Ex Parte BIDKAR et al

Patent Trial and Appeal Board

Sep 17, 2018

14037790 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/037,790 09/26/2013
6147 7590 09/19/2018
GENERAL ELECTRIC COMPANY
GPO/GLOBAL RESEARCH
901 Main Avenue
3rd Floor
Norwalk, CT 06851
FIRST NAMED INVENTOR
Rahul Anil BIDKAR
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
266225-1 1048
EXAMINER
VAN SELL, NATHAN L
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
haeckl@ge.com
gpo.mail@ge.com
Lori.e.rooney@ge.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAHUL ANIL BIDKAR,
AMBARISH JAY ANT KULKARNI,
LUC STEPHANE LEBLANC, and V AIBHA V BAHADUR
Appeal2018---000526
Application 14/037,790
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
Appeal2018---000526
Application 14/037,790
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § I34(a) from a final rejection of
claims 1-8 and 19-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The subject matter on appeal relates to a reduced fluid drag across a
solid surface with a textured coating. Spec. ,r 2. The Specification explains
that fluid drag at the solid/liquid interface can be decreased by adjusting the
average spacing between asperities, the average surface roughness, and the
average porosity of the surface. Id. ,r,r 4---6. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A gas-impregnated surface, comprising:
a textured surface having a plurality of asperities that
promote formation of gas pockets therebetween, wherein the
textured surface has an average spacing between asperities in
the range from about 0.0 I micron to about 1.5 micron, an average
surface roughness of up to about 2 microns, and an average
porosity in the range from about 35% to about 70%; and
a material to reduce surface energy disposed on the
textured surface.
Appeal Br. 14 (Claims App'x).
1 In our Decision we refer to the Specification filed September 26, 2013, as
amended, ("Spec."), the Final Office Action appealed from dated January 1,
2017 ("Final Act."), the Appeal Brief filed May 23, 2017 ("Appeal Br."), the
Examiner's Answer dated September 8, 2017 ("Ans.") and the Reply Brief
filed October 23, 2017 ("Reply Br.").
2 Appellant is Applicant, General Electric Company, which according to the
Appeal Brief is also the real party in interest. Appeal Br. 3.
2
Appeal2018---000526
Application 14/037,790
REJECTIONS
The Examiner maintains the rejection of claims 1-8 and 19-35 under
35 U.S.C. § I03(a) as unpatentable over Reyssat3 and Greer. 4 Final Act. 2.
Appellant seeks our review of the Examiner's rejection of claims 1-8
and 19-35 as obvious over Reyssat in view of Greer. Appeal Br. 11.
Appellant argues independent claims 1, 19, and 27 together as a group and
does not present argument for the remaining dependent claims separate from
what is argued for claims 1, 19, and 27. Id. Therefore, consistent with the
provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to
claim 1, and all other claims stand or fall together with that claim.
OPINION
The Examiner rejects claims 1-8 and 19-35 as being unpatentable
over the combination of Reyssat and Greer. Final Act. 2. The Examiner
finds that Reyssat teaches "an article having a nanotextured surface with
superhydrophobic properties comprising an array of vertical pillars" and that
the "tops of the pillars forming the nano structures may[]be coated with a
hydrophobic fluorosilane." Id. at 2-3. The Examiner finds that Reyssat
further describes that the pitch, i.e., the average spacing between the
asperities, is between 0.01---0.25 microns which is within the claimed range
and thus would have rendered the claimed range obvious to one of ordinary
skill in the art. Id. at 3; see also Ans. 8 (same). The Examiner
acknowledges that Reyssat fails to teach the claimed surface roughness as
3 Reyssat et al., US 2010/00989909 Al, published April 22, 2010
("Reys sat").
4 Greer et al., US 2012/0181346 Al, published July 19, 2012 ("Greer").
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Appeal2018---000526
Application 14/037,790
well as the claimed average porosity. Final Act. 3. But, the Examiner finds
that Greer, similarly teaching nanostructured surfaces for controlling
wetting, teaches that "both porosity and roughness ( characterized by average
surface roughness) of the surface affect its surface energy (i.e., an affinity of
a surface for a particular liquid) (para 41, 44, 50)." Id. at 3--4. Therefore,
the Examiner reasons that the skilled artisan would have had a reason to
adjust the porosity and surface roughness to achieve the desired super low
wetting characteristics through optimization of these variables to decrease
the surface affinity for the liquid. Id. at 4; see also Ans. 9 ("[T]hough Greer
may be silent with respect to the specific parameters as claimed ... affinity
of a liquid for a surface can be achieved by altering its hydrophobicity,
hydrophilicity, porosity and/or surface roughness which are directly related
to the formation of nanostructures on the surface."). The Examiner finds
that optimization of these parameters was well known in the art as evidenced
by the teachings of Greer. Ans. 10-11 ( citing Greer ,r,r 67, 71 ).
Appellant argues that neither Reyssat nor Greer describes "an average
spacing between asperities or peaks in the range from about 0.01 micron to
about 1.5 micron, an average surface roughness ofup to about 2 microns,
[and] an average porosity in the range from about 35% to about 70%" as
claimed and therefore no prima facie case of obviousness has been made.
Appeal Br. 11-12; see also Reply Br. 5---6 (same).
On this record, Appellant fails to identify a reversible error by the
Examiner. To begin, as the Examiner explains (Final Act. 3), Reyssat
describes the pitch of its pillars to be spaced from 100 to 250 nm (or 0.01 to
0.25 microns), which falls within the claimed range of "from about 0.01
micron to about 1.5 micron," and therefore establishes that Reyssat suggests
4
Appeal2018---000526
Application 14/037,790
the claimed range. And, while we agree that there is no express teaching in
Greer regarding the particular ranges for the claimed parameters of average
surface roughness or average porosity,the Examiner's rejection relies on the
principle that optimization of a result effective variable may support a
conclusion of obviousness. In re Aller, 220 F .2d 454, 456 (CCP A 1955)
("[W]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation."). Said another way, "the discovery of an optimum value
of a variable in a known process is usually obvious." Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007) (emphasis added); In re Boesch,
617 F.2d 272, 276 (CCPA 1980) (finding the "[d]iscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.").
Here, as the Examiner explains, the skilled artisan would have had
reason to combine the teachings of Greer to adjust the nanostructures of
Reyssat in order to control wetting characteristics and bring about super low
wettability. Final Act. 4. According to the Examiner, Greer explains that
nanostructured surfaces having "super low wettability" can be achieved by
adjusting the porosity and roughness of the surface. Id. In particular, Greer
explains that
A distance between nanostructures, a height of nanostructures,
and a width of nanostructures can create various resistances to
eliminating the space created by the height, distance, width, and
inclination angle/curvature. Thus by controlling height,
distance, width, and inclination angle/ curvature, resistance of
the surface to a fluid can be controlled to result in different
wetting characteristics.
5
Appeal2018---000526
Application 14/037,790
Greer ,r 67; see also id. ,r 41 (explaining that the affinity of a surface for a
particular liquid "can be the result of wettability ( e.g., hydrophobicity, or
hydrophilicity), molecular structure, porosity, and/or surface
roughness/substructure"). Greer further states that "surface roughness has
been shown to increase or decrease wettability ( e.g. to enhance
hydrophobicity or hydrophilicity) by creating a larger contact area between a
surface and a liquid droplet. This change in contact angle changes dynamics
of a liquid-gas-solid equilibrium and can enhance wettability, or lack
thereof." Id. ,r 64. Furthermore, Greer details that porosity relates to surface
roughness, i.e., "a higher porosity lead[s] to a rougher surface than a lower
porosity material." Id. ,r 66. Thus, the teachings of Greer would have
suggested to the skilled artisan that by controlling the structural parameters
of the nanostructured surface, including surface roughness and porosity,
wetting characteristics of the nanostructured surface can likewise be
controlled, thereby establishing these parameters as variables to be
optimized. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir.
2012) ("A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective."); see also, In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[Discovery of an optimum value
of a result effective variable ... is ordinarily within the skill of the art.").
Appellant does not argue or provide any evidence of criticality based on the
claimed ranges. 5 Therefore, without more, we sustain the Examiner's
rejection.
5 We note that Appellant does suggest that "[ t ]he present inventors have
created an article and method with the unexpected result by which drag
caused by [] fluid flowing over a solid surface ... is decreased" (Reply Br. 5
( emphasis added)), but that statement, standing alone, does not provide
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Appeal2018---000526
Application 14/037,790
CONCLUSION
Appellant fails to identify a reversible error in the Examiner's
rejection of claims 1-8 and 19-35, under 35 U.S.C. § 103(a), as
unpatentable over the combination of Reyssat and Greer.
DECISION
For the above reasons, the Examiner's rejection of claims 1-8 and 19-
3 5 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFRIMED
evidence of unexpected results required to rebut the Examiner's prima facie
case of obviousness. Furthermore, Appellant makes this statement for the
first time in its Reply Brief. Appellant has not explained, nor is it apparent,
that these arguments were necessitated by the Examiner's Answer or could
not have been presented in the principal brief. Therefore, these arguments
are untimely and we will not reach arguments presented for the first time in
a reply brief in the absence of good cause. 37 C.F.R. § 4I.41(b)(2).
7