ESSILOR INTERNATIONAL (COMPAGNIE GENERALE D'OPTIQUE) et al.

Patent Trials and Appeals Board

Aug 11, 2021

2021000636 (P.T.A.B. Aug. 11, 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.
15/101,695 06/03/2016 Sandrine COUDERC ESSR.P0200US/1000352190 1961
126623 7590 08/11/2021
NORTON ROSE FULBRIGHT US LLP -Essilor
98 San Jacinto Blvd., Suite 1100
Austin, TX 78701
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/11/2021 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):
aoipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANDRINE COUDERC,
ROMAIN DELYON, and GREGORY TORTISSIER

Appeal 2021-000636
Application 15/101,695
Technology Center 1700
____________

Before JEFFREY T. SMITH, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 17–20 and 22–37.2 An oral hearing
was held on July 22, 2021.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real parties in interest as
Essilor International and Nikon Corporation. Appeal Br. 3.
2 Claim 38 has been withdrawn from consideration. Final Act. 1.
3 A written transcript of the Oral hearing will be entered into the record
when the transcript is made available.
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STATEMENT OF THE CASE
Appellant’s invention relates generally to a manufactured article
comprising at least one nanostructured surface that exhibits the ability to
repel both water and oil also known as omniphobicity. Spec. 1.
Independent claim 17 is representative of the claimed subject matter and is
reproduced below (formatting added):
17. A manufactured article comprising at least one
nanostructured surface, wherein:
the nanostructured surface is made of a material having a
surface energy of less than 25 mJ/m2, and comprises an array of
contiguous cells defining cavities; and
the cavities of the cells are separated from each other by
intermediate solid material walls and open to the environment;
the cavities have an average height (H) and an average
radius (R) wherein:
R ≥5 nm;
R ≤ 250 nm;
H ≤ 3R; and

wherein θadv is the advancing angle of the liquid onto a flat
surface made of the same surface material than the
nanostructured surface; and
the manufactured article has a sinking (α) equal to or
lower than 30%, wherein

wherein h is the wetting height by a liquid of the cavity
intermediate wall and H is the average height of the cavity.

Appeal Br. 11 (Claims App.).

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Appellant requests review of the following rejections from the Final
Office Action:4
I. Claims 17–20 and 22–35 rejected under 35 U.S.C. § 103 as
unpatentable over Mazumder (US 2011/0206903 A1, pub. August 25, 2011).
II. Claims 36 and 37 rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Mazumder and Baude (US 2010/0053547 A1, pub.
March 4, 2010).

OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we affirm the Examiner’s rejections of claims 17–20 and 22–37
under 35 U.S.C. § 103 essentially for reasons the Examiner presents. We
add the following for emphasis.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 17. Final Act. 2–7. Briefly, the
Examiner finds Mazumder discloses a substrate having an oleophobic
surface that includes a plurality of gas-trapping features (manufactured
article). The gas-trapping features are open to the surface and extend below
the surface. Final Act. 2–3; Mazumder ¶ 34. The hydrophobic and/or
oleophobic surface coating comprising at least one of a low surface energy
fluoropolymer or a low surface energy fluorosilane is provided on the
surface and on the plurality of gas-trapping features. Mazumder ¶ 41. The
Examiner finds Mazumder fails to specify the average height “H” and

4 The complete statement of the rejections on appeal appears in the October
11, 2019 Final Action. Final Act. 2–7.
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average radius “R” of the cavities as required by the claimed invention.
However, the Examiner finds Mazumder teaches a transparent glass
substrate wherein the average radius R is within the range of 10 nm up to
about 500 nm and the depth H is within the range of 10 nm up to about 500
nm. The Examiner finds these ranges substantially overlap the requirements
of the claimed invention. Final Act. 3; Mazumder ¶ 40. Based on these
teachings, the Examiner determines the claimed invention is obvious.5
Appellant argues the majority of Mazumder’s cavities would exhibit
poor gas trapping performance or would have no ability to trap gas because
Mazumder’s invention encompasses a wide range of cavity shapes due to the
extremely large height and depth dimension ranges. Appeal Br. 5.
Appellant argues Mazumder’s radius and depth (i.e., height) dimensions
may range from 10 nm up to 100 μm (100,000 nm). Appeal Br. 6;
Mazumder ¶ 40. Appellant argues one of skill in the art could not
reasonably be expected to arrive at the claimed invention on the basis of the
general teachings of Mazumder because only a small fraction of
Mazumder’s embodiments would exhibit gas trapping functionality. Appeal
Br. 5–6. Appellant argues Mazumder does not teach or suggest cavities
having the radius range of 5 nm ≤ R ≤ 250 nm and the height range of H ≤
3R (15 nm ≤ 3R ≤ 750 nm), which have been found by the inventors to be
important for gas trapping functionality and low sinking. Appeal Br. 7–8.

We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s obviousness determination.

5 The Examiner relies on Baude to address the subject matter of claims 36
and 37. Final Act. 7.
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Appellant’s arguments are solely based on Mazumder’s broadest
disclosure for the dimensions of the gas trapping elements. Appeal Br. 5–6.
However, Appellant does not address the fact that Mazumder, like the
claimed invention, utilizes glass as a suitable substrate. Compare
Mazumder, and Spec. 19.6 Mazumder discloses the dimensions of the radius
and depth of the gas trapping elements for a glass substrate are substantially
narrower (i.e., within the range of 10 nm up to about 500 nm). Mazumder ¶
40. Appellant has not disputed that Mazumder’s dimensions for the radius
and depth of the gas trapping elements for a glass substrate substantially
overlap the dimensions required by the claimed invention. Thus, the
Examiner has established a prima facie case of obviousness.
[A] prima facie case of obviousness arises when the ranges of a
claimed composition overlap the ranges disclosed in the prior
art. Where the “claimed ranges are completely encompassed by
the prior art, the conclusion [that the claims are prima facie
obvious] is even more compelling than in cases of mere
overlap.”

In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)) (internal citations omitted).
It is well settled that the recitation of a new property for an old product does
not make a claim to that old product patentable. See In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) (“The discovery of a new property or use of a
previously known composition, even when that property and use are
unobvious from prior art, [cannot] impart patentability to claims to the
known composition.”); Titanium Metals Corp. of Am. v. Banner, 778 F.2d
775, 782 (Fed. Cir. 1985) (composition claim reciting a newly discovered

6 Also see Oral Hearing transcript pages 4–5.
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6
property of an old alloy did not satisfy section 102 because the alloy itself
was not new). Appellant has not established through objective evidence that
Mazumder’s manufactured article comprising nanostructures on the glass
substrate does not have a sinking (α) equal to or lower than 30% as required
by the claimed invention. Appellant’s discussion of Mazumder’s model as
shown in Application Figure 21 (Appeal Br. 7) does not establishe
Mazumder’s manufactured article comprising nanostructures on the
substrate does not have a sinking (α) equal to or lower than 30%.
We note Appellant advances arguments concerning Mazumder’s
Figure 7 for the first time on page 3 of the Reply Brief that were not
presented in the Appeal Brief. Appellant, however, has not presented an
explanation showing good cause why these new arguments were not
presented in the Appeal Brief. Under regulations governing appeals to the
Board, any new argument not timely presented in the Appeal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474–77 (BPAI 2010)
(informative) (“the reply brief [is not] an opportunity to make arguments that
could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not.”).

Appellant argues claim 25 includes an equation for calculating sinking
(α) as a function of both atmospheric pressure (P0) and external pressure
(ΔP) which Mazumder does not disclose. (Appeal Br. 8–9.)
Claim 25 specifies the sinking (α) property of the manufactured article
is calculated utilizing a theoretical model. As set forth above, the recitation
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7
of a new property is insufficient to establish reversible error in the
Examiner’s obviousness determination.
Claims 36 and 37 are rejected under 35 U.S.C. § 103 as unpatentable
over Mazumder in combination Baude.
Appellant argues dependent claims 36 and 37 are patentable because
they depend from independent claim 17. In this regard, Appellant argues
Baude does not address the deficiencies of Mazumder. Appeal Br. 9.
Because we do not find Appellant’s arguments persuasive as to independent
claim 17, it follows that these arguments are unpersuasive as to claims 36
and 37.
Accordingly, we affirm the prior art rejection of 17–20 and 22–37
under 35 U.S.C. §103, for the reasons the Examiner present and we provide
above.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20, 22–35 103 Mazumder 17–20,
22–35

36, 37 103 Mazumder, Baude 36, 37
Overall
Outcome
17–20,
22–37

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).
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Application 15/101,695

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AFFIRMED