Ex Parte Kornblit et al

Patent Trial and Appeal Board

Apr 21, 2016

12370219 (P.T.A.B. Apr. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/370,219 02/12/2009
47394 7590 04/25/2016
PARKER JUSTISS, P,CJALCATEL-LUCENT
PO BOX 832570
RICHARDSON, TX 75083
FIRST NAMED INVENTOR
Avinoam Kornblit
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.
KORNBLIT
28-58-21-5-46-27
CONFIRMATION NO.
5300
EXAMINER
HYUN, PAUL SANG HWA
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
04/25/2016 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):
docket@pj-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVINOAM KORNBLIT, THOMAS NIKITA
KRUPENKIN, MARY LOUISE MANDICK, TOBIAS
MANUEL SCHNEIDER, JOSEPH ASHLEY TAYLOR, and
YANG SHU
Appeal 2014-006861
Application 12/370,219
Technology Center 1700
Before TERRY J. OWENS, PETERF. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 26, 29, 33-35 and 38. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim an apparatus for controlling the movement of
liquid on a surface. Claim 26 is illustrative:
Appeal2014-006861
Application 12/370,219
Clark
26. An apparatus, comprising:
a substrate having a surface with a plurality of
nanostructures or microstructures thereon, said plurality of
nanostructures or microstructures being able to support a
droplet of liquid disposed on tops thereof wherein:
at least a portion of said nanostructures or
microstructures has an increased spatial density along a
predetermined direction on said surface, such that a leading
edge of said droplet that is closer to said increased spatial
density has a lower contact angle than a trailing edge of said
droplet that is farther away from said increased spatial density,
and
said predetermined direction leads to a location on said
substrate having a highest spatial density of said nanostructures
or microstructures.
The Reference
us 5,674,592
The Rejection
Oct. 7, 1997
Claims 26, 29, 33-35 and 38 stand rejected under 35 U.S.C. § 103
over Clark.
OPINION
We reverse the rejection. We need address only the independent
claims (26 and 33). Those claims require an increasing spatial density of
nanostructures or microstructures (claim 26) or nanoposts or microposts
(claim 33) along a predetermined direction on a surface. 1
Clark discloses "a nanostructured film having a plurality of
nanostructure elements [ 48] coated with an organized molecular assembly
(OMA) [55]" (col. 2, 11. 33-35; Figs. 2A, 2B). "Advantageously, the
1 In claim 33, "said nanostructures or microstructures" lacks antecedent basis
and apparently should read "said nanoposts or microposts".
2
Appeal2014-006861
Application 12/370,219
chemical and wetting characteristics of the surface [42] can be altered by
changing the functionality of the OMA end groups exposed to the
environment in contact with the surface of the nanostructured film" (col. 2,
11. 38--42). The "surfaces may be patterned or unpatterned. A patterned
surface could include for example, regions of hydrophobicity and regions of
hydrophilicity" (col. 7, 11. 38--40). "Liquid repellency of the surface can
change sharply from no wetting (rolling drops) to strong capillary wetting
with only a small change in liquid surface tension" (col. 2, 11. 46--49).
The Examiner argues:
While the disclosure of Clark et al. is mainly concerned with
controlling the flow of a droplet by exploiting the chemical
properties of a surface comprising nanostructures, given that
Clark et al. disclose:
i) that roughness affects the wettability of a surface (see
lines 45-53, col. 1 );
ii) that the roughness of a surface comprising
nanostructures is dependent on the spatial density of said
nanostructures (see Figs. IC and ID and lines I-7, col. 3); and
iii) the use of a pattern to direct the flow of droplet to a
specific location on a surface comprising nanostructures (see
lines 35-45, col. 7);
the examiner maintains that it would have been obvious
to one of ordinary skill in the art to form a pattern based on
nanostructure spatial density to control the flow of a droplet on
a surface comprising nanostructures. [Ans. 4--5]
one of ordinary skill in the art would readily recognize that the
macroscopic appearance of a droplet on a surface is directly
related to the wettability of said surface (e.g. water forms beads
on a hydrophobic surface while water wets or soaks a
hydrophilic surface). In other words, based on these passages,
one of ordinary skill in the art would conclude that surface
roughness affects the wettability of said surface. While these
passages alone do not disclose or suggest the claimed invention,
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Appeal2014-006861
Application 12/370,219
the examiner maintains that the passages in combination with
the other passages of Clarke et al. discussed above render the
claimed invention obvious. [Ans. 5---6]
Regarding the Examiner's item iii above, the relied-upon portion of
Clark does not disclose using a pattern to direct droplet flow to a specific
location on a surface but, rather, merely discloses that the surface can have
hydrophobic and hydrophilic regions.
Establishing a prima facie case of obviousness requires an apparent
reason to modify the prior art as proposed by the Examiner. See KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner has not
established that the relied-upon indications in Clark that surface roughness
affects wettability would have provided one of ordinary skill in the art with
an apparent reason to pattern a surface with nanostructure elements which
increase in spatial density in a predetermined direction along the surface.
DECISION/ORDER
The rejection of claims 26, 29, 33-35 and 38 under 35 U.S.C. § 103
over Clark is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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