Ex Parte Hempelmann et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612669603 (P.T.A.B. Feb. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/669,603 7590 Heribert Muensterer FILING DATE 07/12/2010 02/23/2016 1317 Village Green Drive Southlake, TX 76092 FIRST NAMED INVENTOR Rolf Hempelmann 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. 0118635/0573149 5722 EXAMINER PIZIALI, ANDREW T ART UNIT PAPER NUMBER 1789 MAILDATE DELIVERY MODE 02/23/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLF HEMPELMANN, HARALD NATTER, and VIVIEN KELLER Appeal2014-004607 Application 12/669,603 1 Technology Center 1700 Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the decision2 of the Primary Examiner rejecting claims 22-24, 26-28, and 30-39. Final Act. 3- 5. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. OPINION Appellants' invention relates to an "ultrahydrophobic substrate provided on its surface with metallic nanoparticles." Spec. 1, 11. 6-7. 1 Because there is no statement of real parties in interest in Appellants' briefing, the real parties in interest are presumed to be Appellants themselves. 37 C.F.R. § 41.37(c)(l)(i). 2 Final Office Action, mailed May 6, 2013 ("Final Act."). Appeal2014-004607 Application 12/669,603 Claim 22, reproduced below, is representative of the appealed subject matter: 22. An electrically conductive ultrahydrophobic substrate, wherein the substrate has a water contact angle of:'.::: 150° and has deposited on top of an ultrahydrophobic surface thereof metallic nanoparticles which are free of carbon black and do not contain any agglomerates having a mean size equal to or larger than 50 nm. Appeal Br. 19. The Examiner rejected claims 22-24, 26, 28, and 30-39 under 35 U.S.C. § 102(b) as anticipated by Wang; 3 claims 22-24, 26, 28, and 30-39 under 35 U.S.C. § 103(a) as obvious over Wang; and claims 22-24, 26-28, and 30-39 under 35 U.S.C. § 103(a) as obvious over the combination of Wang and Luzinov. 4 Final Act. 3-5. In addition, the Examiner entered three rejections that were subsequently withdrawn on appeal: claims 28 and 30-39 under 35 U.S.C. § 112, 2d paragraph, as failing to particularly point out and distinctly claim the claimed subject matter; claims 22-24; 26; 28; and 30-39 under 35 U.S.C. § 103(a) as obvious over the combination of Wang and Kanagasabapathy; 5 and claims 22-24, 26-28, and 30-39 under 35 U.S.C. § 103(a) as obvious over the combination of Wang, Kanagasabapathy, and Luzinov. Id. at 2-3, 5---6; Answer 2. Appellants present five arguments that each apply to each of the three remaining rejections, as well as one additional argument that only applies to the rejection over the combination of Wang and Luzinov. Appeal Br. 8-14. First, with respect to all the remaining rejections, Appellants argue that 3 Wang et al., US 2006/0008618 Al, published Jan. 12, 2006. 4 Luzinov et al., US 2007/0026193 Al, published Feb. 1, 2007. 5 Kanagasabapathy et al., US 8,258,206 B2, issued Sep. 4, 2012. 2 Appeal2014-004607 Application 12/669,603 Wang fails to disclose, teach, or suggest "a substrate with a surface that is ultrahydrophobic in the absence of any particles (e.g., metallic nanoparticles) thereon." Appeal Br. 10. This argument is not persuasive. The Examiner found that Wang discloses both (1) a "substrate" that is formed by applying a first layer of metallic nanoparticles to a surface and (2) a second layer of nanoparticles that is deposited on this "substrate." Final Act. 4 (citing Wang i-fi-f 11, 12, 21, claim 17). The Examiner also found that Wang discloses that the deposition of each of the two layers of metallic nanoparticles results in an ultrahydrophobic surface with a water contact angle of 150° or more. Id. (citing Wang i-f 19). The disclosure of Wang provides evidence to support the Examiner's findings, which are sufficient to teach all that Appellants' claims require: the presence of an ultrahydrophobic substrate (Wang's substrate plus Wang's first layer of metallic nanoparticles) and the presence of a layer of metallic nanoparticles (Wang's second layer of metallic nanoparticles) deposited on that substrate. It is irrelevant that Wang fails to teach a surface that is ultrahydrophobic in the absence of a first layer of metallic nanoparticles, because Appellants' claims do not require this; the claims require only an ultrahydrophobic substrate and do not specify how that substrate must be constructed. Second, with respect to all the remaining rejections, Appellants argue that Wang teaches that its substrate (in the absence of metallic nanoparticles) has water contact angles of less than 120°, rather than the claimed 150° or more. Appeal Br. 10. This argument is unpersuasive. As discussed above, the water contact angle of Wang's substrate is irrelevant, because the rejections are based on Wang disclosing the claimed ultrahydrophobic 3 Appeal2014-004607 Application 12/669,603 substrate with a 150° or greater water contact angle in its combination of a substrate and a first layer of metallic nanoparticles. Third, with respect to all the remaining rejections, Appellants argue that the Examiner erred in finding that Wang discloses the successive application of multiple layers of nanoparticles, because it discloses only a single application of nanoparticles that may occupy more than one layer. Appeal Br. 10-11. This argument is not persuasive. Appellants' claims do not require that the substrate be completely present before the top layer of metallic nanoparticles is deposited. Instead, Appellants have claimed only a finished product that has within it a surface that would, if exposed, be ultrahydrophobic with a water contact angle of at least 150°, and that has, located on that surface, a layer of metallic nanoparticles with particular properties. Id. at 19. The Examiner found that Wang discloses these limitations, and there is, as discussed above, evidence to support that finding. Fourth, with respect to all the remaining rejections, Appellants argue that, even if Wang teaches separate layers of metallic nanoparticles, it teaches only that the collection of all the layers produces a finished surface that is ultrahydrophobic, rather than teaching that each layer of nanoparticles individually would produce an ultrahydrophobic surface. Appeal Br. 12. This argument is not persuasive. In disclosing the presence of multiple layers of metallic nanoparticles, Wang makes a distinction between the "top coat" that is made of metallic nanoparticles and the "layer[ s ]" of metallic nanoparticles that make up that "top coat." Wang, claim 1 7. Wang's disclosure of water contact angles in excess of 150° is with respect to the "nanoparticle surface layer," not with respect to the "top coat." 4 Appeal2014-004607 Application 12/669,603 Accordingly, Wang discloses that each layer of metallic nanoparticles has a water contact angle of 150° or more, not merely that the collection of all layers of metallic nanoparticles produces a surface with such a water contact angle. Fifth, with respect to all the remaining rejections, Appellants argue that their claims are limited to ultrahydrophobic surfaces that are made by means other than particle deposition, the only means by which Wang teaches making an ultrahydrophobic surface. Appeal Br. 12 (citing Spec. 1, 11. 19-- 24, 2, 11. 6-14, Examples 1-3). This argument is not persuasive. An inventor may define specific terms used to describe an invention, but must do so "with reasonable clarity, deliberateness, and precision" and must "'set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change" in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992) ). Appellants do not limit "ultrahydrophobic surface" to surfaces not made by particle deposition in this way. Appellants state that "[ s ]uperhydrophobic surfaces ... have been obtained by controlling the surface topography ... by various processing methods, such as machining and etching." Spec. 1, 11. 19--22. This is merely a statement about how "superhydrophobic surfaces" "have been obtained," not a statement about the only ways in which to obtain an "ultrahydrophobic surface." Further, Appellants state that "[a] substrate can be rendered increasingly hydrophobic by a chemical modification ... which reduces the surface energy," Spec. 2, 11. 12-14, but this is again merely a statement detailing one way in which a 5 Appeal2014-004607 Application 12/669,603 surface "can be" made more hydrophobic, not a limitation on the ways in which an "ultrahydrophobic surface" may be made. The Examples in Appellants' Specification use "a graphitized non- woven carbon fibrous substrate" rather than a substrate obtained by particle deposition. Spec. 13, 1. 28. But limitations not present in the claims cannot be imported from the Specification. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003); In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Accordingly, we do not interpret Appellants' claims as limited to ultrahydrophobic surfaces made by the means taught in Appellants' Examples. Instead, we interpret "ultrahydrophobic surface" as it is defined in Appellants' Specification: it "comprises a high surface roughness ... so that a large geometric surface area exists for a relatively small projected surface area," without any limitation on how this rough surface can be created. Under this interpretation, surfaces made by particle deposition, such as those disclosed by Wang, are not outside the scope of Appellants' claims. Finally, with respect to claims 28 and 30-39, Appellants argue that Wang does not teach the limitations reciting the process by which the claimed product is made. Appeal Br. 13-14. This argument does not persuade us that the Examiner erred reversibly in rejecting these claims. These claims are product-by-process claims, because they are directed to a product "'defined ... in terms of the method or process by which it is made."' SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (quoting Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 (1989)). Product-by-process claims are directed to the ultimate product, not to the underlying process. SmithKline, 439 F.3d at 6 Appeal2014-004607 Application 12/669,603 1317 ("Regardless of how broadly or narrowly one construes a product-by- process claim, it is clear that such claims are always to a product, not a process."). Thus, "[i]f the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F .2d 695, 697 (Fed. Cir. 1985). In other words, "[t ]he patentability of a product does not depend on its method of production." SmithKline, 439 F.3d at 1317. Appellants have not alleged, let alone met their burden to demonstrate, that their claimed product is a different product from the otherwise-identical or obvious product disclosed in Wang as made using a different process. Because none of Appellants' arguments persuade us that the Examiner erred harmfully in rejecting Appellants' claims, we affirm the Examiner's rejections. ORDER The Examiner's rejections of claims 22-24, 26, 28, and 30-39 under 35 U.S.C. § 102(b) as anticipated by Wang; of claims 22-24, 26, 28, and 30-39 under 35 U.S.C. § 103(a) as obvious over Wang; and of claims 22- 24, 26-28, and 30-39 under 35 U.S.C. § 103(a) as obvious over the combination of Wang and Luzinov are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED 7 Copy with citationCopy as parenthetical citation