Ex Parte Heller et alDownload PDFPatent Trial and Appeal BoardSep 28, 201613318670 (P.T.A.B. Sep. 28, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/318,670 11/03/2011 23117 7590 09/30/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Christoph Heller 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 ATTORNEY DOCKET NO. CONFIRMATION NO. BJS-5065-132 9003 EXAMINER CARPENTER, WILLIAM R ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 09/30/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPH HELLER, ULRICH REIDT, ALOIS AFRIEDBERGER, and KARIN BAUER Appeal2014-008712 Application 13/318,670 Technology Center 3700 Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and JENNIFER R. GUPTA, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner's final rejection of claims 67-77, and 87. An oral hearing was conducted on September 15, 20016. We have jurisdiction pursuant to 35 U.S.C. § 6. Appellants' claimed invention is directed to a self-regenerating surface structure. Claim 67 is illustrative and reproduced below: 67. A self-regenerating surface structure comprising at least one of molecules from the group consisting of biocatalytic molecules and anti-icing molecules, said at least one of said molecules located on an exposed surface Appeal2014-008712 Application 13/318,670 of said surface structure and at least one of said molecules from said group are embedded or contained in said surface structure so as to form a self- regenerating surface structure. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Lin Luzinov McDaniel US 2006/0154069 Al US 2007 /0026193 A 1 US 2010/0210745 Al Jul. 13,2006 Feb. 1,2007 Aug. 19, 2010 Stevens, et al., Nanofibers and nanotechnology in textiles, The Textile Institute, Woodhead Publishing Limited (2007). The Examiner maintains the following grounds of rejection: Claims 67-72, 77, and 87 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Luzinov. Claim 73 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Luzinov in view of Lin. Claims 74 and 75 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Luzinov in view of Stevens. Claim 76 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Luzinov in view of McDaniel. We reverse the stated rejections. For each of the stated rejections, the Examiner bears the initial burden of presenting a prima facie case establishing the non-patentability of the rejected claims. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Anticipation Rejection In order for the Examiner to carry the burden of establishing a prima facie case of anticipation, the Examiner must establish where each and every element of the claimed invention, arranged as required by the claim, is found 2 Appeal2014-008712 Application 13/318,670 in a single prior art reference, either expressly or under the principles of inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Appellants argue that the Examiner has not established that Luzinov describes a self-regenerating surface structure as required by independent claim 67 including at least one biocatalytic or anti-icing molecule on an exposed surface of the surface structure and at least one such molecule embedded or contained in the surface structure (App. Br. 8-13; Reply Br. 2- 7). The Examiner, on the other hand, urges that an anticipating description of all of the elements as required by claim 67 can be found in paragraphs 8, 9, 30, 58, and 62, and the abstract of Luzinov (Final Act. 2--4; see Ans. 2--4, 9-16). However, the Examiner does not articulate how the relied upon disclosure furnishes an anticipating description of subject matter that any of the rejected claims read on. For example, the Examiner refers to the abstract and paragraph 30 of Luzinov for a teaching respecting the attachment of micro-sized structures to a substrate surface and for the grafting of a hydrophobic material to the surface (Final Act. 2-3; Ans. 2-3). The Examiner refers to paragraphs 8, 9, 58, and 62 of Luzinov for teachings respecting certain functionalized polymers or macromolecules, such as proteins, DNA, polysaccharides, etc., which can be grafted to the substrate (Final Act 3; Ans. 3). Thereafter and without further citation, the Examiner generally asserts that "Luzinov's disclosure teaches different molecules which exhibit anti-icing and biocatalytic properties which are present on the surface of the structure, as well as embedded therein (Final Act. 4; Ans. 4). 3 Appeal2014-008712 Application 13/318,670 However, the Examiner fails to establish a connection between any particular molecule identified by the Examiner that is described by Luzinov and the location in the disclosure of an explicitly described anti-icing or explicitly described biocatalytic functionality. Furthermore, the Examiner does not make the case for a particularly identified molecule's inherent anti- icing and/or biocatalytic functionality; each together with the Examiner's identification of the description provided by Luzinov for the molecule's location to establish Luzinov's description of the molecule's presence on an exposed surface of a surface structure of Luzinov, and the identification of the location of description of at least one such molecule being embedded or contained within the surface structure of Luzinov. Indeed, the Examiner states that the disclosure of Luzinov respecting "a hydrophobic layer (anti-icing layer which contains anti-icing molecules) 42 which is grafted on the second polymer layer 40 (paragraph [0059] and Figure 2)" is "not currently relied upon in the current rejection of record" (Ans. 13). The Examiner's disavowal undercuts the case for anticipation attempted to be made by the Examiner in the rejection under review on appeal in so far as it could have been predicated on Luzinov's disavowed disclosures pertaining to certain molecules (polymer) that may be part of the disavowed hydrophobic layer disclosed by Luzinov. Nor has the Examiner established that Luzinov's description of proteins, DNA, polysaccharides, etc., that can be grafted to the substrate is [inherently] a description of any particular molecule that necessarily has a biocatalytic functionality and/or an anti-icing functionality, much less a description of such a particular molecules' location on an exposed surface of an identified surface structure of Luzinov and the description of the location 4 Appeal2014-008712 Application 13/318,670 of such a molecule as being embedded or contained within such a surface structure of Luzinov, as required by independent claim 67 (Final Act. 3; Ans. 3, 10-16; Luzinov i-f 62). In this regard, the Examiner has not established that the disclosure of proteins by Luzinov is itself a description of enzymes or another molecule having biocatalytic functionality (Reply Br. 6; App. Br. 9-13). In sum, Appellants' arguments persuade us that the Examiner has not carried the burden to establish that Luzinov, as applied by the Examiner, describes a surface structure that sufficiently corresponds to the claimed surface structure such that each and every element of the claimed invention, arranged as required by claim 67, can be found in Luzinov such that Luzinov anticipates claim 67, the sole independent claim subject to the anticipation rejection. It follows that we reverse the Examiner's anticipation rejection. Obviousness Rejection All of the dependent claims subject to the several separate obviousness rejections maintained by the Examiner require the features of independent claim 67. In the stated obviousness rejections, the Examiner addresses the additional features required by the separately rejected dependent claims without further specifying how the additional applied references in the several separate rejections would have suggested the features of independent claim 67, which features are included in these dependent claims by virtue of their dependency on claim 67 (Ans. 5-9). For reasons discussed above, the Examiner's separate rejection of certain dependent claims in the separate obviousness rejections fall short because 5 Appeal2014-008712 Application 13/318,670 the Examiner has not specifically articulated how the obviousness position advocated for the additional features added by the latter claims overcomes the deficiencies in the base anticipation rejection upon which the obvious rejections of the latter claims are built upon. Accordingly, we reverse the Examiner's obviousness rejections. CONCLUSION The Examiner's decision to reject the appealed claims is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation