Guo, Chunlei et al.

Patent Trials and Appeals Board

Jun 30, 2020

2019005298 (P.T.A.B. Jun. 30, 2020)

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.
13/604,951 09/06/2012 Chunlei Guo 96027/889009 (CIP) 5037
23370 7590 06/30/2020
KILPATRICK TOWNSEND & STOCKTON LLP
MAILSTOP: IP DOCKETING - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
HILL, STEPHANI A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUNLEI GUO and ANATOLIY Y. VOROBYEV
Appeal 2019-005298
Application 13/604,951
Technology Center 1700
Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 14, 17, 18, 28, 69, and 73–76.3 Appeal
Br. 6. We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents: Specification
filed September 6, 2012 (“Spec.”); Final Office Action mailed June 1, 2018
(“Final Act.”); Appeal Brief filed November 28, 2018 and corrected on
January 16, 2019 (“Appeal Br.”); Examiner’s Answer mailed May 2, 2019
(“Ans.”); and Reply Brief filed July 2, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as University of
Rochester. Appeal Br. 3.
3 The Examiner withdrew rejections of claims 74–76 under 35 U.S.C. § 112
in the Answer. Final Act. 4–5; Ans. 3.
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We reverse.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to methods for altering the
surface structure of metal materials. Spec. 1. Claim 69, reproduced below,
is illustrative of the claimed subject matter with emphasis added to highlight
key disputed claim limitations (Appeal Br. 29, Claims Appendix):
69. A method for engineering a surface of a material to be
superhydrophilic and to increase a degree of capillary effect on the
surface of the material, the method comprising:
identifying a surface region of the material to increase the
degree of capillary effect;
scanning a first laser spot relative to the identified surface
region to produce a first series of adjacent wicking microgrooves;
scanning a second laser spot relative to the identified surface
region to produce additional wicking structures on a surface of the
first series of wicking microgrooves, the additional wicking
structures comprising an array of parallel nanogrooves that are
parallel to the first series of parallel microgrooves;
wherein the first series of adjacent wicking microgrooves in
combination with the array of parallel nanogrooves that are parallel
to the first series of adjacent wicking microgrooves increases the
degree of capillary effect on the identified surface region.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Mazur et al.
hereinafter “Mazur”
US 2009/0213883 A1 August 27, 2009
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Zhu et al.
hereinafter “Zhu”
Effects of Laser-Modified
Polystyrene Substrate on CHO
Cell Growth and Alignment
February 20, 2004
Bush et al.
hereinafter “Bush”
Improved bio-implant using
ultrafast laser induced self-
assembled nanotexture in
titanium
March 10, 2011
Cai CN 101712102 A, English
translation of Record
May 26, 2010
REJECTIONS
1. The Examiner rejected claims 14, 17, 18, 28, 69, and 73 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Bush. Final Act. 6–
7.
2. The Examiner rejected claims 74–76 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Bush and Mazur. Final Act. 7–8.
3. The Examiner rejected claims 14, 18, and 69 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Zhu. Final Act. 8–9.
4. The Examiner rejected claims 17 and 73 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zhu and Cai. Final Act. 9–10.
5. The Examiner rejected claims 74–76 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Zhu and Mazur. Final Act. 10–11.

OPINION
We limit our discussion to claim 69, which is sufficient to dispose of
the issues in this appeal.

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Rejection 1
The Examiner’s Rejection
In rejecting claim 69 as obvious over Bush, the Examiner found, inter
alia, Bush discloses a method for applying a surface texture onto a titanium
surface such that the titanium surface remains hydrophilic by exposing the
titanium surface to laser pulses. Final Act. 6. The Examiner found Bush
discloses a structure including micro scale pillars with a nanoscale ridge
texture, which corresponds to the instantly claimed process and resulting
structure. Id., see Ans. 5–9. The Examiner determined that forming the
micro and nano features of Bush inherently increases the degree of capillary
effect on the identified surface regions as recited in claim 69, thus
establishing a prima facie case of obviousness. Id.

Appellant’s Contentions
Appellant argues Bush does not describe a “series of adjacent wicking
microgrooves” as recited in claim 69, but rather Bush describes the micro
scale pillars or troughs. Appeal Br. 10–11. Appellant also argues that Bush
does not disclose “an array of parallel nanogrooves that are parallel to the
first series of parallel microgrooves.” Id. at 12–13; Reply Br. 3–5.

Issue
The dispositive issue with respect to this rejection is:
Did the Examiner err in determining Bush discloses a method of
engineering a surface of a material to produce “a first series of adjacent
wicking microgrooves” and “an array of parallel nanogrooves that are
parallel to the first series of parallel microgrooves” as recited in claim 69?
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Discussion
We are persuaded that Bush fails to disclose a method for producing
the arrangement of microgrooves and nanogrooves recited in claim 69. The
Examiner annotated Figure 1(a) of Bush (reproduced below) to support the
position that Bush discloses the arrangement of microgrooves and
nanogrooves recited in claim 69. Ans. 9.

Figure 1(a) depicts a titanium surface textured with laser pulses
showing peaks and troughs. Bush 301. The Examiner has annotated Figure
1(a) with white lines to show microgrooves and black lines to show
nanogrooves.
Based on our review of Figure 1(a), we are in substantial agreement
with Appellant’s position, that Bush discloses an irregular topography with
pillars and troughs and not microgrooves as recited in claim 69. Appeal Br.
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10–11; Reply Br. 3. That is, Bush discloses expressly that after the laser
texturing process, “the surface had texture with submicron scale ridges that
measure ~250 nm in width superimposed on micron scale pillars and
troughs.” Bush 301. The irregular topography depicted in Figure 1(a) of
Bush itself does not support the Examiner’s position that the microscale
pillars and troughs and nanoscale features shown in Figure 1(a) of Bush
correspond to the claimed arrangement. See Reply Br. 3–5 (showing how
the “nanogrooves” in Bush are “arched-shaped” and thus are not parallel to
the Examiner’s characterization of “microgrooves” in Bush). Accordingly,
Bush does not disclose the arrangement of microgrooves and nanogrooves
recited in claim 69. See also Spec. 57–58 (describing processes for
producing adjacent microgrooves and parallel nanogrooves).
As a result, we reverse the Examiner’s rejection of claim 69 and
claims 14, 17, 18, 28, and 73 dependent therefrom as obvious over Bush.

Rejection 2
In rejecting claims 74–76, which depend from claim 69, as obvious
over Bush and Mazur, the Examiner relies on the same determinations for
claim 69 with respect to Bush we found to be deficient above. Final Act. 7.
Mazur fails to remedy the above identified deficiencies in Bush.
Accordingly, we reverse the Examiner’s rejection of claims 74–76 as
obvious over Bush and Mazur for the reasons identified with respect to
Rejection 1.

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Rejection 3
The Examiner’s Rejection
In rejecting claim 69 as obvious over Zhu, the Examiner found, inter
alia, Zhu discloses a method of laser machining to form the arrangement of
microgrooves and nanogrooves recited in claim 69. Final Act. 8–9; Ans. 11.

Appellant’s contentions
Appellant contends Zhu does not disclose forming microgrooves, but
rather discloses forming nanostructures, which are only nanoscale ridges and
grooves. Appeal Br. 16–17.

Issue
Did the Examiner err in finding Zhu discloses a method of
engineering a surface of a material to produce “a first series of adjacent
wicking microgrooves” and “an array of parallel nanogrooves that are
parallel to the first series of parallel microgrooves” as recited in claim 69?

Discussion
We are persuaded that Zhu fails to disclose a method for producing
the arrangement of microgrooves and nanogrooves recited in claim 69. The
Examiner annotated the “Section Analysis” of Figure 1 disclosed in Zhu
(reproduced below) to support the position that Zhu discloses the
arrangement of microgrooves and nanogrooves recited in claim 69. Ans. 11.
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The “Section Analysis” of Figure 1 depicts the size of three-
dimensional nanostructure ridges/grooves on a polystyrene substrate made
by laser, which is roughly ~250 nm in periodicity and 50–60 nm in depth.
Zhu 45. The Examiner annotated a black line along the top of the
nanostructure ridges/grooves to indicate the presence of microgrooves, with
dashed black lines at the top and bottom of the image to indicate a
microscale groove width.
We agree with Appellant that the Examiner’s annotations on the cross
sectional view are insufficient to establish that the surface structure in Zhu
contains microgrooves. Reply Br. 7–8. In this regard, the orientation of the
image of the three-dimensional structure in Figure 1 of Zhu is insufficient to
show the structure contains microgrooves as asserted by the Examiner. Id.;
Zhu 45.
Moreover, the contact angles (a measure of hydrophilicity) in Figure 3
of Zhu provide further evidence that the structure in Zhu does not
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correspond to the microgroove/nanogroove “superhydrophilic” materials in
claim 1, as the smallest contact angle reported is ~55°, which is well above
the contact angles of “zero or nearly a zero contact angle” required for a
“superhydrophilic” material as disclosed in the Specification. Zhu 44–46;
Spec. 3–4.
Accordingly, we reverse the Examiner’s rejection of claim 69, and
claims 14 and 18 dependent therefrom, as obvious over Zhu.

Rejections 4 and 5
In rejecting claims 17 and 73–76, which depend from claim 69, the
Examiner relies on the same determinations for claim 69 with respect to Zhu
we found to be deficient above. Final Act. 9–11. Cai and Mazur fail to
remedy the above identified deficiencies in Zhu.
Accordingly, we reverse the Examiner’s rejection of claims 17 and 73
as obvious over Zhu and Cai and the Examiner’s rejection of claims 74–76
as obvious over Zhu and Mazur for the reasons identified with respect to
Rejection 3.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
14, 17, 18,
28, 69, 73
103 Bush 14, 17, 18,
28, 69, 73
74–76 103 Bush, Mazur 74–76
14, 18, 69 103 Zhu 14, 18, 69
17, 73 103 Zhu, Cai 17, 73
74–76 103 Zhu, Mazur 74–76
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Overall
Outcome
14, 17, 18,
28, 69, 73–
76

REVERSED