Ex Parte Zhang et al

Patent Trial and Appeal Board

Jun 22, 2017

13882098 (P.T.A.B. Jun. 22, 2017)

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).
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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.
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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
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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
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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.
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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
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