Ex Parte Simpson

Patent Trial and Appeal Board

Jan 27, 2017

13631212 (P.T.A.B. Jan. 27, 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.
13/631,212 09/28/2012 John T. SIMPSON 59079-00336 [6321-410] 7061
46592 7590 01/31/2017
Foy RntWhilH T T P / TTTR
EXAMINER
997 Lennox Drive NERANGIS, VICKEY M
Building 3
Lawrenceville, NJ 08648 ART UNIT PAPER NUMBER
1768
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
ipdocket @ foxrothschild. com
s vieau @ foxrothschild. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN T. SIMPSON
Appeal 2016-000172
Application 13/631,212
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellant1 filed an appeal under 35U.S.C. § 134 from the Examiner’
decision rejecting claims 1—13.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.3
1 Appellant identifies the real party in interest as UT-Battelle, LLC. Br. 3.
2 Claims 14—33 have been withdrawn from consideration and are not before
us on appeal.
3 Our decision refers to Appellant’s amended Specification (Spec.) filed
September 28, 2012, the Final Office Action (Final Act.) received October
16, 2014, Appellant’s Appeal Brief (Br.) filed May 26, 2015, and the
Examiner’s Answer (Ans.) mailed July 31, 2015.
Appeal 2016-000172
Application 13/631,212
STATEMENT OF THE CASE
The subject matter on appeal relates to superhydrophobic coatings
(see, e.g., claim 1). Appellant discloses that superhydrophobic coatings are
typically superhydrophobic only at their outer surfaces. Spec. 2:13—14.
Once the outer surface containing superhydrophobic particles is abraded
away, the coating is no longer superhydrophobic because any particles
within the coating beneath the outer surface generally have their nanopores
and nanotextured surfaces filled with the coating material. Id. at 2:14—18.
In view of this, Appellant discloses a superhydrophobic coating including
superhydrophobic particles embedded within a resin so that the resin does
not completely fill the pores of the superhydrophobic particles. Id. at 2:25—
30. Thus, if an outer surface of the coating is abraded away, particles that
were previously completely embedded within the coating can be exposed to
impart superhydrophobicity to the coating. Id. at 6:2—18.
Independent claim 1, reproduced below from the Claims Appendix to
the Appeal Brief, is illustrative of the subject matter on appeal. The
limitations at issue are italicized.
1. A superhydrophobic coating, comprising:
a resin; and
a plurality of superhydrophobic particles,
wherein each superhydrophobic particle has a three
dimensional, nanostructured surface topology, defining a
plurality of pores,
wherein at least a portion of the superhydrophobic
particles are embedded within the resin so as to be surrounded
by the resin, and
wherein the resin does not fill the pores of the embedded
superhydrophobic particles such that the three dimensional
surface topology of the superhydrophobic particles is
preserved.
2
Appeal 2016-000172
Application 13/631,212
Br. 10.
The claims on appeal stand rejected, or provisionally rejected, as
follows:
(1) claims 1—3, 5, 6, and 8—13 under 35 U.S.C. § 102(b) as
anticipated by Nun;4
(2) claim 7 under 35 U.S.C. § 102(b) as anticipated or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over Nun;
(3) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Nun and
further in view of Simpson;5 and
(4) claim 1 provisionally rejected under the ground of nonstatutory
double patenting as unpatentable over claim 2 of copending Application No.
13/793,394.
ANALYSIS
Rejection under 35 U.S.C. §102
Claims 1—3, 5, 6, and 8—13 are rejected under 35 U.S.C. § 102(b) as
anticipated by Nun. Appellant argues claims 1—3 and 9-13 as one group,
claims 5 and 6 as a second group, and claim 8 as a third group. We select
claims 1,5, and 8 as representative of these groups. The remaining claims
stand or fall with the claim from which they depend.
Claim 1
The Examiner finds Nun discloses self-cleaning hydrophobic surfaces
that exhibit a “lotus effect” that can be self-regenerated. Ans. 2. The
4 Nun et al., US 2003/0013795 Al, published Jan. 16, 2003 (“Nun”).
5 Simpson et al., US 2010/0286582 Al, published Nov. 11, 2010
(“Simpson”).
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Application 13/631,212
surfaces comprise particles having fissured structures and having
hydrophobic properties. Id. Because Nun discloses the fissured structures
as advantageous for forming hydroscopic structures, the Examiner finds the
fissured structures would be preserved, even upon adding the particles to the
resin, as depicted in Figure 2 of Nun. Id.
Appellant contends Nun does not disclose superhydrophobic particles,
as recited in claim 1, because Nun merely discloses its particles as
hydrophobic. Br. 4. To support this argument, Appellant cites a definition
of superhydrophobic provided in U.S. Patent No. 8,216,674, issued July 10,
2012, incorporated by reference in its entirety at page 8 of the Specification.
Br. 5. This patent states at column 1, lines 30—35:
A super-hydrophobic surface is generally defined and defined
herein as that which has a contact angle greater than 150° with a
drop of water at normal ambient temperatures (about 25° C).
The lotus leaf surface, for example, is known to be naturally
super-hydrophobic due to the texture of its waxy surface.
This argument is not persuasive of a reversible error. As stated by the
Examiner, Nun describes its surface as providing a “lotus effect” in
paragraph 27 of Nun. Ans. 2 and 5. This meets the definition of
“superhydrophobic” provided by U.S. Patent No. 8,216,674, which includes
the lotus leaf as a naturally occurring example of a superhydrophobic
surface.
Appellant further contends Nun does not disclose a superhydrophobic
coating comprising a resin and superhydrophobic particles, “wherein at least
a portion of the superhydrophobic particles are embedded within the resin so
as to be surrounded by the resin” and “wherein the resin does not fill the
pores of the embedded superhydrophobic particles such that the three
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Application 13/631,212
dimensional surface topology of the superhydrophobic particles is
preserved” because the resin of Nun would fill the pores of its particles. Br.
5—6. Specifically, Appellant argues Figure 2a of Nun appears to show a
carrier completely filling the pores of particles and Nun does not describe
any way to prevent the pores from being filled with the carrier. Id. at 6.
These arguments are also unpersuasive of a reversible error. The
Examiner finds Nun discloses its surface includes particles so that when the
surface is ablated by erosion, particles within the carrier are newly exposed
on the surface, which provide the self-cleaning effect of the surface. Ans. 5.
In other words, the Examiner finds that if particles that were formerly
completely surrounded by the carrier (i.e., resin) of Nun are exposed via
ablation of the self-cleaning surface and the exposed particles retain their
hydrophobicity, the particles must have pores that were not filled by the
carrier.
Nun discloses that when particles of its self-cleaning hydrophobic
surface are ablated, new particles are exposed to regenerate the self-cleaning
effect. Nun abstract and 120. This is demonstrated in Figure 2a of Nun,
which depicts the surface prior to ablation, Figure 2b of Nun, which depicts
the surface after ablation. Therefore, the disclosure of Nun supports the
Examiner’s findings that Nun discloses a self-cleaning hydrophobic surface
that regenerates its self-cleaning hydrophobic properties when particles are
ablated away to expose particles within the surface. Appellant has not
responded to the Examiner’s findings and thus has not directed us to a
reversible error in the Examiner’s findings.6
6 We further note Appellant defines “embedded” as including “not only
particles that are completely surrounded or enveloped by the resin but also
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Application 13/631,212
Appellant additionally argues Nun discloses that self-regeneration of
its surface is due to the binder being ablated more rapidly than the particles,
which demonstrates self-regeneration is not due to preventing the carrier
from filling pores of the particles. Br. 6. This argument is also unpersuasive
because it demonstrates Nun regarded its particles as necessary for
regeneration of its self-cleaning hydrophobic properties. Otherwise, if the
binder (i.e., carrier) were not ablated more rapidly than the particles, the
particles would be covered by the binder and the self-cleaning hydrophobic
properties of the surface would be lost. See Nun 120.
For the reasons described above and those set forth in the Examiner’s
Answer, we sustain the Examiner’s § 102(b) rejection of claim 1 over Nun.
Claims 2, 3, and 9—13 depend from claim 1. Therefore, we sustain the § 102
rejection of claims 2, 3, and 9—13 for the same reasons.
particles that are only partially enveloped, enclosed, or surrounded in the
surrounded resin.” Spec. 5:30 to 6:2. As a result, “particles are embedded
within the resin so as to be surrounded by the resin,” as recited in claim 1,
can include particles completely surrounded by the resin and particles
partially surrounded by the resin. The Specification further describes an
embodiment of a superhydrophobic coating including some particles that are
completely embedded and some particles that are partially embedded. Id. at
6:2-4. This latter embodiment correlates to the surface shown in Figure 2a
of Nun, which includes both particles completely surrounded by the carrier
of Nun and particles at the surface of the carrier that are partially surrounded
by the carrier. The particles partially surrounded by the carrier meet the
definition set forth by Appellant for “embedded.” To the extent there are
any pores in these particles at the surface of the carrier that have not come
into contact with the carrier, the pores clearly would not be filled by the
carrier, as recited in claim 1.
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Application 13/631,212
Claims 5 and 6
Claim 5, which depends from claim 1, further recites “wherein each of
the plurality of superhydrophobic particles comprises a porous core, and
wherein each porous core is hydrophilic.” Appellant asserts not only that
Nun does not disclose these limitations, but that the Examiner has failed to
provide any finding in this regard. Br. 6.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In our review of the
Examiner’s rejection, we are unable to locate any finding that Nun discloses
superhydrophobic particles comprising a porous core “wherein each porous
core is hydrophilic,” as recited in claim 5. Therefore, the preponderance of
the evidence supports the Appellant’s argument and, thus, Appellant has
identified a reversible error in the Examiner’s rejection. Claim 6 depends
from claim 5 and therefore includes the recitations of claim 5.
For these reasons, we do not sustain the Examiner’s rejection of
claims 5 and 6 under 35 U.S.C. § 102(b) over Nun.
Claim 8
Claim 8 depends from claim 1 and further recites “wherein the pore
volume of the superhydrophobic particle is less than 50% filled by the
resin.”
Appellant argues “Nun provides absolutely no teaching or suggestion
that this structure is even desirable.” Br. 6. However, the Examiner finds
the self-cleaning hydrophobic surface of Nun includes resin and particles
having fissured structures to provide hydrophobicity. Ans. 2. Therefore, the
fissured structures would be preserved in the resin and the particles would
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Application 13/631,212
“inherently have less than 50% of pore volume filled with resin in order to
preserve hydrophobic structure without resin within the porous and fissured
structure.” Id. Appellant’s argument does not address this finding or
otherwise demonstrate how the Examiner reversibly erred in this finding.
For these reasons and those expressed in the Examiner’s Answer, we
sustain the Examiner’s rejection of claim 8 under 35 U.S.C. § 102(b) over
Nun.
Rejection under 35 U.S.C. § 102/103
Claim 7 is rejected under 35 U.S.C. § 102(b) as anticipated or, in the
alternative, under 35 U.S.C. § 103(a) as being unpatentable over Nun.
Appellant does not argue claim 7 separately from claim 1. Br. 6. Therefore,
we sustain the Examiner’s rejection of claim 7 under 35 U.S.C. § 102 as
anticipated or, in the alternative, under 35 U.S.C. § 103.
Rejection under 35 U.S.C. §103
The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Nun in view of Simpson. Claim 4 further recites “wherein
the superhydrophobic particle comprises a diatomaceous earth particle.”
In the rejection of claim 4, the Examiner finds Nun discloses the use
of inorganic particles, such as silica and silicates, but does not disclose the
use of diatomaceous earth. Ans. 4. The Examiner finds Simpson discloses a
superhydrophobic coating and that diatomaceous earth is a silicon-based
material useful in superhydrophobic compositions. Id. The Examiner
concludes it would have been obvious to modify Nun in view of Simpson to
use diatomaceous earth for its superhydrophobic properties. Id.
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Application 13/631,212
Appellant argues the Examiner has relied upon impermissible
hindsight to reject claim 4 because Nun provides no guidance about which
particles to use. Br. 6—7. This argument is unpersuasive because Nun
discloses its particles may be made from silicates, silicas, minerals, and
other materials. Nun 147. Simpson discloses diatomaceous earth as a
siliceous sedimentary rock resulting from the accumulation of the
amorphous silica cell walls of dead diatoms (i.e., microscopic, single-cell
aquatic plants, such as algae). Simpson 144. Simpson further discloses
diatomaceous earth as having superhydrophobic properties. Id.
As a result, the combined disclosures of Nun and Simpson support the
Examiner’s findings and conclusion of obviousness. In particular, Nun
discloses which materials are suitable for its particles and demonstrates it is
within the skill of a person of ordinary skill in the art to select from these
materials when practicing the invention disclosed by Nun. Because
diatomaceous earth is formed from silica, diatomaceous earth is one of the
types of materials disclosed by Nun and furthermore enjoys the benefit of
being superhydrophobic, as disclosed by Simpson.
Appellant further argues claim 4 is nonobvious due to unexpected
results. Br. 7. Specifically, Appellant asserts Example 3 of the
Specification demonstrates a coating having superhydrophobic properties
(i.e., a contact angle greater than 150°) after abrasion due to 400 Taber
cycles, which would not have been expected by one of ordinary skill in the
art. Id. at 7—8. Appellant contends Nun provides no results to compare with
Example 3 and Simpson is directed to bandages and would not have
considered abrasive forces. Id. at 8.
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Application 13/631,212
The Examiner finds Example 3 does not include comparative data to
demonstrate whether any results are unexpected. Ans. 6. We agree.
“[W]hen unexpected results are used as evidence of nonobviousness, the
results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Furthermore, Appellant has not provided results commensurate in scope
with their claims, which are broader in scope than the specific materials used
for Example 3. Establishing unexpected results includes the burden of
providing evidence that is commensurate in scope with the claims. See In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d
1029, 1035 (CCPA 1980). In addition, Appellant has provided mere
attorney argument of unexpected results without submitting any evidence of
unexpected results. See In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It
was incumbent upon appellants to submit clear and convincing evidence to
support their allegation of unexpected property”).
Based on the foregoing, after considering all the evidence anew, we
determine a preponderance of the evidence supports the Examiner’s
obviousness determination. Therefore, for these reasons and the reasons
described in the Examiner’s Answer, we sustain the Examiner’s § 103
rejection of claim 4 over the combination of Nun and Simpson.
Double patenting rejection
Claim 1 is provisionally rejected under the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claim 2 of
copending Application No. 13/793,394. No arguments regarding the
propriety of the double patenting rejection have been proffered by Appellant.
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Application 13/631,212
We therefore summarily affirm the Examiner’s provisional non-statutory
obviousness-type double patenting rejection of claim 1.
DECISION
On the record before us:
A. the Examiner’s rejection of claims 1—3 and 8—13 under
35 U.S.C. § 102(b) as being anticipated by Nun is affirmed',
B. the Examiner’s rejection of claims 5 and 6 under 35 U.S.C.
§ 102(b) as being anticipated by Nun is reversed',
C. the Examiner’s rejection of claim 7 under 35 U.S.C. § 102(b) as
anticipated or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over Nun is affirmed',
D. the Examiner’s rejection claim 4 under 35 U.S.C. § 103(a) as
being unpatentable over Nun and further in view of Simpson is affirmed', and
E. the Examiner’s provisional rejection of claim 1 under the
ground of nonstatutory double patenting as being unpatentable over claim 2
of copending Application No. 13/793,394 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).
AFFIRMED-IN-PART
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