In re Geisler

In re Geisler

Opinion

 [*1467]  BRYSON, Circuit Judge.

In this appeal from the Patent and Trademark Office Board of Patent Appeals and Interferences, the inventors challenge the decision of the patent examiner and the Board rejecting the inventors' patent claims for obviousness under 35 U.S.C. § 103. We hold that the critical factual findings underlying the Board's legal conclusion of obviousness are not clearly erroneous, and we therefore affirm.

The inventors, appellants Michael Geisler, Rudolf Kotter-Faulhaber, Susanne Wuerz, and Michael Jung (collectively "Geisler"), filed [**2]  an application for a patent on a reflective article having a multilayer coating. After a number of the original claims were canceled, one independent claim and six dependent claims remained for examination. Claim 44, the independent claim, reads as follows:

A reflective article comprising a substrate, a first layer on said substrate, said layer consisting essentially of carbon and at least one element from the group consisting of O, Si, and H, a second layer on said first layer, said second layer consisting essentially of a metal, and a third layer on said second layer, said third layer consisting essentially of carbon and at least one element from the group consisting of O, Si, and H, said third layer being 50 to 100 Angstroms thick.

Before the examiner, the question of patentability turned on whether the claimed invention would have been obvious in light of certain prior art references or whether the claimed thickness of the third layer of the coating (also referred to as the protective layer) rendered the claimed invention nonobvious. The application included the results of wear resistance tests that the inventors ran on the protective layer of their invention. That layer [**3]  is designed to protect the metallic layer from abrasion and corrosion, and thus extend the useful life of the reflective surface.

Geisler conducted two sets of tests, using what the application described as the "standard method" for testing coated surfaces for wear resistance. Geisler tested protective layers of different thicknesses ranging from 900 Angstroms to 50 Angstroms. The first test was conducted shortly after the coating process was completed, and the second test was conducted "a few days later." The first test showed that, in general, the thinner protective layers exhibited better wear resistance. The second test showed the same trend, but in that test the thinner protective layers exhibited a somewhat greater and more consistent increase in wear resistance. For example, in the first test the 50 Angstrom layer exhibited about 20 percent better wear resistance than the 300 Angstrom layer, while in the second test the 50 Angstrom layer exhibited about twice as much wear resistance as the 300 Angstrom layer. After setting forth the two sets of test results, the application concluded that a protective layer of 50 Angstroms "provides a very good protection and, moreover,  [**4]  is very inexpensive in its production."

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