Rudolph Petrmichl et al.

Patent Trials and Appeals Board

Sep 16, 2020

13271828 - (D) (P.T.A.B. Sep. 16, 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.
13/271,828 10/12/2011 Rudolph Hugo Petrmichl JAR-3691-2430 2388
124194 7590 09/16/2020
Guardian Glass, LLC (Nixon)
c/o KCPS IP Dept./Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
EXAMINER
BAND, MICHAEL A
ART UNIT PAPER NUMBER
1794
NOTIFICATION DATE DELIVERY MODE
09/16/2020 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):
koch_pair@firsttofile.com
pair_nixon@firsttofile.com
ptomail@nixonvan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUDOLPH HUGO PETRMICHL, JIANGPING WANG, and
JASON BARBER
Appeal 2019-005912
Application 13/271,8281
Technology Center 1700
Before ERIC B. GRIMES, LINDA M. GAUDETTE, and LILAN REN,
Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

1 The present application is a continuation-in-part of USSN 12/662,443, now
abandoned. The Board’s decision affirming the examiner’s rejections of all
pending claims in this related application under 35 U.S.C. § 112, first
paragraph, as lacking written description support and enablement was
entered on July 30, 2019.
Appeal 2019-005912
Application 13/271,828

2

DECISION ON APPEAL2
The Appellant3 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 2, 7–13, 17–23, 27, 28, and 30–32.4
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to “a method of making a coated article having
an antifungal/antibacterial coating supported by a substrate, and the resulting
coated article product. [The] [c]oated article[] . . . may be used for windows,
table tops, picture frame covers, furniture glass, and/or the like.” Spec. ¶ 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of making a coated article, the method
comprising:
providing a sputtering target comprising Zn and a
sputtering target comprising Zr which are spaced apart from
each other;
sputter-depositing a first layer comprising Zn, so that the
first layer comprising Zn is in direct physical contact with a
glass substrate, via the sputtering target comprising Zn;
sputter-depositing a second layer comprising Zr nitride
over and directly physically contacting the first layer
comprising Zn, so that the first layer comprising Zn is closer to

2 This Decision includes citations to the following documents: Specification
filed Oct. 12, 2011 (“Spec.”); Final Office Action dated Apr. 6, 2018
(“Final”); Appeal Brief filed Feb. 1, 2019 (“Appeal Br.”); Examiner’s
Answer dated May 30, 2019 (“Ans.”); and Reply Brief filed July 30, 2019
(“Reply Br.”).
3 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The Appellant identifies the real party in interest as Guardian
Glass, LLC. Appeal Br. 3.
4 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-005912
Application 13/271,828

3

the glass substrate than is the second layer comprising Zr
nitride;
wherein the first layer comprising Zn is from about 20–
50 Å thick, and the second layer comprising Zr nitride is from
about 100–250 Å thick; and
heat treating the glass substrate with the first and second
layers thereon to produce a heat treated coated article including
a layer comprising ZnxZryOz., wherein the heat treating causes
the first layer comprising Zn and the second layer comprising
Zr nitride to transform into the layer comprising ZnxZryOz.
Appeal Br. 16 (Claims Appendix).
REJECTIONS
1. Claims 1, 2, 7–12, and 21–23 are rejected under 35 U.S.C.
§ 103(a) over Petrmichl (US 2008/0020211 A1, pub. Jan. 24, 2008) and
Iwabuchi (US 2006/0189132 A1, pub. Aug. 24, 2006). Final Act. 2.
2. Claim 32 is rejected under 35 U.S.C. § 103(a) over Petrmichl,
Iwabuchi, and Malmstrom (US 2008/0251120 A1, pub. Oct. 16, 2008). Final
Act. 6.
3. Claims 17–19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Petrmichl and Iwabuchi. Final Act. 6.
4. Claim 13 is rejected under 35 U.S.C. § 103(a) over Petrmichl,
Iwabuchi, and Kawamata (US 6,358,440 B1, iss. Mar. 19, 2002). Final Act.
10.5

5 In the Final Office Action, Malmstrom is cited in the statement of the
rejection. Final Act. 10; see also Ans. 3. In the Response to Argument
section of the Answer, the Examiner states that this was a typographical
error. Ans. 8.
Appeal 2019-005912
Application 13/271,828

4

5. Claim 20 is rejected under 35 U.S.C. § 103(a) over Petrmichl
Iwabuchi, and Veerasamy (US 2006/0057294 A1, pub. Mar. 16, 2006). Final
Act. 11.
6. Claims 27, 28, and 30 are rejected under 35 U.S.C. § 103(a)
over Petrmichl, Iwabuchi, and Malmstrom. Final Act. 11.
7. Claim 31 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Petrmichl, Iwabuchi, Malmstrom, Anzaki (US 2004/0151942 A1, pub.
Aug. 5, 2004), and Sato (US 7,172,681 B2, iss. Feb. 6, 2007). Final Act. 15.
OPINION
The Examiner rejected independent claims 1 and 17 as obvious over
the combination of Petrmichl and Iwabuchi. Final Act. 2, 6. The Examiner
rejected independent claim 27 as obvious over the combination of Petrmichl
Iwabuchi, and Malmstrom. Id. at 11. As further explained below, the
Appellant has persuaded us that the Examiner reversibly erred in rejecting
the claims because the Examiner has not explained sufficiently why the
ordinary artisan would have deposited layers comprising Zn and Zr nitride
having the claimed thicknesses of “about 20–50 Å” and “about 100–250 Å,”
respectively. See Appeal Br. 11–12; Reply Br. 2–3.
Petrmichl describes forming a Zn-doped zirconium-based layer, such
as Zn:ZrOx, by (1) using a mixed zinc and zirconium metal sputtering target,
(2) co-sputtering a Zn or ZnO target and a Zr or ZrO target, or (3) depositing
discrete Zn- and Zr-containing layers and then heat treating to form a mixed
Zn:Zr oxide layer by diffusion. Petrmichl ¶ 36. Petrmichl’s Figure 5
embodiment is an example of depositing discrete Zn and Zr containing
layers and then heat treating to form a Zn:ZrOx layer. Id. ¶ 47. As the
Examiner finds, Petrmichl and the Appellant disclose overlapping thickness
Appeal 2019-005912
Application 13/271,828

5

ranges for the ZnxZryOz layers formed in their respective methods. Compare
Ans. 7 (“10–1000 angstroms (1–100 nm), and most preferably 400–600
angstroms (40–60 nm)” (citing Spec. ¶ 76)), with Petrmichl ¶ 34 (“from
about 1–250 nm . . . and most preferably from about 5–50 nm”). The
Examiner acknowledges that Petrmichl does not disclose thicknesses for the
Figure 5 embodiment’s individual Zn- and Zr-containing layers. See Ans. 7;
Final Act. 3–4. The Examiner determined that because
the thicknesses of the ZnOx layer and ZrNx layer are not result-
effective variables, it would [have been] obvious to one of
ordinary skill to deposit the ZnOx and ZrNx layers at a variety
of thicknesses, including the claimed thickness of 20–50
angstroms for [the] ZnOx layer and 100–250 angstroms for the
ZrNx layer, resulting in a variety of thickness ratios, including
the claimed ratios, as a result of routine experimentation in
order to yield the thickness of the Zn:ZrOx layer being from 5–
50 nm as taught by Petrmichl et al at para 0034.
Final Act. 4 (emphasis added); see also Ans. 7–8 (“[T]he individual
thickness of the Zn and Zr layers are not result-effective variables; the
annealed/heat-treated combined ZnZrO layer is the result-effective variable
that results in sufficiently reducing the antimicrobial activity according to
Appellant’s fig. 2 and para 0076.”).
“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.” In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed.
Cir. 2012) (citation omitted). This rule does not apply, however, where (1)
“the results of optimizing a variable, which was known to be result effective,
were unexpectedly good,” or (2) “the parameter optimized was not
recognized to be a result-effective variable.” In re Antonie, 559 F.2d 618,
620 (CCPA 1977).
Appeal 2019-005912
Application 13/271,828

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Because the Examiner found that the prior art does not recognize the
Zn- and Zr-containing layers’ thicknesses as result-effective variables, the
Examiner’s determination that achieving the claimed thicknesses would
have been a matter of “routine experimentation” (Final Act. 4) was
improper. The Examiner has not offered any other reason why the ordinary
artisan would have adjusted Petrmichl’s individual layer thicknesses to fall
within the claimed ranges. “The mere fact that the prior art could be so
modified would not have made the modification obvious unless the prior art
suggested the desirability of the modification.” In re Gordon, 733 F.2d 900,
902 (Fed. Cir. 1984).
CONCLUSION
The Appellant has argued persuasively that the Examiner’s fact
finding and reasoning is insufficient to support a prima facie case of
obviousness as to independent claims 1, 17, and 27. Accordingly, we do not
sustain the rejections of these claims. Because the Examiner’s obviousness
conclusion as to the dependent claims is based on the same insufficient fact
finding and reasoning, we also do not sustain the rejections of these claims.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 7–12,
21–23
103(a) Petrmichl, Iwabuchi 1, 2, 7–12,
21–23
32 103(a) Petrmichl,
Iwabuchi,
Malmstrom
32
17–19 103(a) Petrmichl, Iwabuchi 17–19
Appeal 2019-005912
Application 13/271,828

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
13 103(a) Petrmichl,
Iwabuchi,
Kawamata
13
20 103(a) Petrmichl,
Iwabuchi,
Veerasamy
20
27, 28, 30 103(a) Petrmichl,
Iwabuchi,
Malmstrom
27, 28, 30
31 103(a) Petrmichl,
Iwabuchi,
Malmstrom,
Anzaki, Sato
31
Overall
Outcome:
  1, 2, 7–13,
17–23, 27,
28, 30–32

REVERSED