Panasonic Intellectual Property Management Co., Ltd.

Patent Trials and Appeals Board

Sep 21, 2021

2021002108 (P.T.A.B. Sep. 21, 2021)

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.
15/555,917 09/05/2017 Masataka NONAKA HOKUP0366WOUS 1014
51921 7590 09/21/2021
MARK D. SARALINO (PAN)
RENNER, OTTO, BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
19TH FLOOR
CLEVELAND, OH 44115
EXAMINER
TRAVERS, MATTHEW P
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASATAKA NONAKA, EIICHI URIU, TASUKU ISHIBASHI,
HIROYUKI ABE, OSAKA, HARUHIKO ISIKAWA,
KENJI HASEGAWA, and KAZUYA HASEGAWA
____________

Appeal 2021-002108
Application 15/555,917
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL J. FITZPATRICK, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–3, 9, 13, 15, and 16, which are all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Panasonic Intellectual Property
Management Co., Ltd., as the real party in interest. Appeal Br. 3.
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CLAIMS
Claim 1 is the sole independent claim, and reads:
1. A manufacturing method for glass panel unit comprising:
a placing step of placing a first glass substrate and a
second glass substrate to face each other with a seal member in-
between and placing a gas adsorbent on the second glass
substrate, at least one of the first glass substrate and the second
substrate including a vent, the seal member including a frame
member with a frame shape and a partition member;
a bonding step of bonding the first glass substrate and the
second glass substrate to each other with the seal member, to
form an inside space enclosed by the frame member between
the first glass substrate and the second glass substrate bonded to
each other with the frame member, the partition member
partitioning the inside space into a first space directly connected
to the vent and a second space not directly connected to the
vent, with one or more gas passages between the partition
member and the frame member for allowing gas to move
between the first space and the second space;
a treatment step of evacuating air from the inside space
or supplying gas to the inside space through the vent, wherein
the gas adsorbent is located in the first space along the frame
member, and deforming the partition member to close the one
or more gas passages to hermetically enclose the first space;
and
a cutting step of cutting the first glass substrate, the
deformed partition member, and the second glass substrate
collectively along an imaginary cut plane passing through the
deformed partition member, from one of the first glass substrate
and the second glass substrate bonded to each other, thereby
dividing into a part used as a glass panel unit including the first
space and an unnecessary part including the second space and
the vent.

Appeal Br. 11 (Claims App.).

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REJECTIONS
Claims 1, 9, 13, 15, and 16 are rejected under 35 U.S.C. § 103 as
being unpatentable over Son (WO 2014/112710 A1, published July 24,
2014)2, Abe (WO 2013/172034 A1, published Nov. 21, 2013)3, and Benson
(US 4,683,154, issued July 28, 1987).
Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Son, Abe, Benson, and Kokubu (JP 53-028614 A,
published March 17, 1978).

ANALYSIS
Claims 1, 9, 13, 15, and 16 over Son, Abe, and Benson
Appellant argues claims 1, 9, 13, 15, and 16 as a group. Appeal Br.
5–9. We select claim 1 as representative to decide the appeal as to the
rejection, and claims 9, 13, 15, and 16 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv) (2019).
The Examiner presents two different bases for rejecting claim 1. The
Examiner finds that Son discloses a method for manufacturing a glass panel
unit comprising placing first and second glass substrates (glass plates 100) to
face each other with a seal member including a frame member (first sealing
member 210) and a partition member (second sealing member 220) between
the glass substrates. Final Act. 2 (citing Son Figs. 1, 4). The Examiner also

2 The Examiner references an English translation of KR 20140093017
(herein also “KR ’017”) as an equivalent of Son. Final Act. 2.
3 The Examiner references Abe (US 2015/0068665 A1, published Mar. 12,
2015) as an equivalent. For consistency, all references and citations
hereinafter to “Abe” pertain to Abe ’665.
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finds that Son discloses that at least one of the glass substrates includes a
vent (exhaust hole), as well as the glass substrates being bonded to each
other with the seal member to form an inside space enclosed by the frame
member. Id. (citing Son Figs. 1, 2; KR ’017 7). The Examiner finds,
however, that Son’s partition member does not necessarily
partition the inside space into a first space directly connected to
the vent and a second space not directly connected to the vent,
with one or more gas passages between the partition member
and the frame member for allowing gas to move between the
first space and the second space.
Id. at 3.
The Examiner relies on Abe as teaching a method of forming a glass
panel unit in which partition members (partitions 5a, 6a, 7a) partition an
inside space into a first space directly connected to a vent (outlet 9) and a
second space (partial regions A, B, C) not directly connected to the vent.
Final Act. 3 (citing Abe ¶ 53); see Abe Fig. 1. For the Examiner’s first basis
of rejection, the Examiner finds that Abe discloses one or more gas passages
(slits in partitions 5b, 6b, 7b) between the partition members and a frame
member (frit seal 4) for allowing gas to move between the first and second
spaces. Id. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to provide Abe’s gas passages in the combination
“since it would have required only a single vacuum exhaust hole to evacuate
all of the units.” Id.
Alternatively, the Examiner finds that, in Abe, “the one or more gas
passages are not ‘between the partition member and the frame member’ in
the sense, for example, depicted in [Appellant’s Figure 1].” Final Act. 4
(emphasis added). However, the Examiner determines that it would have
been an obvious matter of design choice to one of ordinary skill in the art to
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locate the gas passages in Abe, as claimed, because Appellant does not
disclose that the specific location of the passages with respect to the frame
and partition member provides an advantage, is used for a particular
purpose, or solves a stated problem. Id. (citing Spec. ¶¶ 32, 63). The
Examiner further submits:
one of ordinary skill in the art would have expected Applicant’s
invention to have performed equally well with the gas passages,
for example, toward the center of the partition member as
depicted by Abe, as with the gas passages at the ends of the
partition member, since either configuration would have
allowed gas to travel throughout the assembly and
communicate with the vent hole and subsequently be sealed by
melting.
Id.
As pertains to both bases for rejection, the Examiner finds that Son
and Abe do not disclose placing a gas absorbent on the second glass
substrate, located in the first space along the frame member, as claimed.
Final Act. 4. To address this omission, the Examiner relies on Benson as
teaching placing a gas adsorbent (getter 24) on a glass substrate (glass pane
14), located in a space (between glass panels 12 and 14) along a frame
member. Id. (citing Benson, col. 7, l. 61–col. 8, l. 12, Fig. 4). The Examiner
concludes that it would have been obvious in view of Benson to provide a
gas adsorbent “to . . . adsorb[] off-gassing vapors and preserve[] the
evacuated environment and heat insulation properties of the unit.” Id.
In the Appeal Brief, Appellant contends that “the specific location of
the claimed gas passages . . . is not disclosed or suggested by any of the cited
references. Appeal Br. 6. This conclusory statement provides no
explanation for why Abe allegedly fails to disclose “gas passages between
the partition member and the frame member,” as found by the Examiner.
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Final Act. 3. Accordingly, Appellant does not apprise us of Examiner error
in regard to this finding. This, itself, is sufficient basis to affirm the
Examiner’s rejection, as there is no remaining dispute regarding the first
basis for the rejection.
In the Reply Brief, Appellant asserts that Abe does not disclose “gas
passages between the partition member and the frame member” because:
According to the manufacturing method of Abe et al., however,
the discontinuous portions 5b, 6b, 7b that let air flow through
are not formed between the partition walls 5a, 6a, 7a and the frit
seal/frame member, as recited in independent claim 1, but
instead form a part of the partition walls 5a, 6a, 7a themselves.
Reply Br. 2 (emphasis added).
We note, however, that Appellant did not present this particular
argument in the Appeal Brief. Apart from specific exceptions, arguments
that were not raised in the Appeal Brief, but raised for the first time in the
Reply Brief, “will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.” 37 C.F.R. § 41.41(b)(2).
We determine that Appellant does not show such “good cause.” In
the Appeal Brief, Appellant asserts:
The Examiner acknowledges that the allegedly comparable gas
passages (5b, 6b, 7b) [in Abe] are not necessarily located
‘between the partition member and the frame member’ as
claimed. The Examiner maintains, however, that the specific
location of the claimed gas passages would have been an
obvious matter of design choice.
Appeal Br. 5. However, the Examiner’s “design choice” rationale is
premised on the alternative finding that Abe’s gas passages “are not
‘between the partition member and the frame member’ in the sense, for
example, depicted in [Appellant’s Figure 1].” Final Act. 4; Ans. 3 (“the
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[E]xaminer then offered an alternative [basis for the] rejection”). It is clear
from the Examiner’s explanation in the Final Action that this alternative
basis for the rejection is different from the basis premised on the finding that
Abe discloses one or more gas passages. Appellant does not show good
cause as to why the new argument presented in the Reply Brief could not
have been made earlier, so that the Examiner could have considered it.
Accordingly, we do not address this new argument.
As for the Examiner’s alternative rejection, Appellant “reasserts
multiple reasons herein why the specific location of the claimed gas
passages, which is not disclosed or suggested in any of the cited references,
would not have otherwise been an obvious matter of design choice.” Appeal
Br. 6. According to Appellant, “the location of the claimed gas passages
provides significant functional advantages over that which is taught in the
prior art.” Id. Appellant then presents arguments (a)–(d), each being
premised on “the specific location of the claimed gas passages.” Id. at 6–9.
Appellant explains that the “specific location” is “between the partition
member and the frame member.” See, e.g., id. at 6. In contrast, Appellant
contends that Abe teaches “gas passages . . . located more toward the center
of the partition member.” See, e.g., id. at 7.
Appellant asserts in arguments (a)–(d), respectively, that the “specific
location” of the claimed gas passages: “increases the success rate of the
subsequent cutting step of the claimed method,” “reduces the chances of the
gas passage being closed during the bonding step,” “facilitate[s] evacuation
in the treatment step,” and “facilitate[s] evacuation of air between the gas
adsorbent and the frame member.” Appeal Br. 6–9. In argument (d),
Appellant further contends, “because the gas adsorbent is arranged in the
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first space along the frame member, the air located between the gas
adsorbent and the frame member will most efficiently flow around the gas
adsorbent along the frame member to be evacuated.” Id. at 9 (emphasis
added). Accordingly, argument (d) is based on the location of both the gas
passages and the gas absorbent.
The Examiner responds that Appellant appears to be alleging
unexpected results, and, if so, “this type of argument must be factually
supported by an appropriate affidavit or declaration.” Ans. 4; see, e.g.,
MPEP § 716.01(c)(I) (citing In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984) (“It is well settled that unexpected results must be established by
factual evidence.”). The Examiner submits that, in contrast, “Appellant’s
support for the assertion of non-obviousness is in the form of the four
specific reasons a) through d),” which “are nothing more than counsel’s
arguments and appear speculative in nature” and “are not backed by any
form of objective evidence such as an affidavit or a declaration.” Ans. 4.
We agree with the Examiner. A claimed modification to the prior art
may be obvious if the claimed invention performs the same function as in
the prior art and it presents no novel or unexpected result over the prior art.
See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature
solves no stated problem and presents no unexpected result and “would be
an obvious matter of design choice within the skill of the art”). Here, we are
unpersuaded that the method of Son, as modified by Abe and Benson, would
not provide the recited function of “allowing gas to move between the first
space and second space.”
Additionally, Appellant does not direct us to any supporting evidence
of record that demonstrates that the “specific location of the claimed gas
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passages” provides the purported functional advantages, much less
unexpected results over the prior art. In argument (a), for example,
Appellant asserts that because of this “specific location,”
there will not be a significant difference in the distribution of
stress between a first part of the glass substrate located on one
side of the partition member and a second part of the glass
substrate located on the other side of the partition member
during the subsequent cutting step.
Appeal Br. 7. However, Appellant provides no evidence to support the
actual achievement of such alleged improved stress distribution.
Appellant further asserts that, in Abe’s production method,
the partition member would likely have a non-uniform, distorted
shape upon deformation to close the gas passages. This could
result in significantly asymmetric parts of the glass substrate
located on respective sides of the distorted partition member
and a significant difference in the distribution of stress between
the two parts during the subsequent cutting step.
See Reply Br. 5 (emphasis added). This contention is speculative as it is
premised on what Appellant contends might occur in Abe. Appellant
provides no evidence to show that this “distorted shape” would ever occur in
Abe. Thus, Appellant’s mere contention is insufficient to establish the
purported functional advantage or unexpected results. See Becton,
Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1260 (Fed.
Cir. 2010) (“Unsupported attorney argument . . . is an inadequate substitute
for record evidence.”); In re Wood, 582 F.2d 638, 642 (CCPA 1978)
(objective evidence needed to establish unexpected results). Thus, argument
(a) lacks sufficient evidentiary support.4

4 In the Examiner’s Answer, the Examiner states, “one would expect the
final frame and partition structure of the glass panel of Son . . . (as modified
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As another example, argument (d) relies on an annotated version of
Figure 2 showing the alleged direction of air flow in first space 41 and into
second space 42. See Appeal Br. 8–9. According to Appellant, air is “most
likely to smoothly flow in a linear manner, guided along the frame member
31 (as annotated with red arrows above).” Id. (emphasis added). Again, this
contention is speculative and is not supported by evidence to show that this
specific gas flow pattern will actually occur.
Additionally, in both the Appeal Brief and Reply Brief, Appellant
repeatedly refers to “the specific location of the claimed gas passages.” See,
e.g., Appeal Br. 6, 7, 8, 9; Reply Br. 4, 5, 7 (emphasis added). However,
claim 1 does not require more than one gas passage “between the partition
member and the frame member.” In argument (d), Appellant’s annotated
Figure 2 depicts the alleged direction of air flow in first space 41 and into
second space 42 via two gas passages 43, which are located between
opposite ends of partition member 32 and frame member 31. Appeal Br. 8.
Annotated Figure 2 also depicts gas absorbent 55 having a substantial length
and a specific location and orientation relative to a specific portion of frame
member 31. However, claim 1 does not require the provision of two gas
passages located specifically at opposite ends of the partition member, or
require the gas absorbent to have a length, location, and orientation relative
to a specific portion of the frame member, as shown. Even though
Appellant’s Figure 2 discloses this arrangement of gas passages 43 and

by Abe . . .) to have a substantially similar stress distribution and cutting
success rate. See for example Figures 9 and 11 of the instant application,
which show a similar gas passage configuration as Abe . . . , and the final
resulting panel structure similar to Son . . . .” Ans. 4–5. Appellant does not
address this statement in the Reply Brief.
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partition member 55, importing language from the written description into
the claims is generally disfavored. See SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding
the claim language may be aided by the explanations contained in the
written description, it is important not to import into a claim limitations that
are not a part of the claim.”).
Here, we construe claim 1 to not require the one or more gas passages
to be located “at the ends of the partition member.” In fact, claim 1 does not
recite that the partition member has such ends. To the extent the purported
functional advantage that “[t]he specific location of the claimed gas passages
facilitate[s] evacuation of air between the gas adsorbent and the frame
member” requires the specific arrangement shown in annotated Figure 2, this
argument is not persuasive. In addition to not being supported by evidence,
this argument is not commensurate with the claim scope.
Lastly, as to both of the Examiner’s stated bases for rejecting claim 1,
Appellant does not address the Examiner’s findings or rationale for
combining Benson’s teachings with those of Son and Abe to result in the
combination including a gas absorbent at the claimed location. Thus,
Appellant does not apprise us of error as to the Examiner’s reliance on
Benson in rejecting claim 1.
For the foregoing reasons, we sustain the rejection of claim 1, and
claims 9, 13, 15, and 16, which fall with claim 1, as unpatentable over Son,
Abe, and Benson.

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Claims 2 and 3 over Son, Abe, Benson, and Kokubu
Appellant relies on the dependency of claims 2 and 3 from claim 1 for
patentability. Appeal Br. 9. Accordingly, we sustain the rejection of claims
2 and 3 as unpatentable over Son, Abe, Benson, and Kokubu for the same
reasons as those discussed for claim 1.

CONCLUSION
We affirm the Examiner’s rejections of claims 1–3, 9, 13, 15, and 16.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9, 13, 15,
16
103 Son, Abe, Benson 1, 9, 13, 15,
16

2, 3 103 Son, Abe, Benson,
Kokubu
2, 3
Overall
Outcome
1–3, 9, 13, 15,
16

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

AFFIRMED