Robert A. Pyles et al.

Patent Trials and Appeals Board

Feb 27, 2020

15337126 - (D) (P.T.A.B. Feb. 27, 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.
15/337,126 10/28/2016 Robert A. Pyles COV162013/MD15-014 4421
20230 7590 02/27/2020
Vorys, Sater, Seymour and Pease LLP
1909 K St., NW
9th Floor
WASHINGTON, DC 20006-1152
EXAMINER
DAVIS, ZACHARY M
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/27/2020 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):
patlaw@vorys.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT A. PYLES, JESSICA BOYER,
ISAAC PLATTE, and DAVID ROCCO

Appeal 2019-002798
Application 15/337,126
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Covestro
LLC. Appeal Br. 1.
Appeal 2019-002798
Application 15/337,126
2
CLAIMED SUBJECT MATTER

The present application generally relates to “high security
polycarbonate laminates integrated with insulated glazing units (IGU) to
produce high security windows.” Specification dated Oct. 28, 2016
(“Spec.”) 1. The laminates are taught to comprise at least nine layers
arranged in a specific sequence. Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A laminate comprising nine layers, in the following order:
(i) an insulated glazing unit;
(ii) a thermoplastic polyurethane;
(iii) a polycarbonate;
(iv) a thermoplastic polyurethane;
(v) a polycarbonate;
(vi) a thermoplastic polyurethane;
(vii) a glass;
(viii) a thermoplastic polyurethane; and
(ix) a polycarbonate.
Appeal Br. 10 (Claims App.).
The Specification describes an embodiment that corresponds to claim
1. Spec. 18 (Example 8). The Specification teaches that the described
embodiment “was found to retain its shape following the autoclave, as well
as through cold and warm temperature cycles. Furthermore, the laminate
passed the blast test.” Id. This contrasts with various comparative examples
which are taught to bow (“forming a potato-chip like distortion”) during
manufacture or not to meet “blast requirements.” Id. at 15–18. Example 1,
for instance, differs from the claimed embodiment only in that its seventh
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Application 15/337,126
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(vii) layer is taught to be polycarbonate rather than glass. The Specification
teaches that the embodiment of Example 1 does not meet blast requirements.
Id. at 17.
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Duncan et al. (“Duncan”) US 2003/0061783 Al April 3, 2003
Mock et al. (“Mock”) US 2009/0241422 Al Oct. 1, 2009
Higuchi et al. (“Higuchi”) US 2011/0223414 Al Sept. 15, 2011
Leighton et al.
(“Leighton”)
US 2012/0219749 Al Aug. 30, 2012
Michiels et al.
(“Michiels”)
US 2013/0330570 Al Dec. 12, 2013
Dear US 2014/0186556 Al July 3, 2014
PPG Industries, Inc. (Nov. 2001), Gas Space Convection Effects on U-
values in Insulating Glass Units (“PPG”)

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–3, 8–10, 14, and 15 are rejected under 35 U.S.C. § 103
as being unpatentable over Leighton in view of PPG. Final Act.
2–4.
2. Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable
over Leighton in view of PPG and further in view of Dear. Id. at
5.
3. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Leighton in view of PPG and further in view
of Michiels. Id. at 5–6.
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4. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable
over Leighton in view of PPG and further in view of Michiels
and Dear. Id. at 6–7.
5. Claims 11–13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Leighton in view of PPG and further in view
of Higuchi. Id. at 7–8.
6. Claims 16–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Leighton in view of PPG and further in view
of Duncan. Id. at 8–9.
7. Claims 16 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Leighton in view of PPG and further in view
of Mock. Id. at 9–10.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–3, 8–10, 14, and 15 as
obvious over Leighton in view of PPG. Id. at 2–4. In support of the
rejection, the Examiner finds that Leighton teaches a transparent laminate
structure that can be used as armor. Id. at 2. The Examiner finds that
Leighton teaches that the laminate is made of “two or more” transparent
layers made of glass or transparent plastic such as polycarbonate. Id. (citing
Leighton ¶ 38). The Examiner further finds that Leighton teaches interlayers
of aliphatic polyether polyurethanes between the transparent layers. Id. The
Examiner determines that the interlayers may be of thermoplastic urethane.
Id. at 2–3.
The Examiner additionally cites to Leighton’s teaching that “[l]ayers
14 of [sic] can be arranged in any desired order, have any desired thickness,
and have any desired combination of materials necessary to achieve a
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desired structural or ballistic property.” Id. at 3 (citing Leighton ¶ 39). In
view of such teaching, the Examiner determines that “one of ordinary skill in
the art could be reasonably expected to arrive at the particular number and
arrangement of layers as recited in instant claim 1 in the course of normal
experimentation and optimization of ballistic and structural properties.” Id.
The Examiner relies on PPG as teaching that a gas space between two
glass panes has an effect on the insulating value. Id. The Examiner
determines that “it would have been obvious . . . to configure the gas space
of Leighton such that it performed as an insulated glazing unit as taught by
PPG because it would result in lower heat transfer through the laminate as a
whole.” Id.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 5–8. First, Appellant argues that the Examiner has not presented
a prima facie case of obviousness “because there is no teaching, suggestion
or motivation to modify the cited prior art to arrive at the claimed
invention.” Id. at 5. Appellant asserts that the embodiments taught by
Leighton are each made up of (i) a transparent layer, (ii) an interlayer, (iii) a
transparent layer, (iv) an interlayer, and (v) a transparent layer. Id.
Appellant argues that the Examiner fails to articulate sufficient reasoning to
increase the number of layers, arrange them in the claimed order, and select
the claimed materials for each layer. Id. at 6.
Appellant additionally contends that the Examiner’s determination
that a person of skill in the art “could be reasonably expected to arrive at the
particular number and arrangement of layers as recited in instant claim 1 in
the course of normal experimentation and optimization of ballistic and
structural properties” is unsupported. Id. Appellant argues that the
Examiner does not state what ballistic and structural properties are to be
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Application 15/337,126
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optimized and, therefore, has not supplied adequate “articulated reasoning
with some rational underpinning.” Id.
In the Answer, the Examiner reiterates that Leighton teaches a
laminate structure having “two or more transparent layers 14 of materials
such as, but not limited to, glass, glass-ceramics, transparent ceramics,
transparent plastics, and any combinations thereof.” Answer 11 (quoting
Leighton ¶ 38). The Examiner finds that this includes structures such as the
laminate of claim 1 which requires three transparent polycarbonate layers
and one glass layer. Id. The Examiner further reiterates that Leighton
teaches that one or more transparent layers may be replaced by air gaps
(citing Leighton ¶ 39) that the Examiner equates with insulated glazing
units. Id. With regard to the number of transparent layers, the “Examiner
asserts that no motivation is needed to modify the laminate of Leighton to
add layers because more layers are already contemplated and taught by
Leighton.” Id. at 12.
The Examiner additionally responds to Appellant’s argument
regarding optimization of the teachings of Leighton to arrive at the claimed
device. Id. In this regard, the Examiner determines that “the specific
structural and ballistic properties of interest would be known to one of
ordinary skill in the window and transparent armor art.” Id. The Examiner
further refers to Leighton’s teaching that the layers can be arranged in any
desired order. Id. (citing Leighton ¶ 39).
A claim may be determined to be unpatentable where “a skilled
artisan would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1361 (Fed. Cir. 2007). In stating a ground of rejection, an
Examiner must provide more than conclusory statements to support an
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obviousness argument: “there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
Here, the Examiner does not provide articulated reasoning as to how a
person of ordinary skill in the art would have arrived at the specific number,
type, and arrangement of layers as claimed. The Examiner, for example,
does not point us to any portion of Leighton that would lead one to a specific
laminate having three layers of polycarbonate in conjunction with one layer
of glass.
Further, the Examiner’s determination that one of skill in the art
would have arrived “at the particular number and arrangement of layers as
recited in instant claim 1 in the course of normal experimentation and
optimization of ballistic and structural properties” (Final Act. 3) is
insufficiently supported. It is true that “the discovery of an optimum value
for a result-effective variable generally does not require an inventive step.”
In re Gardner, 449 F. App’x 914, 917 (Fed. Cir. 2011). Further, “[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). Here, however, the Examiner does
not articulate what variables are result-effective nor what ballistic and
structural properties are to be optimized. That is, the Examiner has not
articulated any result to be achieved nor cited a teaching as to how any
particular variable would have affected such result. Accordingly, the
Examiner has not shown that one of skill in the art would have reached the
claimed laminate by optimization.
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In view of the foregoing, we determine that Appellant has shown
reversible error in the Examiner’s rejection of claim 1. We further
determine that Appellant has shown reversible error in the Examiner’s
rejection of claims 2–20 in view of their dependency from claim 1. Appeal
Br. 9. In light of such determination, we need not consider Appellant’s
argument that the claimed laminate exhibits unexpected results.

CONCLUSION

The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 8–10,
14, 15
103 Leighton, PPG 1–3, 8–10,
14, 15
4 103 Leighton, PPG,
Dear
4
5, 6 103 Leighton, PPG,
Michiels
5, 6
7 103 Leighton, PPG,
Michiels, Dear
7
11–13 103 Leighton, PPG,
Higuchi
11–13
16–19 103 Leighton, PPG,
Duncan
16–19
16, 20 103 Leighton, PPG,
Mock
16, 20
Overall
Outcome
1–20

REVERSED