UT-BATTLELLE, LLC

Patent Trials and Appeals Board

Jun 18, 2021

2020004364 (P.T.A.B. Jun. 18, 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.
13/767,244 02/14/2013 Tolga AYTUG 6321-366-1CIP
157379.0911
2943
46592 7590 06/18/2021
Fox Rothschild LLP / UTB
997 Lennox Drive
Building 3
Lawrenceville, NJ 08648
EXAMINER
GUO, TONG
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
06/18/2021 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 and JOHN T. SIMPSON
Appeal 2020-004364
Application 13/767,244
Technology Center 1700
Before TERRY J. OWENS, BRIAN D. RANGE, and JANE E. INGLESE,
Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 13–21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as UT-Battelle, LLC (Appeal
Br. 3).
Appeal 2020-004364
Application 13/767,244

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CLAIMED SUBJECT MATTER
The claims are directed to an article having a nanostructured surface
layer. Claim 13, reproduced below, is illustrative of the claimed subject
matter:
13. An article having a nanostructured surface layer, comprising:
a substrate; and
a nanostructured SiO2-rich layer bonded to said substrate, wherein
said nanostructured layer comprises a plurality of spaced apart
branched nanostructured spinodal features comprising a contiguous,
protrusive material, wherein a width of said nanostructured features ranges
from 1 to 500 nm;
a continuous hydrophobic layer adhered to a plurality of surfaces of
the nanostructured features, wherein the continuous layer has a thickness of
from 1 to 60 nm, wherein the continuous layer comprises a polyphobic
compound, wherein the at least one polyphobic compound is both
hydrophobic and oleophobic;
a plurality of interconnected nanopores formed by said plurality of
nanostructured features, the nanopores having a major diameter ranging
from 5-500 nm, the nanostructured layer having a thickness of no more than
2000 nm, and the interconnected nanopores extending through the thickness
of the layer; and
an oil having a boiling point of at least 120 °C pinned in the plurality
of nanopores by Van der Walls forces, such that the nanostructured features
protrude from the oil, wherein the nanostructured surface layer is
superoleophobic having a contact angle with a drop of fingerprint oil of from
70 to 180 degrees, superhydrophobic having a contact angle with water of at
least 140 degrees, optically transparent having a Strehl ratio ≥ 0.5,
antireflective and reflecting less than 1 % of incident visible light and
blocking at least 80% of UV radiation across a broad spectrum at of least
150 nm, and smear resistant.
Appeal 2020-004364
Application 13/767,244

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Weber US 2003/0122269 A1 July 3, 2003
D'Urso US 2006/0024508 A1 Feb. 2, 2006
Simpson US 2007/0184247 A1 Aug. 9, 2007
Nicholas US 2009/0118384 A1 May 7, 2009
Jin US 2011/0229667 A1 Sept. 22, 2011
REJECTION
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
13–21 103(a) D’Urso, Simpson,
Weber, Jin, Nicholas
OPINION
We need address only the sole independent claim, i.e., claim 13. That
claim requires an oil pinned to a plurality of nanopores by Van der Walls
forces. The Appellant’s Specification states that “‘pinned’ refers to being
held in place by surface tension forces, van der Waal forces (e.g., suction),
or combinations of both” (Spec. 12:30–31).
To meet that claim requirement, the Examiner relies upon Jin and
Nicholas (Final 6–7; Ans. 17–19, 21–22).
Jin discloses a substrate coated with nanowires having tips coated
with a polymeric liquid that can comprise polydimethylsiloxane2 and is
hardened to form a mushroom tip geometry to provide the substrate with a
superhydrophobic, superoleophobic, and/or superomniphobic surface having
a contact angle with a water droplet and/or an oil droplet greater than about
140º (¶¶ 10, 16; claim 44).

2 The Appellant’s oil can be a polysiloxane (Spec. 13: 6–9).
Appeal 2020-004364
Application 13/767,244

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Nicholas discloses an open cell foam rendered water and oil repellant
by wetting its exterior and interior surface area with a treatment chemical
that can be polydimethylsiloxane (¶¶ 5, 19; claim 8).
D’Urso discloses a super-hydrophobic, nanostructured sodium
borosilicate glass that is phase separated by spinodal decomposition and can
have a hydrophobic coating (¶¶ 29–32).
Simpson discloses a super-hydrophobic, nanostructured sodium
borosilicate glass that is phase separated by spinodal decomposition and has
spinodal feature dimensions of about 4 nm to 500 nm (¶ 12).
Weber discloses an ophthalmic lens having several optical coatings,
the top coating being hydrophobic and having a thickness that usually is 1 to
30 nm (¶¶ 3, 151).
The Examiner finds (Final 8):
Since the prior arts uses the same polysiloxane oil as the
instant application, and the nanostructure in prior arts has overlapping
features as the instant application, the resulting properties are
expected the same. Since the combination of prior arts have exactly
the same nanopore structure with the same pinned oil as the instant
application, the same Van der Walls forces will also exist between the
nanostructure feature and oil in the combination of prior arts just like
the instant application.

The Examiner states that “Nicholas is only relied upon to teach the
polysiloxane or the oil can also be applied by wetting treatment or pinning
treatment” (Ans. 17), “Nicholas et al. discloses polysiloxane can be used
be [sic] applied by wetting treatment or pinning treatment to enable a
nanoporous surface both hydrophobic and oleophobic (see e.g. title, abstract,
claim 8)” (Ans. 19), and “[p]inned oil acting as an index matching fluid is a
property of the pined [sic] oil and since Jin and Nicholas disclose the same
Appeal 2020-004364
Application 13/767,244

5
pinning oil as the instant application, the pinning oil in Nicholas will have
the same optical properties as claimed in the instant application” (id.).
The Examiner does not specifically point out any disclosure of pinned
oil in Jin or Nicholas.
The Appellant, in reliance upon a Declaration of Tolga Aytug (¶¶ 9,
11, 12), a Declaration of Brian D’Urso (¶ 8), and a Second Declaration of
John Simpson (¶¶ 10–12), argues that the applied references do not disclose
a pinned oil (Appeal Br. 21–22).
When an Examiner makes a reasonable fact finding and the Appellant
does not challenge it, we can accept it as fact. See In re Kunzmann, 326
F.2d 424, 425 n.3 (CCPA 1964). The Appellant, however, has challenged
the Examiner’s finding that the applied references disclose a pinned oil.
Consequently, the Examiner must provide evidentiary support for the
finding. The Examiner, however, has not done so.
Moreover, 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).
The Examiner concludes (Ans. 8–9):
Both D'Urso et al. in view of Simpson and Weber; Jin and
Nicholas are analogous in the field of hydrophobic surface, it would
have been obvious for a person with ordinary skills in the art to
modify D'Urso et al. in view of Simpson and Weber with the
teaching of Jin and Nicholas to wet the surface with polysiloxane
liquid while the nanostructure is still protruding from the polysiloxane
liquid to impart the surface both superhydrophobic and
superoleophobic such that the contact angle with water droplet and a
Appeal 2020-004364
Application 13/767,244

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contact angle with oil droplet that both are greater than about
140 degrees.

That mere assertion does not establish that the disclosure in Jin or
Nicholas would have provided one of ordinary skill in the art with an
apparent reason to modify the combined disclosures of D’Urso, Simpson,
and Weber as proposed by the Examiner. Thus, as pointed out by the
Appellant (Appeal Br. 21), the record indicates that the Examiner’s
combination of Jin and Nicholas with D’Urso, Simpson, and Weber is based
upon impermissible hindsight in view of the Appellant’s disclosure. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art”).
For the above reasons, we reverse the rejection.
CONCLUSION
The Examiner’s decision to reject claims 13–21 is reversed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–21 103(a) D’Urso, Simpson,
Weber, Jin,
Nicholas
13–21
REVERSED