Ex Parte Badyal et al

Patent Trial and Appeal Board

Jan 9, 2018

12835913 (P.T.A.B. Jan. 9, 2018)

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.
12/835,913 07/14/2010 Jas Pal Singh BADYAL 52309-P001D1 1138
61060 7590
WINSTEAD PC
P.O. BOX 131851
DALLAS, TX 75313-1851
EXAMINER
RUMMEL, IAN A
ART UNIT PAPER NUMBER
1785
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
patdocket@winstead.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAS PAL SINGH BADYAL and IAIN STUART WOODWARD
Appeal 2017-004038
Application 12/835,913
Technology Center 1700
Before KAREN M. HASTINGS, MONTE T. SQUIRE,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 29—39 and 96—106 of
Application 12/835,913 under 35 U.S.C. § 103(a) as obvious. Final Act.
(April 9, 2014) 2—7. Appellants1 seek reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM-IN-PART.
1 Surface Innovations Limited is identified as the real party in interest.
Appeal Br. 1.
Appeal 2017-004038
Application 12/835,913
BACKGROUND
The present application generally relates to the application of a
coating to a substrate in which the coating includes a polymer material and is
selectively fluorinated and/or cured to improve its liquid repellence. Spec.,
Abstract. This permits the substrate to have regions of improved liquid
repellence and remaining regions which may be utilized as liquid collection
areas. Id. The application teaches that coatings of this type can have a wide
range of uses. Spec. 13.
Claim 29 is representative of the pending claims and is reproduced
below with certain limitations bolded for emphasis:
29. A substrate comprising:
a treated portion of the substrate defining a hydrophobic
and/or oleophobic liquid repellant pattern, wherein the liquid
repellant pattern has a water contact angle of greater than
100°; and
an untreated portion of the substrate defining one or more
liquid collection areas surrounded and defined by at least a
portion of the liquid repellant pattern such that a liquid is
retained in the one or more liquid collection areas by the
liquid repellent pattern,
wherein the one or more liquid collection areas each
extends in two directions and a width of each of the one or
more liquid collection areas in at least one direction is wider
than the at least a portion of the liquid repellant pattern
surrounding the liquid collection area.
Appeal Br. 14 (Claims App.).
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Application 12/835,913
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 29-31, 33—37, 39, 104, and 105 are rejected under 35
U.S.C. § 103(a) as obvious over Williams et al. (US 2001/0024805
Al, published Sep. 27, 2001) (hereinafter “Williams”). Final Act.
2-3.
2. Claims 29—39, 1002, 104, and 105 are rejected under 35 U.S.C. §
103(a) as obvious over Satoi (US 5,989,757, issued Nov. 23,
1999). Id. at 3-5.
3. Claims 96—103 and 106 are rejected, and claims 29—39 and 104—
105 are alternatively rejected, under 35 U.S.C. § 103(a) as obvious
over Satoi in view of Zhang et al., Surface Properties and Gas
Permeability of Polybutadiene Membrane Treated with Various
Fluorine Containing Gas Plasmas, Sen-I Gakkaishi, Vol. 47, No.
12, 635—643 (1991) (hereinafter “Zhang”). Id. at 5—7.
DISCUSSION
Rejection 1. The Examiner rejected claims 29—31, 33—37, 39, 104,
and 105 as obvious over Williams. Final Act. 2—3. Appellants argue that
Williams fails to teach a substrate where “a liquid is retained ... by the
liquid repellent pattern,” Appeal Br. 4—5, and additionally fails to teach a
substrate where the width of the liquid collection areas is wider than the
surrounding liquid repellant pattern, id. at 5—6.
2 Claim 100 is omitted from the heading at page 3 of the final rejection but is
discussed at page 5113.
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Application 12/835,913
Retained... by the Liquid Repellent Pattern
In making the subject rejection, the Examiner found that Williams
teaches a product in which a substrate is treated to create a grid pattern of
hydrophobic regions that surround an array of hydrophilic liquid collection
areas. Id. at 2 13. The Examiner further found that the teachings of
Williams differ from the claims at issue in that Williams teaches that the
liquid is retained by the hydrophilic areas, rather than by the liquid-repellent
pattern. Id. 14. The Examiner additionally found that it would have been
obvious to one of ordinary skill in the art that the hydrophobic (liquid-
repellent) regions would be useful for retaining liquid. Id.
Appellants argue that Williams lacks any teaching that the substrate
can keep liquid in the retention areas without the inclusion of a treated
hydrophilic portion. Appeal Br. 4—5. Accordingly, Appellants argue that
Williams does not teach “a device that retains liquid in an untreated portion
using a liquid repellant pattern, as claimed.” Id. at 5.
Claims 29 and 35 each require a substrate having an untreated liquid
collection area surrounded by a treated hydrophobic portion “such that a
liquid is retained in the one or more liquid collection areas by the liquid
repellent pattern.” Appeal Br. 14 (Claims App.).
Williams broadly teaches as follows regarding hydrophobicity and
hydrophilicity:
The terms "hydrophobic" and "hydrophilic" are herein
given the meanings commonly understood in the art. Thus, a
"hydrophobic" material has relatively little or no affinity for
water or aqueous media, while a "hydrophilic" material has
relatively strong affinity for water or aqueous media. The
relative hydrophobicities and hydrophilicities of the devices
described herein are such as to ensure partitioning of liquid
samples substantially into the described hydrophilic liquid-
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retaining zones upon application of the sample. The required
levels of hydrophobicity and hydrophilicity may vary depending
on the nature of the sample, but may be readily adjusted based
on simple empirical observations of the liquid sample when
applied to the devices.
Williams 121. Williams further teaches an embodiment having a treated
hydrophobic portion and a treated hydrophilic portion. Williams 139.
Williams additionally teaches that certain untreated substrates can form a
liquid collection area. In this regard, Williams teaches that “a device 10
comprises a substrate 12 having a plurality of hydrophilic liquid-retaining
zones .... The substrate 12 can be fabricated from any material in which
microvolume wells can be fashioned.” Williams | 60. Williams teaches that
such a substrate may be treated or untreated: “[sjhould a particular polymer
not be sufficiently hydrophilic, it can be treated to impart hydrophilicity.”
Id.
Given these teachings, it is apparent that Williams teaches or suggests
both a treated hydrophobic portion and an untreated liquid collection area.
The limitation “such that a liquid is retained in the one or more liquid
collection areas by the liquid repellent pattern” does not exclude a liquid
collection area having some degree of hydrophilicity. Accordingly,
Appellants have not shown error in the Examiner’s determination that a
substrate having a liquid “retained in the one or more liquid collection areas
by the liquid repellent pattern,” as required by claims 29 and 35, would have
been obvious to one of skill in the art in light of Williams’ teachings as
discussed here and in the Answer.
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Width of the Liquid Collection Areas is Wider than
the Surrounding Liquid Repellant Pattern
Appellants additionally argue that Williams fails to teach a substrate
where the width of the liquid collection areas is wider than the surrounding
liquid repellant pattern as required by claims 29 and 35. Appeal Br. 5—6.
Appellants argue that the Examiner relies upon the figures of Williams
(Final Act. || 3, 5) and that such figures are “ambiguous at best.” Id. at 5.
Appeal Br. 5. Appellants further argue that Examples 3 and 5 of Williams
enumerate the diameter and density of liquid collection areas indicating a
spacing greater than the width of the collection areas. Id.
It is well settled that precise proportions should not be read into patent
drawings when the patent does not expressly provide such proportions.
Nystrom v. TREXCo., Inc., 424 F.3d 1136, 1149 (Fed. Cir. 2005). But while
patent drawings are not working drawings drawn to scale, things patent
drawings show clearly are not to be disregarded. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972); In re Heinrich, 268 F.2d 753, 755 (CCPA 1959). In
fact, “[description for the purposes of anticipation can be by drawings alone
as well as by words.” In re Bager, 47 F.2d 951, 953 (CCPA 1931).
The question here is whether Williams discloses that the width of the
liquid collection areas is greater than the surrounding liquid repellent
pattern. To answer that question, we look to the drawings, but consider
them in light of the disclosure as a whole to determine what Williams would
have disclosed to one of ordinary skill in the art.
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Figure 2 of Williams depicts certain liquid collection areas as follows
Figure 2 is described as “a perspective view of an assay device having sets
of hydrophilic liquid-retaining zones varying in micro volume capacity of
liquid retention.” Williams 125.
The specification of the Williams reference provides as follows:
a device 16 as depicted in FIG. 2 can have sets (e.g., rows) of
microvolume wells in which volumes are constant within a set,
but vary between sets. As depicted in FIG. 2, the volumes can
vary incrementally over an array of sets of wells, with the
smaller wells 18 holding sub-microliter volumes and the larger
wells 20 holding microliter volumes. It is even possible for the
largest wells in a device such as depicted in FIG. 2 to include
wells 22 that would not be classified as “microvolume” wells.
Such wells might have a liquid-retention capacity, for example,
of substantially more than 25 microliters.
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Williams | 62. From the foregoing, it is apparent that the “largest wells” 22
are intended to be depicted as having greater size than the “smaller wells
18.” Moreover, the major dimension of the largest wells 22 is depicted as
significantly greater than the “portion of the liquid repellent pattern”
separating the wells. Accordingly, Appellants have not shown error in the
Examiner’s finding that Williams teaches a substrate where the width “in at
least one direction” of the liquid collection areas is wider than the
surrounding liquid repellant pattern.
Appellants argue that the rejection of claims 30, 31, 33, 34, 36, 37, 39,
104, and 105 over Williams are erroneous for the same reasons as the
rejections of claims 29 and 35. Appeal Br. 6. As Appellants’ arguments
regarding the rejection of claims 29 and 35 were not found to be persuasive,
we affirm the rejection of claims 30, 31, 33, 34, 36, 37, 39, 104, and 105 on
the same bases.
Rejection 2. The Examiner additionally rejected claims 29-39, 100,
104, and 105 as obvious over Satoi. Appeal Br. 7—10. Claims 29 and 35 are
independent claims while the remaining claims at issue depend from either
claim 29 or claim 35.
Water Contact Angle
Claims 29 and 35 each require that “the liquid repellant
[pattem/border] has a water contact angle of greater than 100°.” A higher
(greater than 90°) contact angle indicates greater hydrophobicity. See, e.g.,
Answer 4; Williams 196. The Examiner found that Satoi does not teach any
particular water contact angle for the hydrophobic material of his partition
but that one of ordinary skill would have been motivated to make the
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hydrophobicity (and therefor the water contact angle) as great as possible.
Final Act. 4 112.
Appellants argue that a person of ordinary skill would have looked to
another reference, Seki3, which teaches to use materials having lesser water
contact angles. Appeal Br. 7—8. As a result, Appellants argue, “the skilled
person would have no motivation to provide a water contact angle as high as
possible to the partition regions” of Satoi. Id. Notably, Seki is not applied
in this rejection. But even were we to accept Appellants’ argument that a
person of ordinary skill in the art would look to Seki, rather than Satoi as
found by the Examiner, the cited paragraph is inadequate to rebut the
Examiner’s findings as discussed below.
Appellants cite only to Paragraph 18 of Seki. Paragraph 18 of Seki
teaches that partition members having strong liquid repellency
characteristics tend to repel liquid such that a liquid has an undesirable
greater thickness in the center of the partitioned area and less at the
peripheries.
We further note that another portion of Seki teaches as follows:
The surface treatment conditions are set, for example, so
that the surface of the upper bank layer subtends an angle of
contact with the liquid thin film material of 50 degrees or less.
And the surface treatment conditions are set so that the angle of
contact subtended by the lower bank layer with the liquid thin
film material is within a range of 20 to 40 degrees.
Seki | 50. This portion (as well as 118) of Seki is applicable to a
substantially vertical partition. Normally, and in the present claims, water
3 US 2004/0201048 Al, published Oct. 14, 2004, “Method of Forming Thin
Film Patterning Substrate Including Formation of Banks.”
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Application 12/835,913
contact angle analysis is contemplated to be performed on a horizontal
surface. Answer 9-10. Indeed, a surface having a water contact angle in “a
range of 20 to 40 degrees” would not even be hydrophobic.
Accordingly, the teachings of Seki, even if they were to be
considered, do not rebut the Examiner’s finding that one of ordinary skill,
considering the teachings of Satoi, would have been motivated to make the
hydrophobicity (and therefor the water contact angle) as great as possible.
Retained... by the Liquid Repellent Pattern
Appellants additionally argue that Satoi does not “disclose or suggest
retention of a liquid pixel by a hydrophobic compound, as claimed.” Appeal
Br. 8. Appellants assert that Satoi teaches that colored ink is applied to a
substrate and permeates the pixel portion of the substrate while the black
matrix portion is treated so as not to absorb ink and prevent permeation. Id.
at 8—9. Accordingly, Appellants argue, the “pixel material” is retained by
absorption rather than by a liquid repellent pattern or border. Id.
Satoi teaches that colored inks are discharged onto a treated (5:46—51)
or untreated (6:20-23) substrate. In discussing Figure 1C, Satoi teaches that
portions of the substrate “shielded by the black matrix 2 are changed to
portions having such property that ink will not readily be absorbed. This is a
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Application 12/835,913
process for providing these portions with a hydrophobic property.” Satoi
5:12—16. Figure 1C is reproduced below.
FIG.1C
PATTERN EXPOSURE
PORTION WITH
HYDROPHOBIC-PROPERTY
HYDRGPHQBIC-PROPEKTY
Satoi, Fig. 1C (showing portion 5 treated so as to be hydrophobic and
portion 6 which is not hydrophobic). Satoi further teaches that “[t]his is
followed by coloring a portion 6, which has not been subjected to the
hydrophobic-property inducing treatment, with inks of the colors R (red), G
(green) and B (blue) using inkjet heads, and then allowing the ink to dry
[FIG. ID].” Id. 5:20-25. Figure ID is reproduced below:
FIG.1D
BJ-CQLGRING
COLORING FIXING
Satoi, Fig. ID (showing colored inks between hydrophobic portions). These
inks are retained by the hydrophobic portions 5. The discussion in Satoi
regarding permeation of the ink into the organic material, described by
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Appellants, concerns steps occurring subsequent to application of the liquid
ink. Id. 12:53—61.
In view of the disclosure of Satoi, Appellants have not shown error in
the Examiner’s finding that Satoi teaches that “a liquid is retained in the one
or more liquid collection areas by the liquid repellent pattern.”
Water Contact Angles Above 100°
Appellants additionally argue that there is no teaching or suggestion in
Satoi of a water contact angle above 100°. Appeal Br. 9. Specifically,
Appellants argue that Satoi teaches to provide a coating layer that is resistant
to ink absorption and that nothing in Satoi provides any suggestion that high
water contact angles could be achieved by this disclosed method. Id.
Appellants further assert that a person of ordinary skill in the art would not
be motivated to add additional steps (to impart additional hydrophobicity) to
the process of Satoi as it is directed to a continuous manufacturing process.
Id.
Satoi, however, teaches that the material used to form the black matrix
should be highly water repellent. Satoi 4:49-60 (“in a case where the
critical surface tension is high and adequate ink repellency cannot be
obtained with a resin alone, the critical surface tension may be lowered by
adding a silicone- or fluorine-type water/oil repellency agent.”) This
discussion is phrased in terms of surface tension rather than contact angle
but both concepts implicate hydrophobicity. Accordingly, Appellants have
not rebutted the Examiner’s finding that “[o]ne of ordinary skill in the art,
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Application 12/835,913
however, would have understood the need to make the hydrophobicity of the
product of Satoi as high as possible.” Final Act. 4 112.
Rejection 3. The Examiner additionally rejected claims 96—103 and
106 over Satoi in view of Zhang. Final Act. 5—7. In support of this
rejection, the Examiner found that Satoi teaches a substrate having an array
of hydrophilic liquid collection areas, where each hydrophilic area is
surrounded by a hydrophobic polymer material. Id. at 5—6 116. The
Examiner additionally found that Satoi does not teach that the hydrophobic
(cured and fluorinated) portions of the partition are lower in height than the
remaining portion of the coating. Id. at 6 117. The Examiner further found
that Zhang teaches the use of fluorine plasma treatment for the creation of
cross-linked hydrophobic areas on polybutadiene-coated substrates. Id. The
Examiner further found that Zhang teaches a decrease in height resulting
from the plasma treatment. Id. The Examiner determined that it would have
been obvious to one of ordinary skill in the art at the time the invention was
made to use the fluorinated polybutadiene of Zhang as the hydrophobic ink-
controlling partition material of Satoi, as “Zhang explicitly teaches that his
fluorinated polybutadiene has appropriate properties for such a use, and as
Satoi explicitly teaches the use of polybutadiene.” Id. 118.
Appellants argue that Satoi teaches to use polybutadiene only in
forming the black matrix partitions and not in the liquid collection areas.
Appeal Br. 10-11. Appellants assert that there is no suggestion in Satoi to
use the material of the black matrix across the entire substrate. Id. at 11.
Similarly, Appellants assert that one of skill in the art would have no basis to
expect that the fluorinated polybutadiene coating of Zhang could be suitably
used for application across the entire surface of Satoi. Id. Appellants further
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assert that polybutadiene would be unsuitable for absorbing ink as it is
hydrophobic. Id.
In the Answer, the Examiner states, in part, that “[a]s Satoi is directed
to the creation of a product including a substrate that is selectively modified
to have both hydrophilic and hydrophobic areas, and as Zhang teaches a
method for making such a substrate, the Examiner maintains that it would
have been obvious.” Answer 11. Similarly, the Examiner finds that, in the
proposed combination, “the basic nature of the product (i.e. a substrate that
is selectively modified to have both hydrophilic and hydrophobic areas)
would not be changed.” Id. at 12.
Thus, there is a factual discrepancy between the Appellants, who
maintain that the polybutadiene taught by Zhang is hydrophobic (Appeal Br.
11) and the Examiner who appears to maintain that Zhang teaches to treat
polybutadiene so as to have both hydrophilic and hydrophobic portions
(Answer 11, 12).
The Examiner’s finding is unsupported. The Examiner does not cite
to any portion of Zhang teaching that the polybutadiene is rendered
hydrophilic. Moreover, Zhang itself appears to indicate that both treated and
untreated polybutadiene are hydrophobic. See Zhang, Table 1 (indicating
that all tested polybutadiene membranes, both treated and untreated, have
water contact angles greater than 90 degrees). In addition, Satoi teaches that
the glass substrate is coated with “an aqueous polymer” (1:23—24) having
“good ink affinity” (5:50). The Examiner does not find that polybutadiene
has such characteristics. Accordingly, the Examiner has not shown that one
of skill in the art would have been motivated to use untreated polybutadiene
in the pixel portion (liquid collection area) of Satoi.
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In view of the foregoing, the rejection of claims 96—103 and 106 over
Satoi in view of Zhang is reversed.4
CONCLUSION
The rejection of claims 29-31, 33—37, 39, 104, and 105 as obvious
over Williams is affirmed. The rejection of claims 29-39, 100, 104, and 105
as obvious over Satoi is affirmed. The rejection of claims 96—103 and 106
over Satoi in view of Zhang is reversed.
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-IN-PART
4 The Panel notes that Zhang alone appears to teach or suggest each element
of claim 96 apart from “a coating applied to . . . [a] substrate.”
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