5) (citing, e.g., Specogna Figs. 1 and 5B). Based on
these findings, the Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art at
the time of the invention to have modified the protective web of
Walty by wrapping a flexible material around the roll at least
once with a flexible material portion comprising several
segments as taught by Specogna in order to easily enable
wrapping and promote uniform wrapability of successive
segments that follow the flexible material.
(Ans. 5).
Alternatively, the Examiner finds that Specogna discloses a third
stretchable segment 32 (i.e., a leading end), provided with a cushioning layer
that enhances physical protection such as shock and abrasion during
handling, wrapped around an outermost second convolution 34 (Ans. 6;
Final Act. 5) (citing, e.g., Specogna Figs. 1 and 5B). The Examiner then
concludes that “[i]t would have been obvious to one of ordinary skill in the
art . . . to have modified the protective web of Walty by wrapping a segment
with a cushioning layer around the roll in order to provide shock and
abrasion protection for the glass sheet of Walty.” (Ans. 6; Final Act. 6).
The Appellant contends that the Examiner’s proposed combination of
references would not have rendered the subject matter recited in claim 1
obvious to a person having ordinary skill in the art because, in Specogna, a
photosensitive film material and a flexible material portion 24 constitute a
single band-like body that is tightly wound around a core 21, whereby “a
large tensile stress acts directly on both the film material and the flexible
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material portion 24” (Appeal Br. 9–10 (bolding added)). The Appellant
argues that, therefore, if Specogna’s teachings are implemented in Walty, “a
large tensile stress will likely act directly on the glass sheeting 19 and cause
the glass sheeting 19 to break” (id. at 10 (bolding added)). Furthermore, the
Appellant argues that the claimed subject matter would not have been
obvious because “the Specogna reference discloses that the flexible material
portion 24 is connected to the outermost layer of the photosensitive film
material in order to protect the photosensitive film from light” (id. at 10)
(bolding and italics added).
We concur with the Appellant that the Examiner’s articulated reason
for combining Walty and Specogna is insufficient, because it lacks sufficient
rational underpinning to support a conclusion that a person having ordinary
skill in the art would have combined the references in the manner claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Walty discloses a sputter-coated thin glass sheeting in roll form
formed by winding a glass sheeting 19 on a take-up spool 23, wherein
protective webs 23a and 23b are fed onto the spool 23 from spools 27 and 28
such that one or more layers of the protective web materials are interposed
between the glass surfaces (Walty Abstract; Fig. 1; 5, ll. 3–14). As the
Examiner acknowledges (Ans. 4; Final Act. 4), Walty’s disclosure differs
from claim 1’s subject matter in that the reference does not disclose the
limitations highlighted in reproduced claim 1 above.
In contrast to Walty and the claimed subject matter, Specogna’s
disclosure “concerns light-tight and physically protected packaging for a roll
of photosensitive web insertable in a cassette or similar device” (Specogna
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col. 1, ll. 8–11). Specogna teaches that “several convolutions of a flexible
material portion 24 [are] wrapped around the outermost first convolution 20
of the roll (R)” (id. at col. 4, ll. 49–54 (italics added)). Specogna also
teaches that a third stretchable segment 32 is wrapped around an outermost
second convolution 34 to form an outermost third convolution 38
comprising the third stretchable segment 32 (id. at col. 6, ll. 6–9 (emphasis
added); Fig. 3).
The Examiner’s rejection, however, fails to include a sufficient
explanation as to how Specogna’s teachings regarding the flexible material
portion 24 wrapped around an outermost first convolution 20 of roll (R), as
depicted in Figure 1, or a third stretchable segment 32 wrapped around an
outermost second convolution 34, as depicted in Figure 3, if implemented in
Walty, would satisfy the disputed claim limitations highlighted above in
reproduced claim 1 above (i.e., “protective sheet is wound one or more turns
around the roll core prior to a leading end of the glass film”).
Therefore, we conclude that a prima facie case of obviousness has not
been established.
Rejection B. The Examiner’s rejection based on the combination of
Walty and Birkeland is similarly flawed. Birkeland discloses a photographic
film cassette in which a length of light-sensitive photographic film 21 is
convolutely wound about a trailer 20, which is secured by a length of tape to
a hub 10 (Birkeland col. 2, ll. 18–40). As the Appellant points out (Appeal
Br. 13), Birkeland teaches that the trailer 20 is attached to the innermost
layer of the photographic film 21 to provide a microswitch sensing slot to
signal the end of the photographic film 21 (Birkeland col. 2, ll. 27–31).
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Thus, Birkeland’s teachings, which relate to providing a trailer in a
photographic film, are insufficient to support the Examiner’s position that
“one of ordinary skill in the art would have been motivated to initiate the
wrapping of the glass roll of modified Walty by first sufficiently wrapping a
leading edge of the protective web followed by the wrapping of the glass
sheet” to initiate wrapping and to provide protection prior to the wrapping of
the glass sheet (Ans. 14; see also Final Act. 7). In re NuVasive, Inc., 842
F.3d 1376, 1383 (Fed. Cir. 2016) (“‘[C]onclusory statements’ alone are
insufficient and, instead, the finding must be supported by a ‘reasoned
explanation.’” (internal citation omitted)).
Therefore, we also do not sustain this rejection.
Rejection C. Although this rejection relies further on Kondratenko, it
also relies on the combination of Walty and either Specogna or Birkeland.
As Kondratenko has not been applied in a way so as to cure the deficiencies
in the Examiner’s basic combination of Walty and either Specogna or
Birkeland (Ans. 9; Final Act. 8), we also do not sustain this rejection.

IV. CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103(a) Walty, Specogna 1, 2
1, 2 103(a) Walty, Birkeland 1, 2
3 103(a)
Walty, Specogna
or Birkeland,
Kondratenko
3
Overall
Outcome 1–3

REVERSED