PILKINGTON GROUP LIMITED

Patent Trials and Appeals Board

Oct 20, 2020

14392012 - (D) (P.T.A.B. Oct. 20, 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.
14/392,012 01/20/2015 MICHAEL MARTIN RADTKE 1-22002 1820
1678 7590 10/20/2020
MARSHALL & MELHORN, LLC
FOUR SEAGATE - EIGHTH FLOOR
TOLEDO, OH 43604
EXAMINER
MILLER, MICHAEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
10/20/2020 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):
PatentDocket@marshall-melhorn.com
may@marshall-melhorn.com
schurr@marshall-melhorn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL MARTIN RADTKE
and STEVEN EDWARD PHILLIPS
____________

Appeal 2020-000267
Application 14/392,012
Technology Center 1700
____________
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–33, 35–41, and 43 of Application
14/392,012. Final Act. (September 17, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Pilkington Group Ltd. as the real party in
interest. Appeal Br. 3. Pilkington Group Ltd. is a wholly-owned subsidiary
of Nippon Sheet Glass Co., Ltd.
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I. BACKGROUND
The ’012 Application describes a method for preventing deposition of
coating material and coating reaction byproducts on the coating apparatus
during a glass coating process. Spec. 1. In particular, the Specification
describes flowing a fluorine-containing compound—such as anhydrous
hydrogen fluoride—into the coating apparatus. Id. at 2. The fluorine-
containing compound is said to inhibit formation of the coating on one or
more portions of the coating apparatus. Id.
Claim 22 is representative of the ’012 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
22. A method of depositing a coating utilizing a coating
apparatus, comprising:
providing a coating apparatus in a float bath section of a
float glass manufacturing process and above a glass substrate;
flowing a fluorine-containing compound into the coating
apparatus prior to forming a coating on a surface of the glass
substrate; and
forming the coating on the surface of the glass substrate
while flowing the fluorine-containing compound into the
coating apparatus, wherein the fluorine-containing compound
inhibits the formation of the coating on one or more portions of
the coating apparatus.
Appeal Br. 16.
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II. REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 22–33, 35–41, and 43 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Soubeyrand2 and Dobkin.3
Final Act. 3.
III. DISCUSSION
Appellant presents separate arguments for the patentability of each of
the three independent claims, namely claims 22, 39, and 43, in the ’012
Application. Appeal Br. 5–14. Accordingly, we address each independent
claim separately.
A. Independent claim 22 and dependent claims 23–33 and 35–38
Appellant argues for the patentability of independent claim 22 along
with claims 23–33 and 35–38, which depend from claim 22, as a group. Id.
at 5–8.
In rejecting claim 22, the Examiner found that Soubeyrand describes a
method for depositing a coating on a glass substrate using a coating
apparatus in a float bath section of a float glass manufacturing process. Final
Act. 3–4. The Examiner further found that Soubeyrand does not include
fluorine in its deposition method. Id. at 4.
The Examiner also found that Dobkin describes forming a coating on
a substrate while flowing a fluorine-containing compound into the coating
apparatus. Id. The Examiner found Dobkin teaches that inclusion of the

2 US 5,798,142, issued August 25, 1998.
3 WO 99/04059 A1, published January 28, 1999.
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fluorine-containing gas inhibits accumulation and formation of deposits on
the apparatus. Id. (citing Dobkin 12–13).
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art at the time of the invention to have modified
Soubeyrand to incorporate Dobkin’s vapor delivery apparatus, including the
fluorine gas, because Dobkin “teaches that the inclusion of fluorine gas
minimizes the accumulation and formation of deposits within the deposition
structure.” Id. at 5.
Appellant argues that the rejection of claim 22 should be reversed for
any of three reasons: (1) a person of ordinary skill in the art would not have
added Dobkin’s method of controlling deposit formation to Soubeyrand
because Soubeyrand already controls deposit formation on the equipment,
Appeal Br. 6–7, (2) a person of ordinary skill in the art would not have had a
reasonable expectation of success in combining Soubeyrand and Dobkin, id.
at 7, and (3) the combination of Soubeyrand and Dobkin does not describe
flowing the fluorine-containing compound into the coating apparatus both
prior to and during coating formation, id. at 7–8.
First, Appellant argues that a person of ordinary skill in the art at the
time of the invention would not have had a reason to combine Soubeyrand
and Dobkin. Id. at 6–7. Soubeyrand describes a method for depositing a film
on a glass substrate that is said to reduce deposits on the coating equipment
by controlling the kinetics of the deposition reaction. Id. at 6 (citing
Soubeyrand 9:12–26). Thus, according to Appellant, a person of ordinary
skill in the art would not have had reason to modify Soubeyrand to include
Dobkin’s fluorine-containing gas. Id. Appellant further argues that a person
having ordinary skill in the art would not have incurred the added expense of
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using Dobkin’s method of removing deposits using fluorine-containing
compounds because Soubeyrand already controls deposit formation. Id. at 7.
Neither of these arguments is persuasive. Soubeyrand describes its
method as reducing deposit formation, not eliminating it. Soubeyrand 9:24–
26. In particular, Soubeyrand states that “deposits on the equipment are
reduced and longer run time between shutdown for cleaning can be
achieved.” Id. Thus, a person having ordinary skill in the art would have had
reason to modify to Soubeyrand’s equipment to also carry out Dobkin’s
method to further reduce deposit formation and increase equipment
shutdown for cleaning. Moreover, the Federal Circuit has held that the
possibility that a particular combination might not be economically viable
does not mean that a person having ordinary skill in the art would not make
the combination. See In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983)
(“That a given combination would not be made by businessmen for
economic reasons does not mean that persons skilled in the art would not
make the combination because of some technological incompatibility. Only
the latter fact would be relevant.”).
Second, Appellant argues that a person of ordinary skill in the art
would not have had a reasonable expectation of success in combining
Soubeyrand and Dobkin. Appeal Br. 7. In particular, Appellant argues that
Dobkin describes his method as being most effective at temperatures from
less than 80°C to 100°C. Id. (not citing a specific portion of Dobkin).
Soubeyrand, on the other hand, describes equipment used in the float bath
section of a float glass manufacturing process. Temperatures in such a
location are well in excess of 100°C. Id. According to Appellant, a person of
ordinary skill in the art would not expect Dobkin’s method to achieve further
inhibition of coating deposition on the coating apparatus. Id.
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The Examiner responds by citing the relevant portion of Dobkin,
which states that “[i]t is well known that the vapor etching of silicon dioxide
proceeds most readily at temperatures less than 80 to 100°C.” Dobkin 20
(emphasis added). As the Examiner points out, there is nothing in this
portion of Dobkin which indicates that the vapor etching of silicon dioxide
would be ineffective at temperatures found within the float bath section of a
float glass manufacturing process. Answer 4.
We are not persuaded by Appellant’s argument because it is
unsupported by citation of evidence establishing the temperatures within the
float bath section of a float glass manufacturing process and the effects of
such temperatures on vapor etching of silicon dioxide. Absent such
evidence, Appellant’s attorney argument is insufficient to persuade us that
the Examiner reversibly erred.
Third, Appellant admits that Dobkin describes flowing the fluorine-
containing gas into the coating apparatus either prior to or during coating
formation. Appeal Br. 8. Appellant argues that Dobkin does not describe
flowing the fluorine-containing gas into the coating apparatus both prior to
and during coating formation. Appeal Br. 7–8.
The Examiner provides three rationales in response: (1) Dobkin
expressly states that variations, substitutions, alternatives, and modifications
to its specifically detailed embodiments will be apparent to those of skill in
the art. Answer 4 (citing Dobkin 25). The Examiner maintains that,
therefore, it would be apparent to a person of ordinary skill in the art that
Dobkin itself suggests flowing the fluorine-containing compound before
during and after the deposition process. Id. at 4–5. (2) Variation in the order
of performing process steps is prima facie obvious in the absence of
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unexpected results. Id. at 5. (3) The modification to Dobkin’s method would
have been obvious to a person of ordinary skill in the art. Id.
The Examiner’s first rationale is not persuasive. It is based upon
boilerplate of a sort routinely included in patent specifications. The
boilerplate is accurate because, as the Supreme Court has recognized, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). But it
is also insufficient to justify the combination of Soubeyrand and Dobkin
because it does not explain how or why a person of ordinary skill in the art
would have combined the references in the particular way relied upon by the
Examiner in rejecting claim 22.
The Examiner’s second rationale is not persuasive. The Examiner
correctly states that the Federal Circuit has held that changes in the order of
steps in a method described in the prior art are prima facie obvious. Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008); see
also In re Burhans, 154 F.2d 690, 692 (CCPA 1946). In this case, however,
the Examiner is not proposing a mere change in the order of steps, but the
performance of an additional step.
The Examiner’s third rationale, however, is persuasive. The Examiner
explains that
“a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but
of ordinary skill and common sense.” There is a recognized
problem in Dobkin of forming unwanted silicon deposits in a
silicon deposition apparatus. Dobkin also finds that flowing a
fluorine-containing compound through the system during at
least one of before, during, or after the deposition process
solves the problem of unwanted deposit formation. As such,
since there is a reasonable expectation of success for the
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flowing of gas in each separate period, there is a prima facie
reasonable expectation of success if the gas is floated more than
one of the three periods.
Answer 5 (quoting, but not citing, KSR, 550 U.S. at 421).
We agree with the Examiner that it would have been within the level
of ordinary skill in the art to modify the combined teachings of Soubeyrand
and Dobkin in the manner proposed in the Final Action to arrive at the
invention recited in claim 22.
For the reasons set forth above, we affirm the rejection of claim 22.
Thus, we also affirm the rejection of claims 23–33 and 35–38, which depend
from claim 22.
B. Independent claim 39 and dependent claims 40 and 41
Appellant argues for the patentability of independent claim 39 along
with dependent claims 40 and 41 (which depend from claim 39) as a group.
Appeal Br. 9–13. We, therefore, select claim 39 is representative of the
group of claims on appeal. 37 C.F.R. § 41.37(c)(1)(iv).
For convenience, we reproduce claim 39 below from the Appeal
Brief’s Claims Appendix.
39. A method for depositing a coating utilizing a coating
apparatus, comprising:
providing a coating apparatus in a float bath section of a
float glass manufacturing process and above a moving glass
substrate, the coating apparatus comprising one or more exhaust
gas passages;
flowing a fluorine-containing compound into the coating
apparatus prior to forming a silica coating on a surface of the
moving glass substrate so that the fluorine-containing
compound is introduced into an exhaust gas passage, wherein a
ratio of the fluorine-containing compound to a silicon-
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containing compound flowing into the coating apparatus is
equal to or greater than 2:1; and
forming the silica coating on the surface of the moving
glass substrate which contains no fluorine or only trace amounts
thereof while flowing the fluorine-containing compound into
the coating apparatus, wherein the fluorine-containing
compound inhibits the formation of the silica coating in the one
or more exhaust gas passages.
Appeal Br. 18 (emphasis added).
Initially, Appellant argues that claim 39 is patentable for the same
reasons claim 22 is patentable. Id. at 9. As discussed above, we have
determined that the Examiner did not reversibly err in rejecting claim 22.
Thus, we also determine that Appellant’s arguments with respect to claim 22
do not persuade us that the Examiner erred by rejecting claim 39.
Next, Appellant argues that the combination of Soubeyrand and
Dobkin fails to describe or suggest every limitation recited in claim 39. Id. at
9–10. In particular, Appellant argues limitations not described or suggested
by the combination of Soubeyrand and Dobkin: (1) flowing a fluorine-
containing compound into the coating apparatus prior to forming a silica
coating on the surface of the moving glass substrate so that the fluorine-
containing compound is introduced into an exhaust gas passage, and (2) a
ratio of the fluorine-containing compound to a silicon containing compound
flowing into the coating apparatus is equal to or greater than 2:1. Id. at 9.
First, Appellant merely asserts that the combination of Soubeyrand
and Dobkin does not describe or suggest “flowing the fluorine-containing
compound into the coating apparatus . . .” limitation. Appellant does not
explain in any detail why the Examiner’s findings to the contrary are
erroneous. See Appeal Br. 9–10. Our rules require that “[t]he arguments
shall explain why the examiner erred as to each ground of rejection
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contested by appellant.” 37 C.F.R. § 41.37(c)(1)(iv) (2015). We, therefore,
do not reverse the rejection of claim 39 based on this argument.
Second, the Examiner found that Soubeyrand and Dobkin do not
disclose the ratio between the fluorine-containing compound (anhydrous
HF) and the process gases. Final Act. 7. The Examiner further found that a
person of ordinary skill in the art would have controlled the ratio between
the gases to obtain the desired deposition products. Id. at 7–8 (citing In re
Aller, 220 F.2d 454 (CCPA 1955)). The Examiner states that “claims
requiring specific ratios . . . have been rejected as a result of routine
experimentation, not as a result of an express teaching of Dobkin ’099
(beyond the teaching that both gases are present in some degree).” Final Act.
12. In the Answer, the Examiner asserts that Dobkin explicitly recognizes the
concentration of fluorine-containing compound as a result-effective variable.
Answer 6–7 (failing to provide a specific citation to Dobkin). According to
the Examiner, arriving at the claimed ratio is a mere matter of routine
experimentation. Id.
Appellant replies that “Dobkin does not provide any guidance on the
amount of fluorine-containing compound that needs to flow into his coating
apparatus to reduce unwanted silicon deposition.” Reply Br. 6. Appellant
argues that prior art renders a claim obvious only when it is not vague but
rather collectively guides a person having ordinary skill in the art toward a
particular solution. Id. at 7 (citing Unigene Labs., Inc. v. Apotex, Inc., 655
F.3d 1352, 1361 (Fed. Cir. 2011)).
We have determined that the Examiner’s finding that Dobkin
explicitly recognizes the concentration of the fluorine-containing compound
as a result-effective variable is erroneous. As noted above, the Examiner
does not provide a specific citation to the portion of Dobkin that allegedly
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expresses this recognition. We have reviewed Dobkin and cannot locate
alleged explicit recognition.
However, Dobkin’s lack of explicit recognition that the concentration
of the fluorine-containing compound is a result-effective variable is not fatal
to the rejection. As the Federal Circuit has explained, “a recognition in the
prior art that a property is affected by the variable is sufficient to find the
variable result-effective.” In re Applied Materials Inc., 692 F.3d 1289, 1297
(Fed. Cir. 2012).
In this case, Dobkin teaches that the etchant species, i.e., the fluorine-
containing compound, removes deposited materials along the gas delivery
surface and other surfaces. Dobkin 4. Dobkin further teaches that the amount
of deposited material depends upon the amount of reactant gas, e.g., the
silicon-containing compound, present. See id. at 8 (“In some instances[,] it is
desirable to provide a specified gas flow profile to compensate for variables
in the CVD reaction area which can cause in complete reaction of the gases
and films which are not uniform in composition. For example, it may be
desirable to direct a greater volume of gas to a particular area of the
substrate 16.”).
A person of ordinary skill in the art, therefore, would have understood
that the amount of fluorine-containing compound needed to remove material
deposits from the exhaust gas passage depends upon the amount of silicon-
containing compound used in the process. This is sufficient to support the
Examiner’s finding that a person of ordinary skill in the art would have
arrived at the claimed ratio of fluorine-containing compound to silicon-
containing compound via routine experimentation. It is well-established that
“discovery of an optimum value of a result effective variable . . . is
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ordinarily within the skill of the art.” In re Boesch, 617 F.2d 272, 276
(CCPA 1980).
Finally, Appellant argues that the Examiner failed to evaluate the
differences between the subject matter of claim 39 and the asserted
combination of references properly. Appeal Br. 11–13. Appellant says that
this failure means that the Examiner has not established a prima facie case of
obviousness or claim 39 for any of three reasons.
First, Appellant argues that the Examiner confined his analysis of
claim 39 only to the ratio of the fluorine-containing compound to the silicon-
containing compound and not to the invention defined by claim 39 as a
whole. Id. at 11.
This argument is not persuasive. In rejecting claim 39, the Examiner
correctly found that “[c]laim 39 is a combination of the limitations of
[c]laims 22, 24, 28, 29, 31, and 37 and is rejected on the same bases as listed
above.” Final Act. 8. The Examiner’s shorthand is less convenient for an
applicant or the Board to review the Examiner’s findings of fact and
reasoning with respect to claim 39 than if the findings of fact and reasoning
had been repeated in full. Nevertheless, our review of the Examiner’s
findings of fact and discussion with regard to each of the limitations of the
claim identified in the rejection of claim 39 convinces us that the Examiner
fully considered the subject matter of claim 39.
Second, Appellant argues that the combination of Soubeyrand and
Dobkin does not expressly teach the general conditions of claim 39, i.e.,
flowing more fluorine-containing compound than silicon-containing
compound into the coating apparatus. Appeal Br. 12.
For the reasons discussed above, we have determined that a person
having ordinary skill in the art would have understood that the amounts of
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the fluorine-containing compound and the silicon-containing compound are
result-effective variables. Thus, the amounts of these compounds used in a
particular coating process are subject to routine optimization. This means
that the relative amounts of the two compounds also is subject to routine
optimization.
This argument, therefore, does not persuade us that the Examiner
reversibly erred by rejecting claim 39.
Third, Appellant argues that the combination of Soubeyrand and
Dobkin does not teach that the ratio of fluorine-containing compound to
silicon-containing compound is result effective variable. Appeal Br. 12–13.
As discussed above, we have determined that this argument is not
persuasive.
For the foregoing reasons, we affirm the rejection of claim 39. Thus,
we also affirm the rejection of claims 40 and 41.
C. Independent claim 43
Appellant argues for the patentability of independent claim 43. Appeal
Br. 13–14. For ease of reference, we reproduce claim 43 below.
43. A method of depositing a coating utilizing a coating
apparatus, comprising:
providing a coating apparatus above a glass substrate,
wherein the coating apparatus comprises an exhaust gas
passage; and
forming a coating on a surface of the glass substrate
while flowing a fluorine-containing compound into the coating
apparatus, wherein the fluorine-containing compound is
introduced into the exhaust gas passage via a gas distribution
tube positioned within the exhaust gas passage and inhibits the
formation of the coating on a surface of the coating apparatus
that defines the exhaust gas passage.
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Id. at 19 (emphasis added).
Appellant argues that claim 43 is patentable because the combination
of Soubeyrand and Dobkin does not describe or suggest introducing the
fluorine-containing compound via a gas distribution tube positioned within
the exhaust gas passage. Id. at 13–14.
In rejecting claim 43, the Examiner found that Dobkin describes
formation of distribution slots in the gas delivery system. Final Act. 12. The
Examiner further found that Dobkin describes introduction of anhydrous HF
into the gas distribution slots via metering tubes. Id. “This would read on the
limitation of a gas distribution tube positioned within an exhaust gas
passage.” Id.
We have considered Appellant’s arguments, but we are not persuaded
that the Examiner reversibly erred by finding that Dobkin describes
introduction of the fluorine-containing compound via a tube positioned
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within an exhaust gas passage. This is perhaps most clearly seen in Dobkin’s
Figure 18, which is reproduced below.

Figure 18 is a cross-sectional view of a deposition
chamber having a single body injector and two
vent blocks. Dobkin 6–7.
In the deposition chamber depicted in Dobkin’s Figure 18, reaction
products are removed via exhaust channel 107. Id. at 18. Exhaust channel
107 is defined by the gas delivery surface 114 and the vertical side 119 of
injector 105. Id. The other side of exhaust channel 107 is defined by side
surface 121 of the block 106. Id. Side surface 121 of the block 106 includes
contoured region 152, which may be formed as an integral part of the block
106. Id.
As Dobkin explains, to assist in the removal of deposits from exhaust
channel 107, etching passages 135 and 156 are shown in injector 105 and
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vent block 106. Id. at 20. Etching passages 135 and 156 dispense etchant gas
as such is anhydrous HF vapor via distribution slots (not labeled in Figure
18). Id. As can be seen in the enlarged detail from Figure 18 reproduced
below, the distribution slots from etching passage 135 introduces etchant gas
into exhaust passage 107.

The illustration reproduced above is an enlarged
detail from Dobkin’s Figure 18. It shows the
positioning of the distribution slot from etching
passage 135 within exhaust channel 107.
Because the Examiner did not reversibly err by finding that Dobkin
describes the introduction of a fluorine-containing gas into the exhaust gas
passage via a gas distribution tube, we affirm the rejection of claim 43.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–33, 35–41, 43 103(a) Soubeyrand, Dobkin 22–33, 35–41, 43
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