Ex Parte Zhang et alDownload PDFPatent Trial and Appeal BoardJun 22, 201713882098 (P.T.A.B. Jun. 22, 2017) Copy Citation 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. 13/882,098 04/26/2013 Jun-Ying Zhang 66994US004 9116 32692 7590 06/26/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER PLESZCZYNS KA, JOANNA ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/26/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUN-YING ZHANG, TERRY L. SMITH, KATHERINE A. BROWN, VIVIAN W. JONES, DAVID K. SAYLER, TIMOTHY J. HEBRINK, QINGBING WANG, KARAN JINDAL, and ENCAI HAO Appeal 2016-006929 Application 13/882,098 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s April 22, 2015 decision finally rejecting claims 1, 3—5, 7—10, and 34. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the real party in interest as 3M Company and its affiliate 3M Innovative Properties Company (Br. 2). Appeal 2016-006929 Application 13/882,098 CLAIMED SUBJECT MATTER Appellants’ invention is directed to durable superhydrophobic films having a surface with discrete flat portions and valleys (Spec. 1:11—12). Claim 1 is representative and is reproduced below from the Claims Appendix of the Appeal Brief {key claim limitations shown in italics)'. 1. A superhydrophobic film, comprising: a first major surface; and a second major surface opposite the first major surface, the second major surface comprising an array of microstructures each extending away from the second major surface, at least some of the microstructures having discrete flat surface portions, wherein each of the discrete flat portions is substantially parallel to the first major surface', and the second major surface further comprising an array of valleys, wherein at least one valley is positioned between adjacent discrete flat surface portions, wherein each of the discrete flat surface portions and valleys comprises a plurality of nanofeatures, the plurality of nanofeatures being formed by etching into the second major surface such that at least a portion of each of the nanofeatures contains the same material as the second major surface of the film, and wherein the superhydrophobic film has a water contact angle of at least 140 degrees and a sliding angle of less than 10 degrees. DISCUSSION Claims 1, 3—5, 7—10, and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hamedi,2 D’Urso,3 and further in view of Jing.4 Appellants do not offer separate arguments in support of any of the 2 Hamedi et al., US 2009/0053471 Al, published Feb. 26, 2009. 3 D’Urso et al., US 2008/0296252 Al, published Dec. 4, 2008. 4 Jing et al., US 2007/0298216 Al, published Dec. 27, 2007. 2 Appeal 2016-006929 Application 13/882,098 dependent claims; arguments are directed to limitations recited in independent claim 1 (see Br. 3—5). Accordingly, our discussion will focus on Appellants’ arguments in support of claim 1. Dependent claims 3—5, 7— 10, and 34 will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds, inter alia, that Hamedi’s disclosure teaches the elements of the claimed superhydrophobic film, including microstructures having discrete flat surface portions and valleys, except that: Hamedi does not teach each of the discrete flat surface portions and valleys comprising a plurality of nanofeatures, the plurality of nano features being formed by etching into the second major surface such that at least a portion of each of the nanofeatures comprises the same material as the second major surface of the film and wherein the film has a water contact angle of at least 140°.... (Ans. 3). The Examiner finds, however, that D’Urso “teaches a superhydrophobic structure comprising a plurality of nanofeatures . . . formed by etching into a second major surface of the material so that at least a portion of each of the nanofeatures comprises the same material as the second major surface of the material. . .” (id. at 3, citing D’Urso Tflf 25, 31, Fig. 3). The Examiner further finds D’Urso discloses that the water contact angle of the formed coating is at least 150°, which overlaps the range recited in claim 1 (Id. 3, citing D’Urso 1 5). Appellants argue that the Examiner reversibly erred by misreading Hamedi (Br. 2). In particular, Appellants assert that “nowhere does Hamedi teach that the asserted surface with the relief structures is a super hydrophobic surface’’ (emphasis added) (id. at 3). Thus, according to 3 Appeal 2016-006929 Application 13/882,098 Appellants, “there would be no rational^ basis to modify the asserted second major surface of Hamedi so as to increase the asserted ‘super-hydrophobic property’” (id.). There is no dispute that Hamedi teaches polydimethylsiloxane (PDMS) as the film material (see Ans. 6; Br. 3 (“Hamedi discloses forming relief structures with indentations on the surface of [an] elastomeric device (e.g. PDMS stamps). . . The Examiner finds that PDMS “is known in the art, [and] is inherently hydrophobic” (Ans. 6—7). Appellants do not challenge this finding. Appellants’ arguments are not persuasive because they are not directed to the Examiner’s rationale for modifying Hamedi’s hydrophobic film comprising an array of microstructures by forming D’Urso’s nano features on Hamedi’s microstructures. As the Examiner determines, it would have been obvious to the ordinary skilled artisan “‘to form the structure of D’Urso on the second major surface of the film of Hamedi in order to make the hydrophobic film of Hamedi super-hydrophobic'''’'’ (emphasis added) (id. at 7 (revising the Examiner’s initial characterization of Hamedi’s film as superhydrophobic (see id. at 4).)). Therefore, the preponderance of the evidence supports the Examiner’s rationale to modify the relief structures in Hamedi’s hydrophobic film with nano features, thereby providing the film with superhydrophobic properties. Appellants further argue that “[t]here would be no reason to modify each of the channels and the flat surface portions between the channels of Hamedi to include nanofeatures” as required by claim 1 (Br. 4). Relying on Hamedi’s Figure 2, Appellants note that the discrete flat surface portions, with valleys positioned between adjacent flat surface portions, “are merely 4 Appeal 2016-006929 Application 13/882,098 for forming conformal contacts with the substrate to enclose the channels” (id.). In particular, Appellants assert that “[t] here is no reason to assume that modifying the flat surface portions ... by using the teaching of D’Urso (i.e., forming nanostructures by etching) to increase the asserted super hydrophobic property would help forming the conformal contact 205 . . .” (id.). Appellants’ arguments are not persuasive because the configuration of an elastomeric PDMS device conformed to a substrate depicted in Hamedi’s Figure 2 is merely “one embodiment” of several disclosed in this primary reference (Hamedi ^fl[ 15, 22, 43—45). Thus, the conformal contacts are optional. Even assuming that Hamedi’s disclosure of discrete flat surface portions as conformal contacts is required, Appellants have not addressed the Examiner’s position that Hamedi’s “hydrophobic material does not prevent the flat surfaces [from] contacting] the substrate . . .” (Ans. 7). Therefore, Appellants’ arguments have not identified reversible error in the Examiner’s reasoned determination that it would have been obvious to the ordinary skilled artisan to form D’Urso’s nanostructures on Hamedi’s second major film surface in order to confer superhydrophobic properties to Hamedi’s hydrophobic film. The Examiner’s decision is affirmed. CONCLUSION We AFFIRM the rejection of claims 1, 3—5, 7—10, and 34 under 35 U.S.C. § 103(a) over Hamedi, D’Urso, and further in view of Jing. 5 Appeal 2016-006929 Application 13/882,098 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)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation