Appeal No. 2000-009
Application 08/742,426
directed to St. Gobain glass and does not disclose the content of this glass as does Attachment C;
that the examiner does not discuss the appellants’ calculations of the redox range for St. Gobain
glass; and that Attachment C reports the amount of cerium oxide stated by appellants, upon
which matter the Ford letter makes no statement.
With respect to the Scorpio glass, the examiner does not respond to appellants’ arguments
with respect to the manner in which the redox values were reported in the Ford letter or with
respect to the interpretation to be made of the appealed claims with respect to the ultraviolet
transmittance over a range of thicknesses or the calculation of the ultraviolet transmittance
(answer, page 4). Indeed, the examiner merely states that “in reference to the UV transmittance,
sufficient evidence has not been presented by appellants that the Scorpio glass has a UV
transmittance outside the claimed range” and that a “sheet thickness of .156 inches and a UV
transmittance of 38% is considered to anticipate the instant claims even if it is presumed that
there are different properties at different thicknesses;” and that appellants have not shown the
entire range in the claims, that is, “0.35 inch,” or that the difference “would not be attributed to
experimental error or testing calibration” (id., Pages 4-5).
We first consider appellants’ arguments that the Ford letter cannot be relied upon by the
examiner to reject the claims. It is clear from the authority that we cite above that the hearsay
rule and the standard of proof based on clear and convincing evidence do not apply to ex parte
cases involving the issues of public use and on-sale under § 102(b). It is also clear that we are to
carefully consider such evidence as the Ford letter and its attachments with respect to the
accuracy and trustworthiness thereof. In this respect, we bear in mind the relationship with
respect to the ‘059 application and the ‘886 patent between Ford and PPG, and thus Ford’s
interest in the outcome of the examination of the ‘059 application, as pointed out by appellants.6
See, e.g., Finnigan Corp. v. ITC, 180 F.3d 1354, 1367, 51 USPQ2d 1001, 1011 (Fed. Cir. 1999),
6 Indeed, the Ford letter “is in response to [PPG’s] request . . . for copies of our documentation
showing the sale of high-iron soda-lime-silica glass to Ford in the U.S. more than one year prior
to the filing date of [PPG’s] pending” ‘059 application (page 1), and Ford “tried to provide clear
copies of the documents, since . . . [PPG would] want to present them to the USPTO in
connection with” the ‘059 application (page 4).
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