Timothy A. Dennis et al.

Patent Trials and Appeals Board

Apr 14, 2020

13474850 - (D) (P.T.A.B. Apr. 14, 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.
13/474,850 05/18/2012 Timothy A. DENNIS JAR-3691-2649 8014
124194 7590 04/14/2020
Guardian Glass, LLC
c/o KCPS IP Dept./Shannon Gonsalves
4111 E. 37th Street North
Mail Stop T2C
Wichita, KS 67220
EXAMINER
DEHGHAN, QUEENIE S
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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 TIMOTHY A. DENNIS and ANDREW W. PANTKE

Appeal 2019-002519
Application 13/474,850
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–14, 16–21, and 23. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 An oral hearing was conducted on March 26, 2020. A copy of the hearing
transcript will be made of record upon its availability.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Guardian Glass,
LLC. Appeal Brief (“Appeal Br.”) filed October 1, 2018, 2.
Appeal 2019-002519
Application 13/474,850

2
CLAIMED SUBJECT MATTER
The claims are directed to methods for making a vacuum insulated
glass (“VIG”) window unit including a pump-out tube. Spec. 1, Title.
Appellant discloses methods for installing the pump-out tube in a hole
formed in at least one glass substrate so as to reduce an amount of residual
frit adhesive material that may be present at or in proximity to the exposed
end of the tube. Id. at 1:11–14. Appellant further discloses that because
residual frit at the exposed end of the tube may interfere with heat sealing of
the tube, reducing such residual frit provides a more stable and suitable seal
against undesirable air leakage into or from the VIG window unit. Id. at
1:15–20.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A method of making a vacuum insulated glass window unit,
the method comprising:
providing a first substrate having a hole defined therein,
the hole to be a pump-out hole in the vacuum insulated glass
window unit and having a sidewall substantially
perpendicular to a major surface of the first substrate;
applying a frit inclusive paste to at least a lower portion of
a cylindrical glass pump-out tube;
inserting an end of the cylindrical glass pump-out tube on
which the frit inclusive paste has been applied into the hole
defined in the first substrate, so that the cylindrical glass
pump-out tube slides along and is substantially parallel to the
sidewall of the hole, wherein said frit inclusive paste
substantially covers at least a portion of an inner sidewall of
said hole when the glass pump-out tube is in the hole; and
evacuating a cavity formed between the first substrate and
a second substrate to a pressure less than atmospheric
pressure using the glass pump-out tube, and then sealing a tip
portion of the glass pump-out tube.
Appeal 2019-002519
Application 13/474,850

3
Appeal Br. 22 (Claims Appendix).
Independent claim 23 recites a similar method of making a VIG
window unit comprising inserting a cylindrical glass pump-out tube having
frit material applied to a lower end thereof into a hole in a glass substrate
and evacuating a cavity between the glass substrate and another substrate.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Tsai et al. (“Tsai”) US 5,897,927 Apr. 27, 1999
Aggas US 6,506,272 B1 Jan. 14, 2003
Son et al. (“Son”) US 2009/0064717 A1 Mar. 12, 2009
Cooper et al. (“Cooper”) US 2009/0155500 A1 June 18, 2009
Cooper et al. (“Cooper2”) US 2010/0330308 A1 Dec. 30, 2010
Nakayama JP 2003199671 A July 15, 2003

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
1. Claims 1, 2, 5–7, 9, 10, 14, 19–21, and 23 as unpatentable over
Aggas in view of Cooper;
2. Claims 3 and 4 as unpatentable over Aggas in view of Cooper, and
further in view of Cooper2;
3. Claims 8, 16, and 17 as unpatentable over Aggas in view of
Cooper, and further in view of Tsai;
4. Claims 11–13 as unpatentable over Aggas in view of Cooper, and
further in view of Nakayama; and
Appeal 2019-002519
Application 13/474,850

4
5. Claim 18 as unpatentable over Aggas in view of Cooper, and
further in view of Son.
OPINION
Appellant argues claims 8, 10, 21, and 23 separately from claim 1, but
does not otherwise argue the remaining claims or rejections separately.
Further, Appellant’s arguments as to claim 23 is substantially the same as
those for claim 1. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), claims 2,
5–7, 9, 14, 19, 20, and 23 stand or fall with claim 1. We address Appellant’s
arguments as to claims 1, 8, 10, and 21 separately below.
Claim 1
The Examiner’s Position
The Examiner finds that Aggas discloses a conventional method for
making a VIG window unit substantially as recited in claim 1, including
sealing the pump-out tube to the window substrate using glass frit paste,
except that Aggas fails to specify that the glass frit paste is applied to a
lower portion of the pump-out tube before insertion into a hole formed in the
substrate. Final Act. 3. For this feature, the Examiner finds that Cooper, like
Aggas, discloses the conventional method for making a VIG window unit,
but also teaches another method for sealing the pump-out hole in the
window substrate using a bung or plug. Id. at 3–4. In addition, the Examiner
finds that Cooper teaches that before the bung is inserted into the hole, a frit
paste is applied externally around the perimeter of the bung, as well as to the
sealing surfaces of the hole. Id. at 4. The Examiner concludes that, since
there are only a few known ways for providing a frit paste around the pump-
out hole of the window substrate, it would have been obvious to have
applied the frit paste to the perimeter of the lower portion of Aggas’ pump-
Appeal 2019-002519
Application 13/474,850

5
out tube before inserting it into the hole, “as a predictable means for
successfully achieving a seal between the pump-out tube and the hole.” Id.
Appellant’s Position
Appellant argues that Aggas and Cooper teach away from the method
of claim 1 “by teaching that pump-out tubes should not even be used.”
Appeal Br. 10. In this regard, Appellant contends that Aggas teaches that
pump-out tubes should not be used because they are burdensome and
expensive. Id. at 11. Appellant asserts that Aggas instead uses a cover and
seal. Id. Appellant also contends that Cooper criticizes cylindrical pump-out
tubes and explains that such tubes should not be used. Id. at 10 (citing
Cooper ¶¶ 4–11 and Figs. 1, 2). Appellant asserts that Cooper, therefore,
goes in a different direction by using a large hole and bung in order to avoid
using a pump-out tube. Id. at 11.
In addition, Appellant argues that the frit paste is applied to Cooper’s
bung is only because the bung is not cylindrical and the hole walls are
significantly angled to support frit such that the frit does not drip into the
gap between the substrates. Appeal Br. 11. Further, Appellant argues that
Aggas fails to disclose the material of the pump-out tubes. Id. at 12–13.
Appellant asserts that Tsai teaches away from glass pump-out tubes because
they are fragile and prone to outgassing during sealing. Id. at 13.
Discussion
We do not find Appellant’s teaching away arguments persuasive of
reversible error. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
Appeal 2019-002519
Application 13/474,850

6
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). Further, references in a combination may be said to teach
away where their combined teachings would produce a “seemingly
inoperative device”. In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969).
Teaching an alternative or equivalent method, however, does not teach away
from the use of a claimed method. In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004); In re Dunn, 349 F.2d 433, 438 (CCPA 1965). Rather, teaching
away requires “clear discouragement” from implementing a technical
feature. In re Ethicon, Inc., 844 F.3d 1344, 1351 (Fed. Cir. 2017). “A
reference teaches away when it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d
1344, 1354 (Fed. Cir. 2012) (quoting Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006) (quotations omitted)).
There is no dispute that both Aggas and Cooper disclose that the use
of pump-out tubes in the production of VIG window units was well known
in the art. See also Spec. 2:11–4:19, Figs. 1 and 2. As Appellant contends,
Aggas teaches that the use of pump-out tubes that must be permanently
sealed to glass substrates is not always desirable because they are
burdensome and/or expensive. Aggas 2:3–7. Aggas teaches an alternative
technique for evacuating the interior of a VIG window unit that is
“simplified and less burdensome and/or costly.” Id. at 2:8–12. Moreover,
Cooper teaches that pump-out tubes typically are melted with a laser which
may disadvantageously trap radicals in and compromise the vacuum
between the glass substrates. Cooper ¶ 8. In addition, Cooper discusses the
problems when the glass pump-out tube inner diameter is too small (i.e.,
Appeal 2019-002519
Application 13/474,850

7
vacuum may not be reached) or too large (i.e., difficult to focus laser on the
tube to melt it). Id. ¶ 7. As such, Cooper teaches an alternative technique for
evacuating the interior of a VIG window unit having increased diameter and
improved vacuum and sealing. Id. ¶ 9.
While both Aggas and Cooper discuss pump-out tubes for use in
evacuating VIG window units, each teaches an alternative method that does
not use such tubes. However, contrary to Appellant’s argument, we find that
the Aggas and Cooper teach alternative methods to, and do not teach away
from, the use of pump-out tubes. Indeed, both Aggas and Cooper
acknowledge (as does Appellant) that the use of pump-out tubes was
conventional in the art. Aggas also teaches that the use of such tubes is “not
always desirable,” which suggests that there are times when such tubes are
desirable. Cooper discusses the balance between smaller and larger
diameters, suggesting that it was within the routine skill in the art to select a
tube diameter that provided adequate evacuation while permitting focusing
of a laser to permit sealing of the tube. That Aggas and Cooper recognize
certain disadvantages to pump-out tubes does not alone discourage
investigation into their use in all circumstances. See Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) (“The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another.”).
We further note that Cooper teaches that taper of the bung and hole
may be between about 5–50 degrees from vertical, “or it may be
substantially straight” Cooper ¶¶ 27, 34. Thus, contrary to Appellant’s
Appeal 2019-002519
Application 13/474,850

8
argument, Cooper contemplates the use of frit paste on the wall of the bung
and hole wall whether the hole is tapered or straight.
As to the use of glass tubes, we note that Aggas incorporates by
reference two US patents, including Tsai, both of which disclose the use of
glass tubes was known. We consider Tsai’s teaching of a preference for
metal tubes to be an alternative to, rather than a teaching away from, glass
tubes. Moreover, Aggas discloses that, after evacuation, an end of the tube is
melted to seal tube, and that a getter may be provided to counteract any rise
in pressure due to any out-gassing from the glass. Aggas 1:42–46. Because
Tsai teaches that metal tubes are pinched closed rather than melted and
Cooper teaches that off-gassing during sealing of a glass tube may occur, we
find that Aggas suggests the use of glass tubes in the conventional process.
As such, both Aggas and Cooper teach or suggest the use of glass pump-out
tubes was known for use in the conventional process.
Accordingly, for the reasons given in the Examiner’s Answer and
above, we discern no error in the Examiner’s obviousness analysis and
conclusion as to claim 1.
Claim 8
Claim 8 depends from claim 1, via claim 7, and further requires that
the first and the second portions of the hole have the same diameter.
The Examiner finds that Aggas teaches forming a hole for a pump-out
tube in a substrate “by at least drilling a first portion of the hole using a first
drill bit from a first side of the first substrate and drilling a second portion of
the hole using a second drill bit from a second side of the first substrate
opposite the first side.” Final Act. 5. The Examiner also finds that Aggas
teaches that pump out holes may have only one diameter. Id. at 7. The
Appeal 2019-002519
Application 13/474,850

9
Examiner finds that Cooper teaches holes with different diameters, as well
as holes with equal diameters, from one surface to the other surface of a
substrate. Id. Likewise, the Examiner finds that Tsai also teaches a VIG
window unit with a pump-out hole that has a single diameter. Id. The
Examiner concludes that it would have been obvious to have adapted Aggas’
double drilling method to provide for alternatively shaped holes, including
holes having a single diameter, since such holes were known. Id.
Appellant argues that Aggas teaches that double drilling typically
means that two separate drilling diameters are used during hole formation.
Appeal Br. 14. Appellant also contends that Aggas teaches that double
drilling is problematic and thus teaches away from its use. Id. In addition,
Appellant contends that double drilling holes with the same diameter is
counter-intuitive and not found in the prior art. Id. at 14–15.
Appellant’s arguments are not persuasive of reversible error. As the
Examiner finds (Ans. 6), although Aggas teaches that double drilling may be
burdensome and/or expensive, such does not amount to a teaching away
from the use of double drilling. Indeed, Aggas teaches that double drilling is
a known process for forming holes in a glass substrate. Moreover, although
Aggas teaches that double drilling typically means drilling hole portions of
different diameter, such teaching does not preclude its use for drilling hole
portions of the same diameter. Given that pump-out holes having both
different diameters and the same diameter are known, we discern no error in
the Examiner’s conclusion that it would have been obvious to form such
holes using Aggas’ known double drilling technique. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc.,
Appeal 2019-002519
Application 13/474,850

10
550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” Id. at 417.
Claims 10 and 21
Claim 10 depends from claim 1, and further requires forming a bump
of frit material forced out of the hole during the step of inserting the pump-
out tube into the hole.
Claim 21 depends from claim 1, and further requires that the volume
of frit material applied to the tube is sufficient to fill at least a substantial
portion of the gap between the pump-out tube and the side of the hole in the
substrate and to form a bump of frit material at the top of the hole.
The Examiner finds that Cooper discloses forming a bump comprising
frit material disposed proximate a top of the hole and surrounding a portion
of the bung extending outside the hole. Final Act. 5. In addition, the
Examiner finds that the frit material applied to Cooper’s bung is sufficient to
fill the gap formed between the bung and the hole. Id. at 6.The Examiner
determines that applying Cooper’s teaching regarding applying the frit
material to Aggas’ pump-out tube similarly would fill the gap between the
tube and the hole and would form such a bump. Id. at 5–6
Appellant argues that frit material in Cooper was not forced out of the
hole during the step of inserting as recited in claim 10. Appeal Br. 15.
Appellant contends that the shape of the frit material in Cooper’s Figure 3
indicates that any “bump” at the top of the bung was not formed by being
forced out of the hole during insertion. Id. Appellant urges that Cooper does
not form a bump of frit material at the top of the hole. Id. at 16–17. Instead,
Appellant contends that the significant angles of Cooper’s hole means that
Appeal 2019-002519
Application 13/474,850

11
the bung is essentially dropped into the hole without any significant frit
material being forced out. Id.
Initially, we find that the ordinary artisan would readily appreciate
that the presence of frit material above Cooper’s hole is an artifact of at least
two factors: 1) an excess of frit material applied to the bung and the hole
walls such that placement of the bung into the hole would force some of the
excess frit material to the top of the hole; and 2) application of frit material
to the entire perimeter sidewall of the bung. In re Preda, 401 F. 2d 825, 826
(CCPA 1968) (“[I]t is proper to take into account not only specific teachings
of the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”). Additionally, we note that
although both the Examiner and Appellant appear to interpret “bump” to
mean an enlarged portion of frit material at the top of the hole, this
interpretation fails to account for the broadest reasonable interpretation of
this term. Appellant does not direct us to a definition for the term “bump” in
the disclosure nor do we find any. Instead, the Specification uses the terms
“bump” and “shoulder” interchangeably, and only the height, not the
diameter, of this bump is discussed. See, for example, Spec. 6:7–14. KSR,
550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). Given the knowledge of the ordinary artisan,
we are apprised of no error in the Examiner’s determination that a bump
formed at the top of the hole during insertion of a pump-out tube therein
would have been obvious when modifying Aggas’ process in view of
Cooper’s teaching where an excess of frit material is applied to the hole wall
as well as the portion of the tube inserted into the hole. KSR, 550 U.S. at 418
(“[T]he [obviousness] analysis need not seek out precise teachings directed
Appeal 2019-002519
Application 13/474,850

12
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill
would employ.”).
Appellant further argues that Cooper’s cross-sectional view shown in
Figure 3 does not inherently provide a bump that substantially surrounds a
portion of a tube extending outside the hole. Id. at 16. However, as the
Examiner determines, “since a seal is required, it would [be] natural to
expect that the bump ‘substantially surrounds’ a portion of the tube
extending outside the hole to ensure a complete seal.” Ans. 8. Indeed, given
that Cooper teaches that Figure 3 is an illustrative side view of a glass bung
inserted into a hole of the substrate (Cooper ¶ 16), those skilled in the art
would readily appreciate that this drawing is representative of all other cross
sections of the bung and hole structure, absent a teaching otherwise.
CONCLUSION
The Examiner’s obviousness rejections of claims 1–14, 16–21, and 23
are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 9,
10, 14, 19–
21, 23
103(a) Aggas, Cooper 1, 2, 5–7, 9,
10, 14, 19–
21, 23

3, 4 103(a) Aggas, Cooper2 3, 4
8, 16, 17 103(a) Aggas, Cooper,
Tsai
8, 16, 17
11–13 103(a) Aggas, Cooper,
Nakayama
11–13
Appeal 2019-002519
Application 13/474,850

13
18 103(a) Aggas, Cooper,
Son
18
Overall
Outcome
1–14, 16–
21, 23

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).
AFFIRMED