Ex Parte Schwartz et al

Patent Trial and Appeal Board

Jun 22, 2016

13292547 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/292,547 11/09/2011
99064 7590
Hollingsworth Davis
8000 West 78th Street
Minneapolis, MN 55439
06/24/2016
FIRST NAMED INVENTOR
David E. Schwartz
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20110481-US-NP/PARC.039Al 3270
EXAMINER
MEEKS, TIMOTHY HOWARD
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
tdotter@hdpatlaw.com
roswood@hdpatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PA TENT TRIAL AND APPEAL BOARD
Ex parte DAVIDE. SCHWARTZ1
and Ricardo S. Roque
Appeal2015-000317
Application 13/292,547
Technology Center 1700
Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
David E. Schwartz and Ricardo S. Roque ("Schwartz") timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-17 and 24-
26.3 We have jurisdiction. 35 U.S.C. § 6. We affirm.
1 The real party in interest is identified as Palo Alto Research Center
Incorporated. (Appeal Brief, filed 19 May 2014 ("Br."), 1.)
2 Office action mailed 22 October 2013 ("Final Rejection"; cited as "FR").
3 Remaining copending claims 18-23 have been withdrawn from
consideration (Claims App., Br. 11-12) and are not before us.
Appeal2015-000317
Application 13/292,547
A. Introduction4
OPINION
The subject matter on appeal relates to a method of forming a
hydrophobic layer on a substrate, where the hydrophobic layer comprises a
mixture of a micropowder and a binder. A surface having a static contact
angle with water greater than 90° is called "hydrophobic." (Spec. 1, 11. 13-
14.) According to the '547 Specification, "[h]ydrophobic surfaces are water
repellent and can exhibit a self-cleaning or "lotus leaf effect." (Id. at 3,
11. 15-16). The Specification reveals that surfaces having both a micrometer
scale and a nanometer scale roughness can exhibit these characteristics of
hydrophobicity. (Id. at 11. 16-17). Such surfaces are said to be useful in, for
example, fluidic and microfluidic systems, as well as in protective and
antifouling coatings. (Id. at 1, 11. 15-17.)
The claimed method comprises pre-treating the substrate, applying a
micropowder-binder mixture to the treated substrate surface, and curing the
mixture. In the words of the Specification, "[t]he surface may be treated
prior to coating to chemically activate and/or promote adhesion. For
example, the surface may be treated by exposure to plasma or by
silanization." (Id. at 2, 11. 10-11.) The micropowder comprises micro scale
particles having a diameter between about 100 nm to about 50 µm, and at
least some of the micropowder particles have features in the range of greater
than about 25 nm to less than about 100 nm. (Id. at 1, 11. 22-26.) The binder
may be hydrophilic or hydrophobic. (Id. at 2, 1. 5.) Although it need not,
4 Application 13/292,547, Hydrophobic surface coating, filed 9 November
2011. We refer to the '"547 Specification," which we cite as "Spec."
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Application 13/292,547
the '54 7 Specification does not appear to describe the physical origin of the
hydrophobic effect due to the microparticles.
Sole independent claim 1 is representative and reads:
A method of forming a hydrophobic layer, comprising
forming a mixture of a micropowder with a binder,
the micropowder comprising
micrometer scale particles having diameters in a
range of about 100 nm to about 50 µm,
at least some of the micrometer scale particles have
nanometer scale features having a feature size greater
than about 25 nm and less than about 100 nm;
applying the mixture to a surface; and
pre-treating the surface prior to applying the mixture to
the surface; and
curing the mixture.
(Claims App., Br. 10; some indentation and paragraphing added.)
The Examiner maintains the following grounds of rejection5 :
A. Claims 1--4, 10, 12, 16, 17, and 24 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Nun6 and Hutchinson.7
B. Claims 1-6, 8, 10, 12, 14-17 and 24 stand rejected under
35 U.S.C. § 103(a) in view of Keller, 8 Nun, and Hutchinson.
5 Examiner's Answer mailed 29 July 2014 ("Ans.").
6 Edwin Nun et al., Surfaces rendered self-cleaning by hydrophobic
structures and a process for their production, U.S. Patent No. 7,211,313 B2
(2007).
7 Gerald A. Hutchinson, Methods of forming multilayer articles by surface
treatment applications, U.S. Patent Application Publication
No. 2007 /0087131 Al (2007).
8 Harald Keller et al., Compositions for producing difficult-to-wet surface,
U.S. Patent No. 6,683, 126 B2 (2004).
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Application 13/292,547
Bl. Claims 7, 9, and 13 stand rejected under 35 U.S.C. § 103(a)
in view of Keller, Nun, Hutchinson, and Zhang. 9
B2. Claims 11 and 25 stand rejected under 35 U.S.C. § 103(a) in
view of Keller, Nun, Hutchinson, Samuelson, 10 and
Encyclo. 11
B3. Claim 26 stands rejected under 35 U.S.C. § 103(a) in view of
Keller, Nun, Hutchinson, and Dadalas. 12
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Schwartz urges the Examiner erred in finding that Hutchinson would
have provided sufficient teachings, reasons, or motivation to suggest
pretreating substrates prior to coating the substrates with a micropowder-
binder mixture taught or suggested by Nun (Rejection A) or by Keller and
Nun (Rejection B). (Br. 4-6.) In particular, Schwartz argues that "[t]here is
no indication in Hutchinson that any of the coatings include a mixture of
micropowder as claimed." (Id. at 4, 11. 14-15.) Schwartz argues further that
the properties of the coatings taught by Hutchinson (barriers against gas and
water permeability) and by Nun (self-generating, self-cleaning hydrophobic
9 Hua Zhang, Durable superhydrophobic coating, U.S. Patent Application
Publication No. 2007 /0009657 Al (2007).
10 Gay M. Samuelson and David H. St. Clair, Encapsulated solar cell
assemblage and method of making, U.S. Patent No. 4,692,557 (1987).
11 Encyclo, http://www.encyclo.eo.uk/define/silanization; last accessed
on 16 October 2013.
12 Michael C. Dadalas et al., Primer coating of PTFEfor metal substrates,
U.S. Patent No. 7,462,667 B2 (2008).
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Appeal2015-000317
Application 13/292,547
coatings) "are different, as would be understood by one of ordinary skill in
the art." (Id. at 5, 11. 1-3.)
These arguments are not persuasive because they fail to address a
central point of the rejections, namely, that the routineer would have looked
to Hutchinson's teachings of treating surfaces prior to applying coatings
comprising polymeric binders in order to improve the adhesion between the
coating and the (treated) surface. Criticizing Hutchinson for failing to teach
the presence of microparticles in a binder resin overlooks or misapprehends
such teachings by Nun (or by Nun and Keller). Similarly, arguing that the
properties of the coatings taught by Hutchinson are different from the
properties of the coatings taught by Nun, without supporting those
arguments with evidence of record, and without specifying which properties
are different and explaining why those differences would have discouraged
the proposed combination, amounts to no more than an invitation to the
Board to review the record de novo. We decline such invitations, as our
primary role is review, not examination in the first instance.
Further in this regard, Schwartz has not explained why the routineer
would have expected that the presence of microparticles in a binder resin
would change the properties of the binder resins so much that the surface
treatments suggested by Hutchinson, such as corona or plasma treatment, or
other methods of surface activation of the substrate, would be ineffective to
enhance adhesion between the binder resin and the substrate.
Schwartz argues further that because "Nun already describes a way to
provide hydrophobicity using a mixture of particles" (id. at 5, 11. 6-7), one
skilled in the art would not have looked to the teachings of Hutchinson,
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Application 13/292,547
which "discusses providing hydrophobicity by surface treatment"
(id. at 1. 5), for "any surface treatment prior to coating with a mixture of a
micropowder and a binder as claimed" (id. at 11. 7-9). This argument is not
persuasive of harmful error because the common hydrophobic property of
the coatings would have tended to provide a reasonable expectation that
similar surface-treatment processes would lead to similar results on similar
surfaces.
Similarly, Schwartz criticizes the Examiner's finding in Rejection B2
that Samuelson would have suggested silanizing the substrate (as required
by claims 11 (substrate not specified) and 2 5 (glass substrate)) because
"Samuelson is concerned with forming solar cells and is not concerned with
forming a hydrophobic layer whatsoever." (Id. at 7, 11. 13-14.) Again,
however, Schwartz does not address the Examiner's findings that the
improved adhesion taught by Samuelson between thermoplastic films and
silanized glass substrates would have suggested improved adhesion between
glass substrates and the thermoplastic films taught or suggested by the
combined teachings of Nun and Keller.
Schwartz urges with respect to Rejection B3 (of claim 26) that
"Dadalas has not been shown to remedy the above-discussed deficiencies in
Keller, Nun, and Hutchinson." (Id. at 8, 11. 10-11.) This argument is not
persuasive because we have found no deficiencies in those references.
Schwartz's further criticism that "Dadalas is directed towards applying non-
stick, scratch resistant, and wear resistant [polytetrafluoroethylene, PTFE]
coatings to a surface" (id. at 11. 17-18) and is "not concerned with forming a
hydrophobic layer at all" (id. at 1. 19) is not persuasive. Schwartz does not
challenge the Examiner's finding (FR 11, 11. 8-13) that Dadalus teaches
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Application 13/292,547
primer coatings comprising PTFE. As the Examiner points out (Ans. 7,
11. 9-10), Dadalus teaches a coating composition that forms a "primer
coating on various substrates on which firm adhesion of PTFE and other
fluoropolymers is desired" (Dadalus, col. 7, 11. 34-36). In other words, the
purpose of Dadalus is to provide PTFE-coated articles, which are
hydrophobic.
On the present record, Schwartz's arguments are not persuasive of
harmful error in the appealed rejections.
C. Order
It is ORDERED that the rejections of claims 1-17 and 24-26 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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