Ex Parte Azimi et al

Patent Trial and Appeal Board

Nov 17, 2017

13679729 (P.T.A.B. Nov. 17, 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.
13/679,729 11/16/2012 Gisele Azimi 0492611-1195 8661
24280 7590 11/30/2017
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
ORTMAN JR., KEVIN C
ART UNIT PAPER NUMBER
1782
NOTIFICATION DATE DELIVERY MODE
11/30/2017 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):
patentdocket @ choate. com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GISELE AZIMI, YUEHUA CUI, J. DAVID SMITH,
and KRIPA K. VARANASI
Appeal 2017-002326
Application 13/679,7291
Technology Center 1700
Before LINDA M. GAUDETTE, AVELYN M. ROSS, and BRIAN D.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—7, 10, 11, and 14—32. We have jurisdiction. 35
U.S.C. § 6(b).
We AFFIRM.
1 The Appellant is Massachusetts Institute of Technology which, according
to Appellant, is also the real party in interest. App. Br. 2.
Appeal 2017-002326
Application 13/679,729
STATEMENT OF THE CASE2
Appellant describes the invention as relating to inhibition or
prevention of scale formation during industrial process. Spec. 17. For
Example, the invention could relate to reducing calcium sulfate scale
deposits in the context of a pipeline or heat exchanger. Id. at || 3—6, 39-40.
Claims 1 and 2, reproduced below with formatting added and emphases
added to certain key recitations, are the only independent claims on appeal
and are illustrative of the claimed subject matter:
1. A vessel for use in an industrial process, the vessel
comprising
a surface in contact with a solution,
wherein the solution comprises at least one
mineral and the surface has ypolar / ytotal no
greater than about 0.1,
thereby providing resistance to mineral
scale deposits thereupon,
wherein the surface comprises discrete nucleation sites
thereupon,
thereby promoting preferred mineral scale
nucleation at the discrete nucleation sites, a
resulting defective interface at the surface, and
reduced mineral scale adhesion upon the surface.
2. A vessel for use in an industrial process, the vessel comprising
a surface in contact with a solution,
2 In this opinion, we refer to the Final Office Action dated July 16, 2015
(“Final Act.”), the Appeal Brief filed April 12, 2016 (“App. Br.”), the
Examiner’s Answer dated September 29, 2016 (“Ans.”), and the Reply Brief
filed November 23, 2016 (“Reply Br.”).
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Application 13/679,729
wherein the solution comprises at least one mineral
and the surface has y no greater than about 32
m.T/m2,
thereby providing resistance to mineral scale
deposits thereupon,
wherein the surface comprises micro-scale and/or
nano-scale posts,
wherein the posts have walls that are
hydrophobic and tops that are
hydrophilic, thereby promoting preferred
mineral scale nucleation at the tops and
resulting in air pockets between posts.
App. Br. 14 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
O'Malley et al. US 7,597,148 B2 Oct. 6,2009
(hereinafter “O’Malley”)
Tuteja et al. WO 2009/009185 A2 Jan. 15, 2009
(hereinafter “Tuteja”)
Aizenberg et al. WO 2009/070796 Al June 4, 2009
(hereinafter “Aizenberg”)
Nimittrakoolchai et al., Deposition of organic-based superhydrophobic films
for anti-adhesion and self-cleaning applications, J. of the Eur. Ceramic Soc.
28 (2008) 974-952 (hereinafter “Nimittrakoolchai”).
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1—7, 10, 11, 14—30, and 32 under 35 U.S.C.
§ 103 as unpatentable over Aizenberg in view of Nimittrakoolchai and in
further view of Tuteja. Ans. 4.
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Application 13/679,729
Rejection 2. Claim 31 is rejected under 35 U.S.C. § 103 as
unpatentable over Aizenberg in view of Nimittrakoolchai and in further view
of Tuteja and O’Malley. Id. at 10.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellant’s arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant does not present any substantively distinct arguments for
the Examiner’s second rejection or for any dependent claims. App. Br. 11—
12. We therefore limit our discussion to claims 1 and 2. All dependent
claims stand or fall with the claim from which they depend. 37 C.F.R. §
41.37(c)(l)(iv) (2013).
The Examiner finds that Aizenberg teaches a template for fluidics-
induced localized nucleation and, in particular, teaches a super hydrophobic
surface with an array of posts wherein the fluid wets only an upper portion
of the raised surface structure. Ans. 4; see also, e.g., Aizenberg Figs. 3 A—D;
Fig. 4. The Examiner finds that Eisenberg teaches micro-scale or nano-scale
posts that have regions with different surface properties “such that the fluid
wets one or the other (i.e. hydrophilic tops and hydrophobic walls).” Ans.
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Application 13/679,729
4—5. The Examiner finds that Aizenberg does not expressly teach the
polarity recitations of claim 1 and 2 and does not expressly teach that the
surface may be a vessel. Id. at 5. The Examiner, however, makes findings
regarding Nimittrakoolchai and Tuteja teaching these recitations and
concludes that it would have been obvious to combine these teachings with
Aizenberg. Id.
With respect to claim 1, Appellant argues that Aizenberg does not
teach a surface that comprises discrete nucleation sites. App. Br. 8—9.
Aizenberg, however, teaches that its posts (as depicted, for example, in
Figure 4) are part of its superhydrophobic structure. Aizenberg 17
(referencing “raised surface structures of a superhydrophobic surface, such
as an array of wires, posts, or protrusions”). In this regard, Aizenberg is no
different than Appellant’s teachings regarding posts being part of the
surface. See, e.g., Spec. 113 (“the surface includes micro-scale and/or nano­
scale posts”); see also Ans. 11—12.
Appellant’s argument that Eisenberg’s posts are not “discrete” is also
not persuasive. Reply Br. 4—6. Appellant suggests that “discrete” as recited
in claim 1 refers to nucleation sites that comprise “a small fraction of the
total surface area” (App. Br. 9), but the Specification does not refer to
“discrete” in such a narrow manner. Rather, the portion of Smith, et al. U.S.
Patent Application No. 2012/0160362 Al, June 28, 2012 (hereinafter
“Smith”), refers to, at most, only one possible embodiment of Appellant’s
invention. Smith | 87 (stating that the hydrate “may comprise a small
fraction” (emphasis added)); see also Spec. 124 (incorporating Smith by
reference). We decline to construe “discrete” narrowly (i.e., as requiring
that the sites be only a small fraction of total surface area) based on this one
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embodiment. See Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc) (“[Although the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”).
Aizenberg teaches the use of many separate nucleation site posts (see,
e.g., Aizenberg Fig. 4), and nucleation occurs on only the upper portion of
the post (id. at | 8; see also discussion infra). A preponderance of the
evidence thus supports the Examiner’s finding that Aizenberg teaches
separated, i.e., discrete, nucleation sites. Ans. 4—5.
With respect to claim 2, Appellant argues that Aizenberg does not
teach posts with walls that are hydrophobic and tops that are hydrophilic.
App. Br. 9-11. Aizenberg, however, teaches that its posts are wetted “only
on an upper portion of the raised surface structure.” Aizenberg | 8; see also
Ans. 4—5. Aizenberg explains that this is accomplished by its posts (i.e., one
example of Aizenberg’s “raised surface structure”) comprising “two regions
having different surface properties.” Aizenberg 115. Aizenberg explains
that, based on the Cassie model, attracting fluid on its upper portion will
leave air trapped below. Id. at | 52; see also Ans. 13—14. The end result is
that nucleation occurs “on the tips of raised surface structures such as rods or
posts.” Aizenberg 173. Appellant’s argument is therefore not persuasive.
Appellant also argues that the Examiner errs by relying on
Aizenberg’s explanation of the Cassie model. App. Br. 10—11; Reply Br. 7—
8. We disagree. As explained above, Aizenberg teaches posts that are
wetted only on the tip or upper portion, and the Cassie model explains one
mechanism of how this could occur. Ans. 13—14. Claim 2 is not limited by
mechanism. Regardless of mechanism, Aizenberg as a whole teaches micro-
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scale or nano-scale posts having hydrophobic walls and hydrophilic tops as
recited in claim 2.
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
1-7, 10, 11, and 14—32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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