UT-BATTELLE, LLC

Patent Trials and Appeals Board

Jan 12, 2021

2020000859 (P.T.A.B. Jan. 12, 2021)

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.
13/873,282 04/30/2013 Tolga AYTUG 6321-366-2 (157379.00921) 2142
46592 7590 01/12/2021
Fox Rothschild LLP / UTB
997 Lennox Drive
Building 3
Lawrenceville, NJ 08648
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
01/12/2021 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
svieau@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOLGA AYTUG, DAVID K. CHRISTEN, and
JOHN T. SIMPSON
Appeal 2020-000859
Application 13/873,282
Technology Center 1700
Before TERRY J. OWENS, MONTÉ T. SQUIRE, and BRIAN D. RANGE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 12–15, 21, and 22. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as UT-Battelle, LLC
(Appeal Br. 3).
Appeal 2020-000859
Application 13/873,282

2
CLAIMED SUBJECT MATTER
The claims are directed to an article comprising a nanostructured glass
layer covalently bonded to a substrate. Claim 12, reproduced below, is
illustrative of the claimed subject matter:
12. An article comprising:
a substrate; and
a nanostructured glass layer formed from a spinodally
decomposed and differentially etched borosilicate glass layer
that is deposited on the substrate, the nanostructured layer being
SiO2-rich and covalently bonded to said substrate, wherein said
nanostructured layer comprises a plurality of spaced apart
branched nanostructured features comprising a contiguous,
protrusive material; wherein a width of the plurality of spaced
apart branched nanostructured features ranges from 1 to 500 nm,
the features defining nanopores having a major diameter ranging
from 5–500 nm, the nanopores being interconnected and
distributed throughout the layer, the nanostructured layer having
a thickness of no more than 2000 nm;
wherein said nanostructured features and an interfacial
delineation between the substrate and the nanostructured layer is
optically transparent, and exhibits a Strehl Ratio of at least 0.61
wherein said plurality of spaced apart nanostructured features
provide an anti-reflective surface; and,
wherein said plurality of spaced apart nanostructured
features provide an effective refractive index gradient, with the
effective refractive index gradient increasing towards said
substrate.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yamamoto US 4,521,236 June 4, 1985
Fang US 2004/0202872 Al Oct. 14, 2004
D’Urso US 2006/0024508 A1 Feb. 2, 2006
Simpson US 2007/0184247 A1 Aug. 9, 2007
Minot 66 J. Opt. Soc. Am. 6 June 1976

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Application 13/873,282

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REJECTIONS
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
12–14, 21, 22 103(a) D’Urso, Simpson,
Minot, Yamamoto
15 103(a) D’Urso, Simpson,
Minot, Yamamoto,
Fang
OPINION
We need address only the sole independent claim, i.e., claim 12.2 That
claim requires a nanostructured glass layer formed from a spinodally
decomposed and differentially etched borosilicate glass layer deposited on a
substrate and having a thickness of no more than 2000 nm.
D’Urso discloses
a hydrophobic disordered composite material having a protrusive
surface feature including a recessive phase and a protrusive phase, the
recessive phase having a higher susceptibility to a preselected etchant
than the protrusive phase, the composite material having an etched
surface wherein the protrusive phase protrudes from the surface to
form a protrusive surface feature, the protrusive feature being
hydrophobic [(¶ 8)].

“By subjecting the surface of the composite structure to an etchant/solvent
that removes more of the recessive phase than the protrusive phase, some of
the protrusive phase forms a nanostructured surface comprised of a
protrusive surface feature such as, for example, spikes and/or ridges and/or
roughness” (¶ 19). “[T]here are no limits to the variations of sizes and

2 The Examiner does not rely upon Fang for any disclosure that remedies the
deficiency in the references applied to the independent claim (Final Rej. 8–
9).
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Application 13/873,282

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shapes of the nanostructured surface” (¶ 21). The suitable composite base
materials “include, for example, glasses, metals (including alloys), ceramics,
polymers, resins, and the like” (¶ 22). An exemplified glass is “sodium
borosilicate glass comprising 65 molecular % SiO2, 25 molecular % B2O3,
and 10 molecular % Na2O” (¶ 29). “The composite material may be used to
coat a surface before decomposing into differentially etchable phases. The
material may be evaporated, sputtered, melted on from a powder, plasma
sprayed, attached as a powder with adhesive, etc.” (¶ 44). Applications
include, but are not limited to transparent appliances such as, for example,
eye glasses, safety goggles, masks, windshields, windows, and the like.”
(¶ 58). “[W]hen the nanostructure size is much less than an optical
wavelength, the structure will appear transparent” (id.).
Simpson discloses
a super-hydrophobic disordered composite material having a
protrusive surface feature that includes a recessive phase and a
protrusive phase, the recessive phase having a higher susceptibility to
a preselected etchant than the protrusive phase, the composite material
having an etched surface wherein the protrusive phase protrudes from
the surface to form a protrusive surface feature, the protrusive feature
being hydrophobic, the super-hydrophobic disordered composite
material being transparent. [(¶ 6)] Smaller feature sizes make the
surface more transparent. [(¶ 13)]

The chosen material must have the ability to phase separate into at
least two phases (such as a sodium borosilicate glass). These phases
should be differentially etchable (i.e. have different etch rates) when
subjected to one or more etchants and have a spinodal (i.e.
interconnected) structure. The chosen material may need to be heat
treated in order to phase separate properly. The surface is then
differentially etched to remove one material phase and to sharpen and
thin the other phase. The remaining spinodal features are
characterized by general dimensions (width, length, height, spacing)
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Application 13/873,282

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in a range of about 4 nm to no more than 500 nm, preferably in a
range of about 50 nm to no more than 100 nm. [(¶ 12)]

Minot discloses an antireflection film which consists of a single
porous, skeletal layer made up largely of silica and is produced by an
etch/leach process applied to any glass that will phase separate such that one
phase is more readily soluble than another (p. 515). Minot teaches that heat
treatment of alkali borosilicates below their miscibility temperature
separates them into an insoluble silica-rich phase and a soluble low-silica-
content phase readily dissolvable in mineral acids, leaving the silica-rich
phase as a porous, skeletonized surface film (id.). “Due to their porous
nature, and the small size of the pores (radius < 40 Å), the films exhibit an
effective refractive index considerably lower than would be expected for a
condensed film of silica” (id.). The exemplified films have thicknesses of
143 to 417 nm (p. 518).
Yamamoto makes a porous glass film by forming a glass film,
preferably as a hollow filament, from sodium borosilicate glass having a
composition which is phase separable by heat treatment into a soft phase
easily eluted with a hot acid solution and a hard phase not easily eluted with
that solution, heating the film to separate the glass into the phases, and
plasma etching the film with one or more gaseous fluorine-containing
compounds before or after elution of the soft phase (col. 1, ll. 8–9); col. 2,
ll. 38–47). The “glass film usually has a thickness of about 1 µm to 5 mm,
preferably a thickness of about 2 µm to 1 mm” (col. 2, ll. 62–64).
The Examiner finds that “Yamamoto et al. discloses the porous glass
film with a thickness of about 1 .mu.m can have excellent chemical
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Application 13/873,282

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resistance, mechanical strength and heat resistance (see e.g. line 1-10 in
column 2)” (Ans. 22), and concludes:
[I]it would have been obvious for a person with ordinary skills in the
art to modify the glass layer thickness of D’Urso in view of Simpson
and Minot to about 1000nm to 5mm in order to achieve a porous glass
film that can enable the substrate with excellent properties as taught
by Yamamoto et al. [(Final Rej. 7)].

Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Yamamoto’s disclosed excellent chemical resistance, mechanical
strength, heat resistance, surface smoothness, and uniform pore diameter
throughout are properties of a freestanding porous glass film, preferably in
hollow filamentous form (col. 2, ll. 3–11). The Examiner does not establish
that one of ordinary skill in the art would have considered Yamamoto’s
disclosure to be relevant to D’Urso’s coating such that Yamamoto would
have provided one of ordinary skill in the art with an apparent reason to
form D’Urso’s coating to have the thickness of Yamamoto’s freestanding
porous glass film.
Accordingly, we reverse the rejection.
CONCLUSION
The Examiner’s decision to reject claims 12–15, 21, and 22 is
REVERSED.
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Application 13/873,282

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12–14, 21,
22
103(a) D’Urso, Simpson,
Minot, Yamamoto
12–14, 21,
22
15 103(a) D’Urso, Simpson,
Minot, Yamamoto,
Fang
15
Overall
Outcome
12–15, 21,
22

REVERSED