Ex Parte Debe et al

Board of Patent Appeals and Interferences

Aug 16, 2011

11225690 (B.P.A.I. Aug. 16, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK K. DEBE, RAYMOND J. ZIEGLER and
SUSAN M. HENDRICKS
____________

Appeal 2010-006826
Application 11/225,690
Technology Center 1700
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

Appeal 2010-006826
Application 11/225,690 
 
  2
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal the Examiner's rejection
under 35 U.S.C. § 103(a) of claims 1-17 and 19-24 as unpatentable over Debe (US
5,879,828, issued Mar. 9, 1999) in view of Cannaday (US 3,257,245, issued Jun.
21, 1966) and of claim 18 as unpatentable over these references and further in view
of Hampden-Smith (US 2001/0038808 A1, published Feb. 26, 2004). We have
jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants claim a method of forming nanostructured support elements
comprising the steps of depositing then annealing a first layer of material to form
the nanostructured support elements and depositing then annealing a second layer
of the material to longitudinally extend the nanostructured support elements
(claims 1, 21).
Representative claim 1 reads as follows:
1. A method involving formation of nanostructured support elements,
comprising:
depositing a first layer of material on a substrate;
annealing the first layer to form a layer of the nanostructured support
elements;
depositing a second layer of the material on the nanostructured support
elements; and
annealing the second layer to longitudinally extend the nanostructured
support elements.
Appellants do not separately argue the dependent claims under rejection
including separately rejected claim 18 (Br. 7). Therefore, in our disposition of this
Appeal 2010-006826
Application 11/225,690 
 
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appeal, we will focus on independent claims 1 and 21 of which claim 1 is
representative.
The Examiner finds that Debe teaches depositing then annealing a layer of
material to form nanostructured support elements but does not explicitly teach
depositing then annealing a second layer of material in order to longitudinally
extend the nanostructured support elements (Ans. para. bridging 3-5). The
Examiner concludes that it would have been obvious to provide the method of
Debe with a second depositing then annealing step in order to longitudinally
extend the nanostructured support elements in view of Debe's teaching that the
lengths of the nanostructures will be proportional to the thickness of the layer
initially deposited (col. 11, ll. 1-25) and in view of Cannaday's teaching to repeat a
coating then firing (cf., depositing then annealing) step so as to increase coating
thickness and ensure complete coverage (col. 2, ll. 6-15, col. 9, ll.. 18-24) (Ans.
para. bridging 3-5, para. bridging 10-12).
Appellants argue that Debe and Cannaday contain no teaching or suggestion
of depositing then annealing a second layer to longitudinally extend Debe's
nanostructured support elements in accordance with the requirements of
independent claims 1 and 21 (Br. 5-7).
Appellants' argument is unpersuasive. For the reasons more fully detailed in
the Answer, a second depositing then annealing step would have been suggested by
Debe's teaching of desirably increasing nanostructure length by increasing
deposited-layer thickness and by Cannaday's disclosure which evinces that it was
known in the prior art to repeatedly coat then fire (cf., deposit then anneal) in order
to increase coating thickness and ensure complete coverage. In response to
Appellants' remark that nanostructured elements are not found in Cannaday (Br. 7),
Appeal 2010-006826
Application 11/225,690 
 
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we reiterate the Examiner's finding that Cannaday's disclosure is not limited to the
ceramic coating disclosed therein (Ans. 11). Further, it is appropriate to emphasize
that this finding has not been disputed by Appellants in the record before us.
For the reasons stated above and in the Answer, the Examiner's § 103
rejection of independent claims 1 and 21 establishes a prima facie case of
obviousness which Appellants have failed to successfully rebut with argument or
evidence of nonobviousness. As a consequence, Appellants have not identified
reversible error in the Examiner's rejection of the independent claims, and
accordingly we sustain this rejection as well as the rejections of the non-argued
dependent claims.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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