PPG INDUSTRIES OHIO, INC.

Patent Trials and Appeals Board

Sep 17, 2021

2020005133 (P.T.A.B. Sep. 17, 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.
14/951,534 11/25/2015 SONGWEI LU 14010048A1 1032
24959 7590 09/17/2021
PPG Industries, Inc.
IP Law Group
One PPG Place
39th Floor
Pittsburgh, PA 15272
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/17/2021 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@ppg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SONGWEI LU
Appeal 2020-005133
Application 14/951,534
Technology Center 1700
Before LINDA M. GAUDETTE, JOHN E. SCHNEIDER, and
DEBRA L. DENNETT, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 14, 15, 17, 19, 21, and 22.3
We AFFIRM.

1 The following documents are of record: Specification filed Nov. 25, 2015
(“Spec.”); Final Office Action dated Oct. 7, 2019 (“Final Act.”); Appeal
Brief filed Mar. 6, 2020 (“Appeal Br.”), citations to pages 17–19 being to
the Claims Appendix; Examiner’s Answer dated Apr. 30, 2020 (“Ans.”); and
Reply Brief filed June 30, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as PPG Industries Ohio, Inc.
Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2020-005133
Application 14/951,534

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CLAIMED SUBJECT MATTER
Claims 1 and 14, reproduced below, are illustrative of the claimed
subject matter:
1. A touch screen display demonstrating antiglare
properties, wherein the touch screen display comprises a
substrate and a coating formed by spray applying a curable
film-forming composition to at least one surface of the substrate
and curing of the curable film-forming composition, wherein
the curable film-forming composition has a solids content of
less than 10 percent by weight and comprises:
(i) a tetraalkoxysilane comprising tetramethoxysilane
and/or tetraethoxysilane present in an amount of less than 32
percent by weight, based on the total weight of the curable film-
forming composition;
(ii) a mineral acid; and
(iii) a solvent;
wherein the weight ratio of mineral acid to
tetraalkoxysilane is greater than 0.008:1 and less than 0.12:1;
and wherein the cured coating demonstrates a surface roughness
(Ra) of no more than 120 nm and a pencil hardness of at least
8H, and wherein the coating is formed by a process comprising:
(a) heating the substrate to a temperature of at least
100 °F (37.8 °C) to 450 °F (232.2 °C) to form a heated
substrate;
(b) spray applying the curable film-forming
composition to at least one surface of the heated substrate to
form a coated substrate; and
(c) subjecting the coated substrate to a temperature of
120 °C to 200 °C for 0.5 to 5 hours to effect cure of the curable
film-forming composition.
14. A coated article demonstrating antiglare properties,
wherein the coated article is prepared by a process comprising:
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Application 14/951,534

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(a) heating a substrate to a temperature of at least
100 °F (37.8 °C) [] to 450 °F (232.2 °C) to form a heated
substrate;
(b) spray applying a curable film-forming composition
to at least one surface of the heated substrate to form a substrate
coated with a sol-gel layer; wherein the curable film-forming
composition has a solids content of less than 10 percent by
weight and comprises:
(i) a tetraalkoxysilane comprising
tetramethoxysilane and/or tetraethoxysilane present in an
amount of less than 32 percent by weight, based on the total
weight of the curable film-forming composition;
(ii) a mineral acid; and
(iii) a solvent
wherein the weight ratio of mineral acid to
tetraalkoxysilane is greater than 0.008:1 and less than 0.12:1;
and
(c) subjecting the coated substrate to a temperature of
120 °C to 200 °C for 0.5 to 5 hours to effect cure of the sol-gel
layer.
Appeal Br. 17–18.
REJECTIONS4
1. Claims 14, 15, 17, 19, and 21 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Tsuda. Final Act. 3–5.
2. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over
Tsuda in view of Lin. Final Act. 7.

4 The rejection of claim 18 under 35 U.S.C. § 112(d), see Final Act. 2–3,
was rendered moot by cancellation of claim 18 in an Amendment After
Final, entered Dec. 17, 2019. See Advisory Action dated Dec. 17, 2019.
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3. Claims 1–3 are rejected under 35 U.S.C. § 103 as unpatentable
over Tsuda in view of Sarma. Final Act. 5–7.

EVIDENCE
Name Reference Date
Tsuda 2007/0195419 A1 Aug. 23, 2007
Lin 2011/0091690 A1 April 21, 2011
Sarma 2011/0242658 A1 Oct. 6, 2011

OPINION
The Appellant does not dispute the Examiner’s determination that
independent claims 1 and 14 are product-by-process claims. See Final Act. 4,
6; Appeal Br. 6–13. But the Appellant argues that the Examiner reversibly
erred in finding that the Appellant’s evidence was insufficient to demonstrate
that the recited process limitations impart structural differences that patentably
distinguish the claimed products from the prior art. See, e.g., Appeal Br. 8–9.
The Appellant relies on the same arguments in addressing all three
grounds of rejection. See generally Appeal Br. 6–15. The Appellant’s
arguments are not persuasive of reversible error for the reasons explained by
the Examiner in the Final Office Action and the Answer. See Ans. 3–6; Final
Act. 7–10. We add the following:
“[I]f the process by which a product is made imparts ‘structural and
functional differences’ distinguishing the claimed product from the prior art,
then those differences ‘are relevant as evidence of no anticipation’ although
they ‘are not explicitly part of the claim.’” Greenliant Sys., Inc. v. Xicor LLC,
692 F.3d 1261, 1268 (Fed. Cir. 2012) (quoting Amgen Inc. v. F. Hoffman–La
Roche Ltd., 580 F.3d 1340, 1370 (Fed. Cir. 2009)). However, once the
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Examiner demonstrates that the prior art and claimed products appear to be
identical, the burden shifts to the Appellant to provide evidence that the
claimed and prior art products structurally differ. In re Marosi, 710 F.2d 799,
803 (Fed. Cir. 1983). The Appellant argues that the inventor’s declarations
evidence that Tsuda’s and the claimed products structurally differ. See, e.g.,
Appeal Br. 8 (citing Dr. Songwei Lu’s Declarations under 37 C.F.R. § 1.132,
dated December 7, 2018 (2018 Decl.) and July 17, 2019 (2019 Decl.)).
Dr. Lu testified that “the antiglare performance of the [inventive]
curable film-forming coating composition may be achieved by the formation
of the sol-gel layer with a surface roughness on the substrate, which occurs
upon impingement of the sol-gel composition on the heated substrate during
spraying.” 2019 Decl. 2. According to Dr. Lu, “[t]he rapid evaporation of
solvent from the coating composition can minimize flow of the composition
on the heated substrate surface, and thus prevent the formation of a smooth,
high-gloss coating layer. This phenomenon occurs independently of the
alkoxysilane sol-gel composition . . . .” Id. Dr. Lu testified that the inventive
coating surfaces have irregular microstructure patterns that “are random
locally but uniform over a large area, and irregularly shaped in
microstructure.” Id. at 7. According to Dr. Lu, “this unique microscopic
topography is produced because of the process of preparing the coated articles
of the present invention using the claimed compositions and by preheating the
substrate to the claimed range, and by spray applying the compositions to the
substrate.” Id. Dr. Lu further testified that the claimed coating surfaces’
microstructure pattern is “not in any way similar to the projection bodies
which have round bottom (bowl-shaped) surfaces in the coated glass
substrates of the Tsuda et al. reference, prepared by a spin-coating technique.”
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Id.; see also 2008 Decl. 5. Dr. Lu’s declarations include SEM cross-section
images of anti-glare coatings prepared using the Specification Example 1–4
compositions. See 2019 Decl. 2–7; 2018 Decl. 4–6.
We agree with the Examiner that the testing described in Dr. Lu’s
declarations is not commensurate in scope with the claims and, therefore,
insufficient to show that Tsuda’s and the claimed products structurally differ.
As indicated by the Examiner, Dr. Lu tested coatings prepared using a limited
number of compositions and processing conditions. See Ans. 4. For example,
Dr. Lu heated substrates to either 112 °C or 132 °C. 2019 Decl. 2. No testing
was conducted close to the range endpoints—37.8 °C and 232.2 °C—although
Dr. Lu acknowledges that “surface roughness may be influenced by the
substrate temperature during spraying” (2019 Decl. 3). See claims 1, 14.
Similarly, all coatings were cured for 1 hour at 150 °C (2019 Decl. 4), but the
claims recite ranges of 0.5 to 5 hours at 120 °C to 200 °C. See claims 1, 14.
The Appellant argues that Dr. Lu’s test results, coupled with Dr. Lu’s
testimony that the same microtopography has been observed on all articles
“coated in accordance with the present invention over all claimed ranges”
(2019 Decl. 7), is sufficient to demonstrate that Tsuda’s and the claimed
products structurally differ. Appeal Br. 9–10; Reply Br. 4. We disagree.
Evidence is generally commensurate with the claims if an applicant
provides adequate support for a conclusion that embodiments falling within a
claim’s scope will behave similarly to a tested embodiment. See In re Kao,
639 F.3d 1057, 1068 (Fed. Cir. 2011). “The Board has broad discretion as to
the weight to give to declarations offered in the course of prosecution.” In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). As the
named inventor, Dr. Lu’s testimony is less persuasive than it would be if Dr.
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Lu were a disinterested person. See In re Bulina, 362 F.2d 555, 559 (CCPA
1966). Moreover, if Dr. Lu did observe the same microtopography over “all
claimed ranges” (2019 Decl. 7), it is unclear why the declarations did not
include test results for coatings processed under conditions closer to the
ranges’ endpoints.
For the above reasons, as well as those stated in the Final Office Action
and the Answer, we are not convinced of reversible error in the Examiner’s
rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
14, 15, 17,
19, 21
102(a)(1) Tsuda 14, 15, 17,
19, 21

22 103 Tsuda, Lin 22
1–3 103 Tsuda, Sarma 1–3
Overall
Outcome:

1–3, 14,
15, 17, 19,
21, 22

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).
AFFIRMED