UT-BATTLELLE, LLC

Patent Trials and Appeals BoardJun 18, 2021

2020004364 (P.T.A.B. Jun. 18, 2021)

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. 13/767,244 02/14/2013 Tolga AYTUG 6321-366-1CIP 157379.0911 2943 46592 7590 06/18/2021 Fox Rothschild LLP / UTB 997 Lennox Drive Building 3 Lawrenceville, NJ 08648 EXAMINER GUO, TONG ART UNIT PAPER NUMBER 1783 NOTIFICATION DATE DELIVERY MODE 06/18/2021 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): ipdocket@foxrothschild.com svieau@foxrothschild.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOLGA AYTUG and JOHN T. SIMPSON Appeal 2020-004364 Application 13/767,244 Technology Center 1700 Before TERRY J. OWENS, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 13–21. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as UT-Battelle, LLC (Appeal Br. 3). Appeal 2020-004364 Application 13/767,244 2 CLAIMED SUBJECT MATTER The claims are directed to an article having a nanostructured surface layer. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. An article having a nanostructured surface layer, comprising: a substrate; and a nanostructured SiO2-rich layer bonded to said substrate, wherein said nanostructured layer comprises a plurality of spaced apart branched nanostructured spinodal features comprising a contiguous, protrusive material, wherein a width of said nanostructured features ranges from 1 to 500 nm; a continuous hydrophobic layer adhered to a plurality of surfaces of the nanostructured features, wherein the continuous layer has a thickness of from 1 to 60 nm, wherein the continuous layer comprises a polyphobic compound, wherein the at least one polyphobic compound is both hydrophobic and oleophobic; a plurality of interconnected nanopores formed by said plurality of nanostructured features, the nanopores having a major diameter ranging from 5-500 nm, the nanostructured layer having a thickness of no more than 2000 nm, and the interconnected nanopores extending through the thickness of the layer; and an oil having a boiling point of at least 120 °C pinned in the plurality of nanopores by Van der Walls forces, such that the nanostructured features protrude from the oil, wherein the nanostructured surface layer is superoleophobic having a contact angle with a drop of fingerprint oil of from 70 to 180 degrees, superhydrophobic having a contact angle with water of at least 140 degrees, optically transparent having a Strehl ratio ≥ 0.5, antireflective and reflecting less than 1 % of incident visible light and blocking at least 80% of UV radiation across a broad spectrum at of least 150 nm, and smear resistant. Appeal 2020-004364 Application 13/767,244 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Weber US 2003/0122269 A1 July 3, 2003 D'Urso US 2006/0024508 A1 Feb. 2, 2006 Simpson US 2007/0184247 A1 Aug. 9, 2007 Nicholas US 2009/0118384 A1 May 7, 2009 Jin US 2011/0229667 A1 Sept. 22, 2011 REJECTION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 13–21 103(a) D’Urso, Simpson, Weber, Jin, Nicholas OPINION We need address only the sole independent claim, i.e., claim 13. That claim requires an oil pinned to a plurality of nanopores by Van der Walls forces. The Appellant’s Specification states that “‘pinned’ refers to being held in place by surface tension forces, van der Waal forces (e.g., suction), or combinations of both” (Spec. 12:30–31). To meet that claim requirement, the Examiner relies upon Jin and Nicholas (Final 6–7; Ans. 17–19, 21–22). Jin discloses a substrate coated with nanowires having tips coated with a polymeric liquid that can comprise polydimethylsiloxane2 and is hardened to form a mushroom tip geometry to provide the substrate with a superhydrophobic, superoleophobic, and/or superomniphobic surface having a contact angle with a water droplet and/or an oil droplet greater than about 140º (¶¶ 10, 16; claim 44). 2 The Appellant’s oil can be a polysiloxane (Spec. 13: 6–9). Appeal 2020-004364 Application 13/767,244 4 Nicholas discloses an open cell foam rendered water and oil repellant by wetting its exterior and interior surface area with a treatment chemical that can be polydimethylsiloxane (¶¶ 5, 19; claim 8). D’Urso discloses a super-hydrophobic, nanostructured sodium borosilicate glass that is phase separated by spinodal decomposition and can have a hydrophobic coating (¶¶ 29–32). Simpson discloses a super-hydrophobic, nanostructured sodium borosilicate glass that is phase separated by spinodal decomposition and has spinodal feature dimensions of about 4 nm to 500 nm (¶ 12). Weber discloses an ophthalmic lens having several optical coatings, the top coating being hydrophobic and having a thickness that usually is 1 to 30 nm (¶¶ 3, 151). The Examiner finds (Final 8): Since the prior arts uses the same polysiloxane oil as the instant application, and the nanostructure in prior arts has overlapping features as the instant application, the resulting properties are expected the same. Since the combination of prior arts have exactly the same nanopore structure with the same pinned oil as the instant application, the same Van der Walls forces will also exist between the nanostructure feature and oil in the combination of prior arts just like the instant application. The Examiner states that “Nicholas is only relied upon to teach the polysiloxane or the oil can also be applied by wetting treatment or pinning treatment” (Ans. 17), “Nicholas et al. discloses polysiloxane can be used be [sic] applied by wetting treatment or pinning treatment to enable a nanoporous surface both hydrophobic and oleophobic (see e.g. title, abstract, claim 8)” (Ans. 19), and “[p]inned oil acting as an index matching fluid is a property of the pined [sic] oil and since Jin and Nicholas disclose the same Appeal 2020-004364 Application 13/767,244 5 pinning oil as the instant application, the pinning oil in Nicholas will have the same optical properties as claimed in the instant application” (id.). The Examiner does not specifically point out any disclosure of pinned oil in Jin or Nicholas. The Appellant, in reliance upon a Declaration of Tolga Aytug (¶¶ 9, 11, 12), a Declaration of Brian D’Urso (¶ 8), and a Second Declaration of John Simpson (¶¶ 10–12), argues that the applied references do not disclose a pinned oil (Appeal Br. 21–22). When an Examiner makes a reasonable fact finding and the Appellant does not challenge it, we can accept it as fact. See In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964). The Appellant, however, has challenged the Examiner’s finding that the applied references disclose a pinned oil. Consequently, the Examiner must provide evidentiary support for the finding. The Examiner, however, has not done so. Moreover, setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner concludes (Ans. 8–9): Both D'Urso et al. in view of Simpson and Weber; Jin and Nicholas are analogous in the field of hydrophobic surface, it would have been obvious for a person with ordinary skills in the art to modify D'Urso et al. in view of Simpson and Weber with the teaching of Jin and Nicholas to wet the surface with polysiloxane liquid while the nanostructure is still protruding from the polysiloxane liquid to impart the surface both superhydrophobic and superoleophobic such that the contact angle with water droplet and a Appeal 2020-004364 Application 13/767,244 6 contact angle with oil droplet that both are greater than about 140 degrees. That mere assertion does not establish that the disclosure in Jin or Nicholas would have provided one of ordinary skill in the art with an apparent reason to modify the combined disclosures of D’Urso, Simpson, and Weber as proposed by the Examiner. Thus, as pointed out by the Appellant (Appeal Br. 21), the record indicates that the Examiner’s combination of Jin and Nicholas with D’Urso, Simpson, and Weber is based upon impermissible hindsight in view of the Appellant’s disclosure. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). For the above reasons, we reverse the rejection. CONCLUSION The Examiner’s decision to reject claims 13–21 is reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 13–21 103(a) D’Urso, Simpson, Weber, Jin, Nicholas 13–21 REVERSED