Ex Parte Maier et al

Patent Trial and Appeal Board

Feb 14, 2017

12737566 (P.T.A.B. Feb. 14, 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.
12/737,566 04/07/2011 Martin Maier 10191/6734 2674
24972 7590 02/16/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
AUER, LAURA A
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
02/16/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN MAIER, WILFRIED AICHELE,
NIKOLAUS HAUTMANN, MICHAEL HONER,
JUERGEN LANDER, and JENS KOENIG
Appeal 2015-006885
Application 12/737,566
Technology Center 1700
Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner rejected claims 16, 18-25 and 31-38 of Application
12/737,566 under 35 U.S.C. § 102(a) as anticipated and/or 35 U.S.C. 103(a)
as obvious, and provisionally rejected claims 16 and 18-25 on the basis of
nonstatutory double patenting. Non-Final Act. (June 5, 2014). Appellants1
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
1 Robert Bosch GmbH is identified as the real party in interest. Appeal
Br. 2.
Appeal 2015-006885
Application 12/737,566
For the reasons set forth below, we AFFIRM.
BACKGROUND
The present application generally relates to a two component
composite article. The first component has a surface structure with a
microstructure taught to be overlaid by a nanostructure. Such structure is
intended to result in improved adhesion between the two components.
Spec. 2. In an embodiment, the first component is made of metal and the
second component of plastic. Id. at 4. The composite is described as suited
for use in fuel-injection systems. Id. at 5.
Claim 16 is representative of the pending claims and is reproduced
below:
16. A component composite, comprising:
a first component having a first contact surface, the first contact
surface having a surface structure produced using
electromagnetic radiation, wherein the surface structure has a
microstructure overlaid by a nanostructure; and
at least one second component having a second contact surface
which presses against the first contact surface;
wherein the microstructure elements of the microstructure have
a diameter from a size range between 1 pm and 999 pm, and
wherein the nanostructure elements of the nanostructure have a
diameter from a size range between 1 nm and 999 nm.
Appeal Br. (Claims App. 1).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 16, 18-22, 24, 25, 37, and 38 are rejected under 35
U.S.C. § 102(a) as anticipated by or, in the alternative, under 35 U.S.C.
2
Appeal 2015-006885
Application 12/737,566
§ 103(a) as obvious over, Lasarov et al. (US 2008/0070001 Al, pub. Mar.
20, 2008) (hereinafter “Lasarov”). Non-Final Act. 2.
2. Claim 23 is rejected under 35 U.S.C. § 103(a) as obvious over
Lasarov in view of Aversenti et al. (US 2006/0228546 Al, pub. Oct. 12,
2006) (hereinafter “Aversenti”). Id. at 5.
3. Claim 24 is rejected under 35 U.S.C. § 103(a) as obvious over
Lasarov. Id.
4. Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
obvious over Lasarov in view of Brooks et al. (US 3,086,216, iss. Apr. 23,
1963) (hereinafter “Brooks”). Id. at 6.
5. Claim 33 is rejected under 35 U.S.C. § 103(a) as obvious over
Lasarov in view of Brooks and further in view of Naritomi et al. (WO
2007/040245, pub. April 12, 2007 (with citations to US 2009/0280296 Al,
pub. Nov. 12, 2009)) (collectively, “Naritomi”). Id. at 7.
6. Claims 34 and 35 are rejected under 35 U.S.C. § 103(a) as
obvious over Lasarov in view of Butler (US 5,656,353, iss. Aug. 12, 1997)
(hereinafter “Butler”). Id. at 8.
7. Claim 36 is rejected under 35 U.S.C. § 103(a) as obvious over
Lasarov in view of Butler and further in view of Naritomi. Id. at 9.
8. Claims 16 and 18-25 are provisionally rejected on the basis of
nonstatutory obviousness-type double patenting over claims 16-29 and 36-
41 of co-pending Application No. 13/391,218. Id. at 10-11.
DISCUSSION
Rejection 1. The Examiner rejected claims 16, 18-22, 24, 25, 37, and
38 as anticipated by or obvious over Lasarov. Appellants allege that such
3
Appeal 2015-006885
Application 12/737,566
rejection is in error as Lasarov does not disclose both microstructures and
nanostructures having diameters within the claimed ranges. Appeal Br. 5-6.
The Examiner finds that Lasarov discloses “micro-holes” having a
width of 0 to 250 microns. Answer 3 (citing Lasarov ^ 22). The Examiner
further finds that figure 3 of Lasarov depicts a nanostructure in combination
with micro-holes. Non-Linal Act. 3; Answer 3. The Examiner additionally
cites to Paragraph 33 of Lasarov, Answer 2, which provides that the micro­
holes “have an average depth of 0.1 to 100 pm and width of 0.1 to 30 pm.”
Lasarov ^ 33. Lasarov indicates that the term average width means that 90%
of the cavities fall within such range. Id. 23. Accordingly, Lasarov
teaches an embodiment with a range of “micro-holes” having a diameter as
small as 100 nm (0.1 pm) as well as those having a diameter as large as 30
pm.
Lasarov’s micro-holes having a diameter falling between 100 nm and
999 nm correspond to the “nanostructure elements” of claim 16, while those
having a diameter falling between 1 pm and 30 pm correspond to the
claimed “microstructure elements.”
The federal Circuit has provided guidance as follows regarding
anticipation of ranges:
When a patent claims a range, as in this case, that range is
anticipated by a prior art reference if the reference discloses a
point within the range. [... ] If the prior art discloses its own
range, rather than a specific point, then the prior art is only
anticipatory if it describes the claimed range with sufficient
specificity such that a reasonable fact finder could conclude that
there is no reasonable difference in how the invention operates
over the ranges”
4
Appeal 2015-006885
Application 12/737,566
Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 869 (Fed. Cir. 2015)
(internal citations omitted). Here, Lasarov teaches a range (100 nm to 30
pm) that significantly overlaps both ranges for the claimed microstructure
elements and nanostructure elements. Lasarov ^ 33; Figure 3. As the range
disclosed by this embodiment of Lasarov would appear to fall completely
within the claimed ranges of microstructure elements and nanostructure
elements, we conclude that there is no difference in how the invention
operates over the ranges.
In the absence of any error in the Examiner’s findings, we do not find
Appellants’ arguments sufficient to justify a reversal of the rejection.
Rejections 2—7. The Examiner rejected claims 23 and 31-36 over
Lasarov in view of various secondary references. Non-Final Act. 5-9.
Appellants allege error in such rejections based on the same argument
presented with regard to Rejection 1. That argument is not found persuasive
for the reasons stated above.
Rejection 8. The Examiner provisionally rejected claims 16 and 18-
25 on the basis of nonstatutory double patenting over claims 16-29 and 36-
41 of copending Application No. 13/391,218. Appellants do not present
argument in opposition to such rejection, but rather state that the rejection
will not be traversed until there is allowed subject matter in the copending
application, at which time a terminal disclaimer will be filed if necessary.
Appeal Br. 9.
Because Appellants advance no arguments on appeal traversing the
provisional nonstatutory double patenting rejection, it is summarily
sustained. See 37 C.F.R. § 41.37(c)(l)(iv). Cf. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (“If an appellant fails to present arguments on a
5
Appeal 2015-006885
Application 12/737,566
particular issue—or, more broadly, on a particular rejection—the Board will
not, as a general matter, unilaterally review those uncontested aspects of the
rejection”) (citing Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed. Cir.
2008)).
CONCLUSION
The rejections of claims 16, 18-25 and 31-38 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(a).
AFFIRMED
6