Ex Parte Hofmeister et al

Patent Trial and Appeal BoardFeb 21, 2019

14560833 (P.T.A.B. Feb. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/560,833 12/04/2014 153348 7590 Pitchford Fugett, PLLC 110 Meadowpointe W Hendersonville, TN 37075 02/21/2019 FIRST NAMED INVENTOR William Hudson Hofmeister 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. 028596.55275 1021 EXAMINER SHAFI, LEITH S ART UNIT PAPER NUMBER 1744 MAIL DATE DELIVERY MODE 02/21/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM HUDSON HOFMEISTER, ALEXANDER YURYEVICH TEREKHOV, JOSE LINO VASCONCELOS DE COSTA, KATHLEEN STACIA LANSFORD, DEEP AK RAJPUT, and LLOYD M. DA VIS Appeal2018-005178 Application 14/560,833 Technology Center 1700 Before JEFFREY B. ROBERTSON, GEORGIANNA W BRADEN, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 44--55. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 2 We REVERSE. 1 Ultra Small Fibers, LLC is identified as a real party in interest. App. Br. 2. 2 In our opinion below, we reference the Specification filed December 4, 2014 (Spec.), Final Office Action mailed March 6, 2017 (Final Action), the Appeal Brief filed December 15, 2017 (App. Br.), and the Examiner's Answer mailed February 20, 2018 (Ans.). Appeal2018-005178 Application 14/560,833 STATEMENT OF THE CASE Claimed Invention Appellants claim a method for fabricating a nanofiber array. App. Br. 19 (claim 44). According to the claimed method, a template is prepared by ablating a plurality of nano holes in a substrate using a single femtosecond laser pulse to ablate each hole. The nanoholes are filled with a polymer solution, and an array of polymer nanofibers is then extracted from the template. Id.; Spec ,r 22. According to the Specification, solution-based replication of a template has several advantages over film-based replication. Spec. ,r,r 96, 153, 193; see also id. ,r,r 92, 94, 95 (discussing cellulose acetate ("CA") film replication of rigid templates, as disclosed in White). Claim 44 is the only independent claim on appeal and is reproduced below from Appellants' Claims Appendix: 44. A method for fabricating a nanofiber array, compnsmg: (a) providing a template comprising a transparent substrate having a surface, the surface comprising a plurality of nanoholes, each nanohole of said plurality being ablated in said surface using a single femtosecond laser pulse; (b) filling said plurality of nanoholes with a polymer solution; and ( c) extracting an array of polymer nanofibers from the template; wherein said nanofibers have an aspect ratio of at least ten-to-one and a diameter of less than 1000 nanometers. App. Br. 19. 2 Appeal2018-005178 Application 14/560,833 References The appealed rejections are based on the following references: Yelena V. White et al., Single-pulse ultrafast-laser machining of high aspect nano-holes at the surface of Si02, Optics Express, Vol. 16, No. 19, 14411- 14420 (Sept. 15, 2008) ("White"); C. Padeste et al., Replication of high aspect ratio pillar array structures in biocompatible polymers for tissue engineering applications, Microelectronic Engineering 88, 1836-1839 (2011) ("Padeste"); Frederic Madani-Grasset and Yves Bellouard, Femtosecond laser micromachining of fused silica molds, Optics Express, Vol. 18, No. 21, 21826-21840 (Oct. 11, 2010) ("Madani-Grasset"); and Zhang et al., US 2009/0047478 Al, Feb. 19, 2009 ("Zhang"). Rejections The Examiner maintains the following rejections under 35 U.S.C. Â§ I03(a): 1. Claims 44--46, 52, 53, and 55 are unpatentable over White and Padeste. Final Action 2--4. 2. Claims 47, 50, 51, and 54 are unpatentable over White, Padeste, and Madani-Grasset. Id. at 4--6. 3. Claims 48 and 49 are unpatentable over White, Padeste, and Zhang. Id. at 4--6. ANALYSIS The Examiner finds that White teaches a method for fabricating a nanostructure, where the nanostructure has an aspect ratio of at least ten-to- one. Final Action 3. The Examiner also finds that White teaches filling nanoholes with cellulose acetate film that has been softened by acetone, but does not explicitly teach filling nanoholes with a polymer solution, as recited in claim 44. Id. The Examiner further finds that Padeste teaches replicating 3 Appeal2018-005178 Application 14/560,833 nanoholes by filling a polymer solution into a template. The Examiner concludes as follows: It would have been obvious to one with ordinary skill in the art at the time of the invention to modify the teachings of Madani-Grasset [sic, White] to incorporate Padeste because this is a substitution of equivalent elements which yields predictable results. Both references teach replicating the negative structure using a polymer . . . . The predictable result are a nanofiber which are of the negative shape of the formed nanoholes .... Final Action 3 (citations to White and Padeste omitted); see also Ans. 4--5 (repeating essentially the same conclusion). Appellants argue that the combination of White and Padeste does not provide a teaching or suggestion of forming a nanofiber having an aspect ratio of greater than ten-to-one by filling nanoholes with a polymer solution. App. Br. 9. Citing teachings in White and Padeste, Appellents argue there would not have been a reasonable expectation of success that the polymer solution of Padeste, when positioned over the template of White, would fill the nanoholes of White to form nanofibers having an aspect ratio of at least ten-to-one, as recited claim 44. Id. at 10-11. Responding to Appellants' argument, the Examiner asserts that nonobviousness cannot be shown by attacking references individually and reiterates the finding that White teaches nanofibers having the claimed aspect ratio. Ans. 11. After considering Appellants' arguments, the Examiner's findings and conclusions, and the evidence cited by both Appellants and the Examiner, we determine that the Examiner's findings regarding the aspect ratio limitation of claim 44 are not sufficient to sustain the rejection. The Examiner finds that White teaches the aspect ratio limitation of claim 44, but 4 Appeal2018-005178 Application 14/560,833 does not address whether White, as modified by Padeste, would reasonably be expected to meet that limitation. The Examiner relies on White's teaching alone, without addressing whether there would have been a reasonable expectation of achieving an aspect ratio of ten-to-one, when White's film-based replication method is modified by Padeste's teaching of a polymer solution. The Examiner finds that White teaches nanofibers having an aspect ratio of ten to one, citing White Figure 4 and Section 3 .1, fifth paragraph. Final Action 3; Ans. 4, 11. The cited portions of White disclose the aspect ratio of nanoholes, as obtained by acetate film replication. White, 14417 & Fig. 4(b ); see also id. at 14414 ("An acetate sample replication technique is used to estimate the depths of the nano-holes."). The Examiner does not address whether a person of ordinary skill in the art would have expected to obtain the same aspect ratio after modifying White's replication method to use a polymer solution instead of an acetate film. Nor does the Examiner address whether the aspect ratio of claim 44 would have been a predictable result of combining the teachings of White and Padeste. Appellants direct us to disclosures in Padeste and White supporting its position that the aspect ratio of claim 44 may not have been an expected result. Appellants assert, without objection from the Examiner, that Padeste's nanofibers had an aspect ratio of only five-to-one and were only "close" replicas of the master structures. App. Br. 9 ( citing Padeste, Abstract). In addition, Appellants direct us to White's teaching that "high aspect ratio features may resist accurate replication." White, 14417; App. Br. 10. Appellants also rely on White's disclosure that the film-based replication technique "most probably underestimates the depths," which 5 Appeal2018-005178 Application 14/560,833 "might be due to the difficulty of the polymer to reach the bottom of the nano-hole." White, 14418; App. Br. 10. The Examiner does not dispute Appellants' evidence, nor respond persuasively to Appellants' argument that, based on the teachings of White and Padeste, there would have been no expectation that a polymer solution would fill White's nanoholes so as to produce a nanofiber with an aspect ratio of at least ten-to-one after extraction. App. Br. 10-11; Ans. 11. The burden was on the Examiner to show that the combination of White and Padeste would have reasonably been expected to achieve the aspect ratio limitation of claim 44. In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017) ("it was the PTO's-not Stepan's-burden to show that achieving [ claim limitation] would have been obvious to a person of ordinary skill in the art"); Honeywell Int'! Inc. v. Mexichem Amanco Holding S.A. DEC. V., 865 F.3d 1348, 1355 (Fed. Cir. 2017) ("the burden is on the Examiner to show that one of ordinary skill would have had a motivation to combine the references with a reasonable expectation of success") ( emphasis in original). The foregoing deficiencies in the Examiner's findings and conclusions regarding independent claim 44 are not remedied by the Examiner's findings or conclusions regarding dependent claims 45, 46, 52, 53, and 55 or separately rejected dependent claims 47-51 and 54. Accordingly, for all of the foregoing reasons, we do not sustain the rejections listed above. 6 Appeal2018-005178 Application 14/560,833 CONCLUSION OF LAW AND DECISION The decision of the Examiner is reversed. REVERSED 7