SCHOTT AG

Patent Trials and Appeals Board

Sep 21, 2021

2020005142 (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.
15/066,650 03/10/2016 Urban WEBER 0011227USU/4445 3415
27623 7590 09/21/2021
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
JOHNSON, NANCY ROSENBERG
ART UNIT PAPER NUMBER
1783
MAIL DATE DELIVERY MODE
09/21/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URBAN WEBER, SILKE KNOCHE, ROLAND DUDEK,
THOMAS KORB, and STEPHAN CORVERS
Appeal 2020-005142
Application 15/066,650
Technology Center 1700

Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–9, 21, and 23–27. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Schott AG. (Appeal
Br. 2.)
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Application 15/066,650

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STATEMENT OF THE CASE
Appellant’s Specification notes that glass cooktops include enamel-
based colored designs at their surfaces, in part to mark cooking zones.
(Spec. ¶ 3.) The Specification explains that cookware shifting over the top
of these colored surfaces cause unpleasant noise. (Id. ¶ 4.)
According to Appellant’s Specification, the prior art, when designing
decorations for the coating of glass substrates, considered issues such as
abrasion resistance, temperature resistance, adherence, mechanical strength
of the imprinted substrate, resistance against chemically aggressive
substances, and cleanability, and aimed at decorations having a low
roughness, but did not investigate “noise generation during the displacement
of cookware.” (Id. ¶¶ 5–6, 10.) Appellant’s invention is directed at “a
coated substrate, preferably of glass or glass ceramic, comprising a glass-
based decoration that presents a noised-optimized behavior when shifting
objects thereon.” (Id. ¶ 11.)
Claims 1, 3–9, 21, and 23–27 are on appeal. Claims 1 and 3,
reproduced below (with paragraphing added), are illustrative of the claimed
subject matter:
1. A coated substrate, comprising a substrate and a noise-
optimized glass-based colored decoration on said substrate,
said coated substrate having at least an acuteness < 3 acum
and a loudness < 7 sone, measured according to DIN
45631/A1:2010-03 and DIN 45692:2009-08 on said
coated substrate with outer dimensions 500 x 550 mm2
coated with said colored decoration, while displacing a
steel-enamel pot at a speed of 0.08 m/s on said coated
substrate,
said steel-enamel pot having an enamel bottom with
a diameter of the stand bottom of 17 cm, a height of
8.5 cm, an inner diameter at the upper rim of 20 cm,
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having an empty mass of 1.6 kg and an extra mass
of 1 kg received within the inside, said enamel
bottom having a Vicker’s hardness of 635 ± 50 HV
0.1/10 according to DIN EN ISO 6507-1 and a
roughness Ra between 0.2 and 0.9 μm according to
DIN EN ISO 4288:1998,
and wherein said colored decoration is made of a color
paste that, prior to burning-in, is substantially free of
agglomerates greater than 10 microns.
3. A coated substrate, comprising a substrate and a noise-
optimized glass-based colored decoration on said substrate,
wherein said colored decoration has
a roughness portion determined by white
light interference microscopy rms in the range of 10
mm-1 to 20 mm-1 being smaller than 0.1
micrometers, and
a roughness portion rms in the range of 20
mm-1 to 50 mm-1 being smaller than 0.045
micrometers,
and wherein said colored decoration is made of a color
paste that, prior to burning-in, is substantially free of
agglomerates greater than 10 microns.

(Appeal Br. 13 ((ix) Claims Appendix).)

The prior art relied upon by the Examiner is:
Name Reference Date
Ogo JP 2014-037926 A Feb. 27, 2014
Iritani US 2010/0313871 A1 Dec. 16, 2010

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The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 3–7, 9, 21, 23–25, and 27 under 35 U.S.C. § 102(a)(1) as
anticipated by Ogo.2
Claims 1, 3–7, 9, 21, 23–25 and 27 under 35 U.S.C. § 103 as
unpatentable over Ogo.
Claims 8 and 26 under 35 U.S.C. § 103 as unpatentable over Ogo and
Iritani.
DISCUSSION
Anticipation
Claim 1
The Examiner found that Ogo discloses a coated substrate, namely “a
top plate for a cooker” that includes “a plate body and printed layer” where
the printed layer is formed of a paste that may contain a pigment. (Final
Action 3.) The Examiner further found that Ogo teaches that the maximum
particle size of the printed layer is 4 microns, but is at least 0.1 microns or
more to avoid aggregate particles, which allows for small surface roughness.
(Id. (citing Ogo ¶¶ 7, 9, 24, 25).) The Examiner further found that Ogo
teaches that the thickness of the printed layer is less than 5 microns. (Id.
(citing Ogo “PROBLEM TO BE SOLVED”).) The Examiner further found
that the printed layer of Ogo has a surface roughness of 0.15 microns or less
and a maximum roughness of 1 micron or less. (Id. (citing Ogo ¶ 23).)

2 The Examiner relies on a machine-generated translation of this Japanese
published Application, as do we.
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The Examiner also found that while Ogo does not explicitly disclose
the paste is substantially free of agglomerates greater than 10 microns, that
limitation would necessarily result from Ogo’s teachings. (Final Action 3–4;
Ans. 6.) In particular, the Examiner noted that Ogo’s teaching of avoiding
aggregate particles so as to achieve a small surface roughness (Ra of 0.15
microns or less and Rmax of 1 micron or less) by maintaining particles that
are at least 0.1 microns but making sure the maximum particle size in the
paste is not more than 4 microns, along with Ogo’s teaching of having a
finished printed layer that is less than 5 microns would lead to a paste that
would not have agglomerates greater than 10 microns, as a 10 micron sized
aggregate would be difficult to use to achieve the goals of Ogo. (Final
Action 3–4; Ans. 5.)
The Examiner further found that Ogo teaches the glass powder of the
printed layer is formed into a paste having a maximum particle size of 4
microns, is printed on the cooking surface to a thickness of 5 microns or
less, and then is fired at 800 to 900 ºC. (Final Action 3–4.) The Examiner
noted that the disclosed invention
starts with a glass frit particle size of 10 nm to 50 microns and
agglomerate particles of 5 microns or less, applied to the
surface, and burnt-in at 600 to 1200°C (instant Specification,
[0037], [0042], [0056]-[0057]).
(Id. at 4.) The Examiner concludes
[s]ince the methods for forming the coating and the coating
compositions are substantially similar, there is further evidence
that the aggregate size in the paste and surface structure would
be expected to be substantially similar.
(Id.)
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Regarding the claimed acuteness and loudness, the Examiner found
that Ogo’s teaching of a coated surface that has a surface roughness of 0.15
microns or less and an Rmax of 1 micron or less (Ogo ¶ 23) would be
expected to produce a coated surface having an acuteness of less than 3
acum and a loudness of less than 7 sone, as would the specific example of a
coated surface with an Ra of 0.08 microns given Appellant’s Tables 3 and 4
where all the examples with an Ra of 0.15 microns or less and a
low Rmax have the claimed acuteness [and] loudness. . . .
(Id.) In support of that conclusion, the Examiner found that (a) every
example in Appellant’s Specification which has a lower Ra and Rz3 (i.e.,
Spec. ¶ 116, Table 3: Examples 1a, 6, 10, and 10a) than what is required by
Ogo has loudness and acuteness values less than the upper limit recited in
the claim, and (b) the only examples which do not have the claimed loudness
and acuteness values in Appellant’s Specification are those in which the Ra
and Rz are outside the levels taught by Ogo (e.g., Spec. ¶ 116, Table 3:
Example 7). (Ans. 8.)
We agree with the Examiner’s finding of anticipation. Ogo teaches
top plates for cooking appliances that are printed with a glass powder layer
as a paste, which layer can also include a pigment, that is fired onto the plate
substrate. (Ogo “PROBLEM TO BE SOLVED,” ¶ 20.) Ogo teaches
making such top plates “in which scratches hardly occur when cleaning by a
scraper.” (Ogo “PROBLEM TO BE SOLVED.”) Ogo achieves this result
by having (1) a printed layer thickness of 5 μm or less, though “preferably 3
μm or less,” (2) a maximum particle size of the glass powder in the glass

3 The Examiner contends that Rz refers to elevations on the surface, like
Rmax. (Ans. 9.) Appellant does not dispute this.
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powder paste layer of 4 μm or less, more preferably 3.1 μm or less, and (3)
an average particle diameter of the glass powder of 1 μm or less, more
preferably 0.8 μm or less, but greater than 0.1 μm to avoid glass powder
particle aggregation in the printed layer. (Id. ¶¶ 7, 10, 23, 24.) Ogo further
teaches to achieve the function that scratches hardly ever occur on these
surfaces when cleaned by a scraper that the printed layer has an average
surface roughness (Ra) of “0.2 μm,” though “it is more preferable that the
surface roughness of the surface of the printed layer [] is 0.15 μm or less”
and the maximum roughness of the surface of the printed layer is “preferably
2 μm or less, more preferably 1 μm or less.” (Id. ¶ 23.)
Ogo also teaches the preferred particle diameter of any pigment in the
glass powder paste, which follows the preferences for the glass powder
itself. In other words, the maximum particle diameter of the pigment is
“preferably 4.0 μm or less, more preferably 3.5 μm or less[, a]nd more
preferably 3.1 μm or less” with the average particle diameter is “preferably 1
μm or less, more preferably 0.8 μm or less.” (Id. ¶ 25.)
Furthermore, Ogo provides Examples of printed layers that meet the
description set forth above. (Ogo ¶¶ 31–35 (Examples 1–5).)
We agree with the Examiner’s position and rationale that, absent
evidence to the contrary, the claimed acuteness and loudness limitations
would necessarily have been met with printed layers made within the scope
of the teachings of Ogo and that the “substantially free of agglomerates
greater than 10 microns” limitation would also necessarily have been met.
Regarding the agglomerate, as the Examiner explained (Final Action 7; Ans.
5), Ogo teaches that it is important to avoid aggregation of particles so that
the small surface roughness (Ra preferably 0.15 microns or less and Rmax
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preferably 2 microns or less) may be achieved in a printing layer that is 3
microns or less, and indicates the average particle size is preferably between
1 micron and 0.1 microns. (Ogo ¶¶ 23–24; and compare Ogo Examples 1–5
(¶¶ 29–35), with Ogo Comparative Examples 1–4 (¶¶ 36–39), and see Ogo
¶¶ 40–42.4)
The acuteness and loudness limitations are functional limitations that
are a result of roughness and elevations at the surface of decorations. (See
Spec. ¶¶ 9, 11, 13, 14, 20, 51.) Ogo teaches controlling the maximum and
minimum average diameter of the particles of the paste layer and maximum
diameter, as well as maximum pigment diameter and maximum average
pigment diameter, to provide for very low roughness 0.15 microns or less of
a coated substrate and an Rmax of 2 microns or less.
[I]t is elementary that the mere recitation of a newly discovered
function or property, inherently possessed by things in the prior
art, does not cause a claim drawn to those things to distinguish
over the prior art. Additionally, where the Patent Office has
reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the
subject matter shown to be in the prior art does not possess the
characteristic relied on.
In re Best, 562 F.2d 1252, 1254–55 (CCPA 1977) (quoting In re Swinehart,
439 F.2d 210, 212–13 (CCPA 1971)). As the Examiner further noted (see
Ans. 8), the examples in Appellant’s Specification where the Ra was less

4 Paragraphs 41 and 42 in the original (untranslated) version of Ogo are
tables reporting the results of the scratch resistance tests performed on the
samples prepared in Examples 1–5 and comparative Examples 1–4, as
described in paragraph 40.
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than 0.15 (color 1a and color 6 Table 3), had a loudness and acuteness
meeting the claim requirements. Thus, the Examiner had reason to believe
the functional limitation would be met by at least the Examples of Ogo.
For the foregoing reasons, we disagree with Appellant (Appeal Br. 5)
that the Examiner has not established a prima facie case of inherency
regarding the foregoing limitations. “[W]hen the PTO shows sound basis
for believing that the products of the applicant and the prior art are the same,
the applicant has the burden of showing that they are not.” In re Spada, 911
F.2d 705, 708 n.3 (Fed. Cir. 1990). We conclude that Appellant has not met
its burden of showing the printed substrates of Ogo are not the same as the
claimed coated substrate.
Appellant argues that Ogo discloses a different method to control
agglomeration than that of Ogo, i.e., use of dry grinding in Appellant’s
Specification as compared to particle size control used by Ogo, and thus one
cannot conclude that the methods of making the printed layer of Ogo
necessarily result in the agglomerate size limitation claimed. (Id. at 5–6.)
We do not find Appellant’s argument persuasive to show error in the
Examiner’s conclusion that the claimed agglomerate size restriction would
have necessarily been met given Ogo’s teaching of avoiding agglomerates
and sizing particles in a way to avoid agglomeration along with the teaching
to provide a low Ra and a thickness of the printed layer being 3 microns or
less. In other words, Appellant has not established that dry grinding is the
only way to avoid agglomerates of greater than 10 microns. We find the
Examiner has established sufficient reasoning to reasonably find that Ogo’s
paste used to obtain the coated substrate is substantially free of agglomerates
greater than 10 microns.
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Regarding the sonic attributes, Appellant argues that the Office has
not established that maintaining a minimum particle size would necessarily
result in the sonic attributes and that the Specification does not suggest they
“are the result of very low surface roughness.” (Appeal Br. 6–7.) We do not
find these arguments persuasive. As discussed, the Examiner’s evidence
was sufficient to shift the burden to Appellant to establish Ogo’s teachings
of the printed layer and examples thereof would not have necessarily
resulted in substrates having the functional acuteness and loudness
characteristics. Best, 562 F.2d at 1255. That Appellant’s Specification does
not suggest these attributes are the result of low surface roughness does not
establish Ogo’s teachings do not arrive at a coated substrate having those
characteristics, nor does the fact that Ogo itself does not address these
functional characteristics. “Insufficient prior understanding of the inherent
properties of a known composition does not defeat a finding of anticipation.”
Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1349 (Fed. Cir. 1999).
Moreover “inherent anticipation does not require that a person of ordinary
skill in the art at the time would have recognized the inherent disclosure.”
Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir.
2003) (citing cases).
Appellant also argues that the Declaration of inventors Weber and
Knoche5 (the “Declaration”) establish that plates of Ogo were tested and
“while there was some correlation to acuteness . . . there is no correlation
between roughness and loudness.” (Appeal Br. 7.) We do not find the
Declaration establishes error in the Examiner’s rejection. First, the

5 This declaration is dated May 24, 2019.
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Declarants do not state that top plates made according to all of the
requirements of Ogo were tested (i.e., that had the particle diameter
limitations, plate thickness and Ra and Rmax characteristics disclosed),
much less that plates made according to Examples 1–5 were made and tested
for acuteness and loudness. Indeed, it is not clear what prior art was tested.
The Declarants state only that Ogo requires a surface roughness of 0.15
microns or less and they had investigated top plates “similar to the Ogo
reference” “[w]hen making our invention.” (Declaration ¶¶ 8, 9.) And
while the Declaration indicates that during “the course of our investigation,”
the inventors did not find a correlation between loudness and roughness
characteristics such as Rz and Ra, even though some correlation to acuteness
was found (Declaration ¶ 9), such does not establish that Ogo’s plates set
forth in examples 1–5 were tested and did not achieve acuteness below 3
acum and loudness below 7 sone. Thus, Appellant has not established a
difference between the Ogo prior art printed plate and the claimed coated
substrate.
In light of the foregoing, we affirm the Examiner’s rejection of claim
1 as being anticipated by Ogo. Claims 4–9 have not been argued separately
and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

Claim 3
Appellant’s claim 3 has the agglomerate limitation like claim 1, but
does not have an acuteness or loudness limitation like claim 1. Appellant’s
claim 3 though has two different “roughness portion” limitations which are
dependent on the range of the white light interference microscopy: 1) where
the range is 10–20 mm-1, the roughness portion is smaller than 0.1 micron,
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and 2) where the range is 20–50 mm-1, the roughness portion is smaller than
0.045 micron. The Examiner found that these values would be inherent in
the printed substrate described by Ogo.
Although Appellant separately identifies this claim in the argument
section of the brief, Appellant does not provide different arguments than
those set forth above for claim 1. As discussed above, we do not find
Appellant’s arguments persuasive of error in the Examiner’s rejection.
Thus, we affirm the Examiner’s rejection of claim 3 as being anticipated by
Ogo. Claims 21, 23–25, and 27 have not been argued separately and
therefore fall with claim 3. 37 C.F.R. § 41.37(c)(1)(iv).

Obviousness: Claims 1, 3–7, 9, 21, 23–25, and 27 over Ogo
We vacate the Examiner’s rejection of claims 1, 3–7, 9, 21, 23–25,
and 27 as being obvious over Ogo as being cumulative to the anticipation
rejection. See Manual of Patent Examining Procedure § 2120 (I), (9th Ed.
rev. 10, June 2020) (“Prior art rejections should ordinarily be confined
strictly to the best available art. . . . Merely cumulative rejections, i.e., those
which would clearly fall if the primary rejection were not sustained, should
be avoided.”); see also generally Ex parte Heiman, No. 2009-009257, 2010
WL 1003899 (BPAI 2010) (nonprecedential) (vacating cumulative
rejections).

Obviousness: Claims 8 and 26 over Ogo and Iritani
Claims 8 and 26 require the substrate to be a lithium aluminum
silicate glass ceramic. The Examiner found that, while Ogo does not
specifically disclose this claimed substrate, “Iritani discloses a crystallized
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glass plate and antifouling film (abstract) for cookers ([0001]) where the
glass article is lithium aluminum silicate glass ceramic ([0025]).” (Final
Action 5.) The Examiner concluded that it would have been obvious to use
such a substrate in Ogo as it is a known suitable crystallized glass for use in
a cook top, as taught by Iritani. (Id. at 5–6.)
Appellant does not dispute the foregoing. We therefore affirm the
Examiner’s rejection. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(“When the appellant fails to contest a ground of rejection to the Board, . . .
the Board may treat any argument with respect to that ground of rejection as
waived.”).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–7, 9,
21, 23–25,
27
102(a)(1) Ogo 1, 3–7, 9,
21, 23–25,
27

1, 3–7, 9,
21, 23–25,
27
1036 Ogo
8, 26 103 Ogo, Iritani 8, 26
Overall
Outcome
1, 3–9, 21,
23–27

6 As indicated above, we vacate this rejection.
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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) (2019).
AFFIRMED