Jason Constantinou et al.

Patent Trials and Appeals Board

Dec 2, 2020

2019006189 (P.T.A.B. Dec. 2, 2020)

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.
14/542,108 11/14/2014 Jason Constantinou 2014-010 (UM10036US3) 3753
23413 7590 12/02/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
ROBINSON, ELIZABETH A
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
12/02/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte JASON CONSTANTINOU,
HANNA DODIUK-KENIG, CAROL M. F. BARRY,
SAMUEL KENIG, JOEY MEAD, ARTEE PANWAR,
and TEHILA NAHUM
_______________
Appeal 2019–006189
Application 14/542,108
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3–13, and 16 of Application

1 In our Decision, we refer to the Specification filed Nov. 14, 2014
(“Spec.”) of Application 14/542,108 (“the ’108 Application”); the Final
Office Action dated Nov. 28, 2018 (“Final Act.”); the Appeal Brief filed
Apr. 22, 2019 (“Appeal Br.”); the Examiner’s Answer dated May 31, 2019
(“Ans.”); and the Reply Brief filed July 31, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies The University of Massachusetts as
the real party in interest. Appeal Br. 3.
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14/542,108, which constitute all the claims pending in this application. We
have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
BACKGROUND
The ’108 Application relates to durable superhydrophobic, self-
cleaning, and icephobic polymer coatings. Spec. ¶ 3. According to the
Specification, the described coatings address the undesirable ice adhesion to
infrastructure surfaces in high altitude and cold regions. Id. ¶ 4. The ’108
Application describes that a surface’s hydrophilicity or hydrophobicity,
typically characterized with a contact angle below or above 90°,
respectively, affects ice adhesion. Id. ¶ 8. The ’108 Application describes
that superhydrophobic surfaces shed water droplets due to a static contact
angle greater than 150° and a low contact angle hysteresis. Id.
Claim 1 is representative of the ’108 Application’s claims and is
reproduced below from the Claims Appendix of the Appeal Brief.
1. An object having a superhydroph[ob]ic, self-cleaning,
and icephobic coating comprising:
a substrate; and
a layer disposed on the substrate; the layer resulting from
coating with a formulation, the formulation comprising:
an effective amount of microstructuring
microparticles; the microstructuring microparticles
comprising silica microparticles;
liquid silane having one or more groups configured
to graft to a microstructuring microparticle and at
least another group configured to result in
hydrophobicity; the microstructuring
microparticles being dispersed in the liquid silane;
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the microstructuring microparticles dispersed in
the liquid silane forming a first solution; and
another effective amount of synthetic adhesive, the
synthetic adhesive being a thermosetting adhesive;
the synthetic adhesive being in solution with a
solvent; the synthetic adhesive in solution with a
solvent being a second solution; a volume of the
first solution being equal to a volume of the second
solution; said formulation being configured to be
cured by heating for a predetermined time at a
predetermined temperature; wherein the
predetermined time is between 30 min and 75 min
and wherein the predetermined temperature is
between 80° C and 110° C;
wherein, upon curing, the layer is configured to
have []a contact angle greater than 150° and a
sliding angle of less than 10° and is configured
such that less than 5% of an area of the layer is
removed in a Tape test performed according to
ASTM D3359.
Claims App. 1.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Zhang et al.
(“Zhang”)
US 2007/0009657 A1 Jan. 11, 2007
Bleecher et al.
(“Bleecher”)
US 2012/0045954 A1 Feb. 23, 2012
Simpson et al.
(“Simpson”)
US 2012/0107581 A1 May 3, 2012
Loth et al.
(“Loth”)
WO 2012/170832 A1 Dec. 13, 2012
S. Ebnesajjad, Adhesives Technology Handbook, § 5.11,
William Andrew Pub., Norwich (2009) (“Ebnesajjad”).
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W.B. Khaled, D. Sameoto, Fabrication and Characterization
of Thermoplastic Elastomer Dry Adhesives with High Strength
and Low Contamination, 6 ACS Appl. Mater. Interfaces (9)
6806–15 (2014) (“Khaled”).
REJECTIONS
The Examiner maintains the following rejections:3
1. Claims 11–13 under 35 U.S.C. § 112(b) as indefinite. Final Act. 2.
2. Claims 1 and 16 under 35 U.S.C. § 103 as unpatentable over
Simpson, as evidenced by Ebnesajjad. Final Act. 3.
3. Claims 3–10 under 35 U.S.C. § 103 as unpatentable over Simpson
in view of Bleecher. Final Act. 6.
4. Claims 1, 3, 4, 11–13, and 16 under 35 U.S.C. § 103 as
unpatentable over Loth. Final Act. 7.
5. Claims 3–6 and 10 under 35 U.S.C. § 103 as unpatentable over
Loth in view of Bleecher. Final Act. 10.
6. Claims 1, 3–5, 10, and 16 under 35 U.S.C. § 103 as unpatentable
over Zhang, as evidenced by Khaled. Final Act. 12.
DISCUSSION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)

3 Because this application claims priority to an application filed after the
March 16, 2013 effective date of the America Invents Act, we refer to the
AIA version of the statutes.
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(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)).
Ground 1: Rejection of claims 11–13 as indefinite
Claim 12 is representative of claims 11–13 and is reproduced below
from the Claims Appendix of the Appeal Brief.
12. The object of claim 1 wherein the effective amount is
between 3% weight and about 5% weight when being dispersed
in the liquid silane; the first solution being formed by
suspending an effective amount of microstructuring
microparticles in liquid silane; and wherein said another
effective amount is between about 10% to about 50% weight
when in solution with the solvent; and wherein said solvent is
acetone; the second solution being formed by dissolving said
another effective amount of synthetic adhesive in the solvent.
Claims App. 2–3.
The Examiner concludes that claim 11 is indefinite for reciting “an
effective amount of microstructuring particles,” and claims 12 and 13 are
indefinite for reciting the same limitation as well as “another effective
amount of synthetic adhesive.” Final Act. 2–3. Because we consider the
evidence insufficient to establish a prima facie case of indefiniteness with
regard to limitations recited in claims 11–13, we need only address
representative claim 12. See id.
The Examiner determines that claim 12 is indefinite because it is
unclear if “the effective amount” of the microstructuring particles is based
on the weight of the “microstructuring particles in liquid silane” in: (i) “the
first solution” only, or (ii) the first and second solutions combined. Final
Act. 2–3; Claims App. 2–3. According to the Examiner, it is also unclear if
the “another effective amount of synthetic adhesive in the solvent” is based
on the weight of the “adhesive in the solvent” in: (i) “the second solution”
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only, or (ii) the combined first and second solutions. Final Act. 2–3; Claims
App. 2–3.
Appellant argues, inter alia, that claim 12 is definite because “one
skilled in the art would understand . . . what is claimed when the claim is
read in light of the [S]pecification.” Appeal Br. 10. Appellant argues the
skilled artisan “would understand that [the] present invention has two
solutions[—]a first solution having silica microparticles dispersed in the
liquid silane and the second solution having a synthetic adhesive dispersed
in a solvent.” Id. at 11.
The Examiner improperly rejects a claim as failing to meet the
statutory requirements of 35 U.S.C. § 112(b) when Appellant has provided a
satisfactory response in “the form of . . . a persuasive explanation for the
record of why the language at issue is not actually unclear.” In re Packard,
751 F.3d 1307, 1311 (Fed. Cir. 2014).
We are persuaded by Appellant’s arguments that the Specification’s
description as to when each of the claimed effective amounts are formulated
reasonably apprises the skilled artisan of the scope of the invention. At
paragraph 50, the Specification describes an embodiment in which “the
effective amount of silica microparticles is between about 0.5% weight and
about 5% weight when dispersed in the liquid silane.” Spec. ¶ 50 (emphasis
added). At paragraph 51, the Specification similarly describes an
embodiment in which “the other effective amount of synthetic adhesive is
between about 10% to about 50% by weight when in a solution with a
solvent.” Spec. ¶ 51 (emphasis added). Claim 12 recites substantially
similar language.
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The Specification adequately describes to one of skill in the art that
the limitations directed to effective amounts are not based on the weight of
either the silica microparticles or the synthetic adhesives in the combined
first and second solutions. See id. ¶¶ 50, 51. Rather, the claimed “effective
amount of microstructuring microparticles” encompasses an amount based
on the weight of these particles in the first solution’s weight. See Reply Br.
12. The claimed “another effective amount of synthetic adhesive” likewise
encompasses an amount based on the weight of the adhesive in the second
solution’s weight. See id. at 13. Appellant, therefore, shows that the
Examiner reversibly errs in finding that claim 12 is unclear as to how the
claimed effective amounts are determined.
We do not sustain the rejection of claims 11–13 under 35 U.S.C.
§ 112(b) as indefinite. See 37 C.F.R. § 41.37(c)(1)(iv).
Ground 2: Rejection of claims 1 and 16 as obvious over Simpson, as
evidenced by Ebnesajjad
The Examiner determines that Simpson, as evidenced by Ebnesajjad,
would have rendered claims 1 and 16 obvious. Final Act. 3–6.
Appellant’s arguments focus on limitations recited in independent
claim 1. Appeal Br. 11–16; Reply Br. 13–17. We select claim 1 as
representative of the group. Claim 16 stands or falls with claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Simpson’s composition for forming a
superhydrophobic coating on a substrate teaches or suggests each component
and limitation recited in claim 1. Final Act. 3–6. The Examiner finds
Simpson’s composition may comprise silica microparticles having a silane
modified surface, which enhances the particles’ hydrophobicity. Id. at 3.
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The Examiner finds Simpson’s composition further comprises an adhesive
or binder layer, which may be ethyl cyanoacrylate, for bonding the
microparticles to a substrate. Id. The Examiner finds Simpson teaches
heating the microparticles, binder, and a solvent, such as acetone, to
evaporate the solvent and cure the binder. Id. at 5.
Appellant argues that the claimed subject matter is distinguished from
Simpson’s coating, which failed a simple rub test and lacks durability.
Appeal Br. 12 (citing Simpson ¶ 39). Appellant argues that Simpson’s
composition requires curing temperatures that fall outside of the claimed
conditions. Appeal Br. 12 (citing Simpson ¶¶ 35, 38).
For purposes of § 103, a reference is prior art for all that it discloses.
Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir. 1991);
see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (explaining that
“[i]t is well settled that a prior art reference is relevant for all that it teaches
to those of ordinary skill in the art”)). We are not persuaded by these
arguments because Appellant relies upon Simpson’s exemplified
embodiments, which used a binder and a solvent that was not ethyl
cyanoacrylate and acetone, respectively. See Simpson ¶¶ 20, 25; Ans. 7.
Appellant argues that Simpson’s amount of adhesive is below and
teaches away from the claimed formulation’s effective amount of adhesive.
Appeal Br. 12 (citing Simpson ¶ 19); Reply Br. 15–17. Appellant contends
that it is uncertain whether Simpson’s cyanoacrylates would have behaved in
the same manner as Appellant’s claimed thermoset adhesive. Appeal Br. 12.
However, Appellant admits that “cyanoacrylates are thermoset
adhesives.” Appeal Br. 12. The Examiner correctly notes that claim 1 does
not recite any required number or range for the claimed adhesive’s effective
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amount. Ans. 8. We agree with the Examiner that Simpson teaches an
affective amount of adhesive because the prior art binder is used “to
effectively bind the particles to the substrate.” Id.
Appellant argues that the Examiner has not established that Simpson
would have provided one of ordinary skill in the art a reasonable expectation
in success in arriving at the claimed amount of silane through routine
experimentation. Appeal Br. 14.
We are not persuaded by this argument. Simpson discloses that
microparticles modified with a silane surface or coating possess the requisite
water droplet contact and water sliding angles for superhydrophobicity.
Simpson ¶ 33 (teaching that “[a] silane . . . may be employed to modify the
surface energy or wettability of the surface”), ¶ 34; see Ans. 9–10. Thus, it
would have been obvious for an artisan with ordinary skill to develop a
workable silane amount.
Appellant argues that the effective amount of silane is the amount
required to attain the claimed functional limitations of superhydrophobicity
and surface adherence to meet the Tape test. Appeal Br. 13. Appellant
argues that the Examiner’s conclusion that Simpson’s composition would
have met the claimed Tape test “‘barring evidence to the contrary,’”
improperly shifted “the burden of proving patentability to” Appellant. Id.
Appellant argues that the Examiner has provided no reason to modify
Simpson’ single solution into the claimed ratio of two volumes when “there
is almost an infinite number of possibilities.” Id. at 14.
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We are not persuaded by these arguments because the Examiner
properly construes claim 1 as a product-by-process claim.4 Final Act. 3–4.
Appellant is relying upon process limitations to distinguish the claimed
subject matter from Simpson. Such product-by-process limitations,
however, do not add a patentable distinction when the claimed product is the
same as the cited art’s product. See In re Thorpe, 777 F.2d 695, 697 (Fed.
Cir. 1985). As the Examiner finds, the claimed object is formed or produced
from two solutions, so that “the particles, binder and a solvent are all
combined together to form the coating.” Ans. 6; compare with Simpson
¶¶ 19, 20. The Examiner correctly concludes that “forming the product by
combining two solutions is a process limitation.” Ans. 6. Where the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product. In re Best, 562
F.2d 1252, 1256 (Fed. Cir. 1977).
In this case, Appellant has not met the burden of proving that
Simpson’s superhydrophobic coating would not have retained more than
95% of the coating’s area in a Tape test performed according to ASTM
D3359. As the Examiner finds, Appellant has “not provided any proof to
show that a product made as a single solution would have a different
structure than one formed by two solutions.” See Ans. 6, 10. Comparing

4 Because we are in agreement with the Examiner’s claim construction and
rebuttal to Appellant’s arguments regarding this claim construction on
appeal, we adopt them as our own. Ans. 4–7; Appeal Br. 7–10; Reply Br. 8–
11.
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Simpson’s disclosure with claim 1, we find that the claim encompasses the
prior art.
According to Appellant, there would have been no reasonable
expectation of success in deriving the claimed curing temperature and
duration ranges through routine experimentation because Simpson cures by
evaporation. Appeal Br. 15.
Claim 1 is a structural claim, drawn to “[a]n object having a
. . . coating comprising; a substrate; and a layer disposed on the substrate;
the layer resulting from coating with a formulation.” See Claims App. 1.
An applicant is free to claim features either structurally or functionally. In
re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (citing In re Swinehart,
439 F.2d 210, 212 (CCPA 1971)). Claim 1 recites a “formulation being
configured to be cured by heating . . . between 30 min and 75 min and . . .
between 80° C and 110° C.” Claims App. 1 (emphasis added). A structure
that is capable of performing certain functions may be obvious in view of a
prior art structure that can likewise perform these functions. Parker Vision,
Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018).
We adopt the Examiner’s findings in the Final Office Action that
Simpson discloses the structural elements. See Final Act. 5–6; Ans. 6. The
Examiner findings are reasonable that Simpson’s coating can be formed
from the same acetone solvent and coating materials described in the
Specification. Final Act. 5–6. Simpson, furthermore, explicitly discloses
that “solvent may be removed” from a coating formulation deposited on a
substrate “by heating the substrate at a temperature above the boiling point
of the solvent.” Simpson ¶ 28. We agree with the Examiner that Simpson’s
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deposited coating would have been capable of curing using the claimed
curing temperature and duration ranges.
We sustain the rejection of claim 1 over Simpson, as evidenced by
Ebnesajjad. For the reasons given above, we also sustain the rejection of
claim 16.
Ground 3: Rejection of claims 3–10 as obvious over Simpson in view
of Bleecher
The Examiner concludes that claims 3–10 would have been rendered
obvious over Simpson in view of Bleecher. Final Act. 6–7.
Appellant’s Reply Brief contains new arguments (i.e., that
cyanoacrylate is not a thermosetting adhesive5 and, thus, claims 7 and 8 are
improper dependent claims (Reply Br. 17–18)) which could have been, but
were not presented in the Appeal Brief. Under regulations governing
appeals to the Board, a new argument not timely presented in the Appeal
Brief will not be considered when filed in a Reply Brief, absent a showing of
good cause explaining why the argument could not have been presented in
the Appeal Brief. See 37 C.F.R. § 41.41(b)(2); see also Optivus Tech., Inc.
v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (argument
raised for the first time in the Reply Brief is considered waived); Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply
brief [is not] an opportunity to make arguments that could have been made
in the principal brief on appeal to rebut the Examiner’s rejections, but were
not.”); 37 C.F.R. § 41.37). Because the record contains no showing of good

5 Appellant, however, admits that “cyanoacrylates are thermoset adhesives.”
Appeal Br. 12.
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cause for failure to make the arguments in the Appeal Brief, we will not
consider the new argument in the Reply Brief.
Appellant also argues that Bleecher does not cure the deficiencies of
Simpson. Appeal Br. 16. Having found no deficiencies in Simpson, we
sustain the rejection of claims 3–10 as obvious over Simpson in view of
Bleecher.
Ground 4: Rejection of claims 1, 3, 4, 11–13, and 16 as obvious over
Loth
The Examiner determines that claims 1, 3, 4, 11–13, and 16 would
have been rendered obvious over Loth. Final Act. 7–10.
Appellant’s arguments focus on limitations recited in independent
claim 1. Appeal Br. 16–19; Reply Br. 18–20. We select claim 1 as
representative of the group. Claims 3, 4, 11–13, and 16 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Loth’s substrate covered with a
superhydrophobic nanocomposite coating comprising a moisture cured
polyurethane teaches or suggests each component and limitation recited in
claim 1. Final Act. 7–10. We adopt the Examiner’s findings in the Final
Office Action that Loth discloses the structural elements recited in claim 1.
Id.; see Schreiber, 128 F.3d at 1478. We add the following for emphasis.
Appellant argues that the claimed subject matter is distinguished from
the applied prior art because Loth provides only one example that satisfied
the Tape test. Appeal Br. 17; see Loth ¶¶ 67–74. Appellant argues that this
example employs nanoclay filler and fluoropolymer binders instead of a
silane coating and a moisture cured polyurethane binder. Appeal Br. 17–18;
Reply Br. 19. Appellant contends that the desired results obtained by this
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exemplified formulation does not mean that any of Loth’s listed fillers
would have also passed the Tape test. Appeal Br. 17–18.
We are not persuaded by these arguments. Loth’s paragraph 47
teaches that any of the described fillers, including silica nanofillers coated
with silane, are suitable for use in superhydrophobic coatings. Fritch, 972
F.2d at 1264. A preponderance of evidence supports the Examiner’s
findings that Loth’s coating formulation, comprising silica nanofillers coated
with silane, would have likewise provided satisfactory Tape test results. See
Ans. 12. Moreover, claim 1 does not exclude Loth’s use of a fluoropolymer
adhesive. Id. We note that the Examiner’s rejection does not rely on Loth’s
Example 1 (Final Act. 7–10), which is the basis for Appellant’s argument.
Appeal Br. 17; see Loth ¶¶ 67–74.
Appellant argues that Loth’s binder is not a thermoset adhesive
because the moisture cured polyurethane’s crosslinking mechanism is
strongly dependent on the availability of adsorbed moisture on coated
surfaces. Appeal Br. 17, 18; Reply Br. 19; Loth ¶ 62.
This argument is unpersuasive because Loth explicitly discloses that
the moisture cured polyurethanes are crosslinked. Loth ¶ 62; see also id.
¶ 38 (describing that moisture cured polyurethanes “are capable of self-
crosslinking.”). A thermoset material’s irreversible solidification “is usually
associated with a cross-linking reaction of the molecular constituents
induced by heat or radiation” or “add[ed] ‘curing’ agents.” Hawley’s
Condensed Chemical Dictionary (2007) – “Thermoset.” We agree with the
Examiner that Loth’s moisture cured polyurethane would have suggested the
claimed thermoset adhesive. Ans. 12–13. To the extent Appellant argues
that thermoset adhesives require heating, but Loth’s adhesive depends on
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moisture only (Appeal Br. 18), Appellant’s argument is not persuasive. Loth
explicitly discloses that “a moisture cure urethane coating is baked at 100 °C
to 140°C . . . to promote crosslinking reactions.” Loth ¶ 38.
Citing In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014),
Appellant argues that the Examiner reversibly erred in construing claim 1 as
encompassing any known coating, which would have been capable of being
cured by the claimed temperature and duration ranges. Appeal Br. 19.
Appellant’s reliance on Giannelli is misplaced. The issue in Giannelli
was whether handles for a chest press device that enabled a pushing motion
by an operator were capable of being used as handles for a rowing, pulling
motion. In reversing the Board’s decision regarding whether the handles
were capable of being used as claimed, the Federal Circuit took into account
the posture and position of the operator in concluding that the handles were
not adapted for such use. Giannelli, 739 F.3d at 1380 (“anyone who has
used exercise machines knows that a sure-fire way to cause injury is to use a
machine in a manner not intended by the manufacturer.”).
In this instance, the Examiner correctly finds that Loth’s coating is
capable of and configured to perform the claimed functions. Final Act. 9–
10. Unlike in Giannelli, the Examiner is not proposing that Loth’s coating
be used for a different specified objective than what it was designed to
accomplish. Loth’s coating is designed to accomplish the same objective as
the claimed invention; to provide a cured superhydrophobic, self-cleaning
and anti-icing coating on a substrate. Loth ¶ 59. Therefore, Giannelli’s
holding does not apply to the present facts.
Appellant has not met their burden to rebut the Examiner’s finding
that Loth’s coating would have been capable of being cured in the manner
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claimed. The record evidence is silent as to any demonstration of the
criticality of the claimed temperature and duration ranges. Schreiber, 128
F.3d at 1478.
We sustain the rejection of claim 1 over Loth. For the reasons given
above, we also sustain the rejection of claims 3, 4, 11–13, and 16.
Ground 5: Rejection of claims 3–6 and 10 as obvious over Loth in
view of Bleecher
The Examiner determines that claims 3–6 and 10 would have been
rendered obvious over Loth in view of Bleecher. Final Act. 10–11.
Appellant argues that Bleecher does not cure Loth’s deficiencies.
Appeal Br. 19–20; Reply Br. 20. Having found no deficiencies in Loth, we
sustain the rejection of claims 3–6 and 10 as obvious over Loth in view of
Bleecher.
Ground 6: Rejection of claims 1, 3–5, 10, and 16 as obvious over
Zhang, as evidenced by Khaled
The Examiner concludes that claims 1, 3–5, 10, and 16 would have
been rendered obvious over Zhang, as evidenced by Khaled. Final Act. 12–
14.
Appellant’s arguments focus on limitations recited in independent
claim 1. Appeal Br. 20–21; Reply Br. 20–24. We select claim 1 as
representative of the group. Claims 3–5, 10, and 16 stand or fall with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Zhang’s substrate covered with a
superhydrophobic coating comprising silane coated silica nanoparticles and
a PDMS adhesive teaches or suggests each component and limitation recited
in claim 1. Final Act. 12–14. We adopt the Examiner’s findings in the Final
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Office Action that Zhang discloses the structural elements recited in claim 1.
Id.; see Schreiber, 128 F.3d at 1478. We add the following for emphasis.
Appellant argues that Zhang’s viscoelastic PDMS fails to teach or
suggest the claimed thermosetting adhesive. Appeal Br. 20–21; Reply Br.
21–24.
We are not persuaded by this argument. Khaled provides evidence
that PDMS adhesives are thermosetting. Ans. 14 (citing Khaled Abstract).
We note that Khaled explicitly refers to “the thermosetting nature” of
PDMS, “thermosetting polymers such as PDMS,” and “thermosetting
PDMS.” Khaled 6806. We, thus, agree with the Examiner that PDMS can
be both viscoelastic and thermosetting. Ans. 14.
To the extent Appellant argues Khaled teaches that PDMS adheres by
Van der Waals forces, but not through the covalent bonds required in
crosslinking (Reply Br. 21), this argument could have been, but was not
presented in the Appeal Brief. See Final Act. 12. Appellant’s untimely
argument is considered waived because there is no showing of good cause
explaining why the argument could not have been presented in the Appeal
Brief. See 37 C.F.R. § 41.41(b)(2).
Appellant argues, inter alia, that the Silly Putty website
(https://www.compoundchem.com/2015/11/10/sillyputty/) supports that
viscoelastic compounds, such as Zhang’s PDMS, are not thermosetting
adhesives. Appeal Br. 20–21.
Contrary to Appellant’s argument, we find that the proffered evidence
shows that PDMS is capable of crosslinking in the presence of boric acid.
See Ans. 14. As the Examiner finds, a thermoset material’s setting “is
usually associated with a cross-linking reaction of the molecular constituents
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induced by . . . add[ed] ‘curing’ agents.” Hawley’s Condensed Chemical
Dictionary (2007) – “Thermoset.” The same reference discloses that
“silicones are usually considered to be thermosetting.” Id. Thus, Appellant
has not identified reversible error in the Examiner’s finding that Zhang’s
PDMS teaches or suggests a thermosetting adhesive. Final Act. 12.
Appellant also proffers Skander Mani’s doctoral thesis, entitled
Fundamental[] Aspects of Crosslinking Control of PDMS Rubber at High
Temperatures Using Tempo Nitroxide (2011) (“Skander Mani”). Appellant
purports that PDMS viscoelastic compounds are not thermosetting adhesives
because Skander Mani’s PDMS possesses a gel point of 140° C. Appeal Br.
21. In other words, Appellant contends that the temperature at which PDMS
becomes irreversibly set is above the claimed curing temperature. Id.
The Examiner finds that the high gel point of 140° C in Skander Mani
is associated with vinyl terminated PDMS. Ans. 14–15. The Examiner
concludes that the teachings of Skander Mani are not relevant to hydroxy
terminated PDMS, such as those described in Zhang. Id.; see Zhang 54–55.
Appellant responds that Zhang’s preferred linking agent, “hydroxyl
terminated PDMS[,] . . . is unusually resistant to heat, being able to
withstand temperatures up to 400° C” without deforming. Reply Br. 21–22
(citing Zhang ¶ 81). Appellant concludes that “it is likely that the gel point
for [Zhang’s] hydroxyl terminated PDMS is higher” than 400° C and outside
the scope of claim 1. Reply Br. 24. Appellant argues that Skander Mani
does not disclose that the 140° C phase transition for vinyl terminated
PDMS takes place only in the less than 1 mol % of vinyl groups present. Id.
These arguments do not identify reversible error in the Examiner’s
findings. Appellant implies that the deformation seen at 400° C results from
Appeal 2019–006189
Application 14/542,108

19
heat induced phase transition or crosslinking of hydroxy terminated PDMS.
Reply Br. 24 (citing Zhang ¶ 81). We are not convinced because Zhang
describes crosslinking between hydroxy terminated PDMS and the claimed
silica particles without requiring heating at 400° C. Zhang ¶ 81; see id.
Example 1.
We sustain the rejection of claim 1 over Zhang. For the reasons given
above, we also sustain the rejection of claims 3–5, 10, and 16.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis  Affirmed Reversed
11–13 112 2nd paragraph,
indefiniteness 
11–13
1, 16 103 Simpson,
Ebnesajjad
1, 16
3–10 103 Simpson, Bleecher 3–10
1, 3, 4,
11–13, 16
103 Loth 1, 3, 4, 11–13,
16

3–6, 10 103 Loth, Bleecher 3–6, 10
1, 3–5, 10,
16
103 Zhang, Khaled 1, 3–5, 10, 16
Overall
Outcome
1, 3–13, 16
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)(iv).
AFFIRMED