The Government of the United States of America, as represented by the Secretary of the Navy

Patent Trials and Appeals Board

Mar 16, 2022

2021001788 (P.T.A.B. Mar. 16, 2022)

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. 15/193,210 06/27/2016 Darryl A. Boyd 103615-US2 1078 26384 7590 03/16/2022 NAVAL RESEARCH LABORATORY ASSOCIATE COUNSEL (PATENTS) CODE 1008.2 4555 OVERLOOK AVENUE, S.W. WASHINGTON, DC 20375-5320 EXAMINER TSCHEN, FRANCISCO W ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 03/16/2022 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): patent.docketing@nrl.navy.mil PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DARRYL A. BOYD, JESSE A. FRANTZ, SHYAM S. BAYYA, LYNDA E. BUSSE, JASBINDER S. SANGHERA, WOOHONG KIM, and ISHWAR D. AGGARWAL ____________ Appeal 2021-001788 Application 15/193,210 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and JANE E. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL The Appellant1 requests review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 2-12.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42 (2012). The Appellant identifies the real party in interest as The Government of the United States of America, as represented by the Secretary of the Navy. Appeal Brief filed June 22, 2020 (“Appeal Br.”), 2. 2 Final Office Action entered November 20, 2019 (“Final Act.”), 1. Appeal 2021-001788 Application 15/193,210 2 CLAIMED SUBJECT MATTER The Appellant claims a method of forming a hydrophobic, anti- reflective, transmissive material. Appeal Br. 2. Claim 4 illustrates the subject matter on appeal, and reads as follows: 4. A method of forming a hydrophobic, anti-reflective, transmissive material, comprising: providing a substrate that is transmissive in the mid- wave infrared range of the electromagnetic spectrum, wherein the substrate consists of glass or a crystalline material; patterning nano structures directly into said substrate; functionalizing the substrate to provide hydroxyl groups thereon; and contacting the substrate with a solution comprising 1H,1H,2H,2H-perfluorooctyl trichlorosilane, 1H,1H,2H,2H- perfluorodecyl trichlorosilane, 1H,1H,2H,2H-perfluorodecyl acrylate, an amorphous polytetrafluoroethylene resin, or an alkyl or fluoroalkyl thiol for a sufficient time to apply at least a monolayer of a fluorine-containing material on the substrate. Appeal Br. 7 (Claims Appendix) (emphasis added). REJECTIONS The Examiner maintains the following rejections in the Examiner’s Answer entered October 20, 2020 (“Ans.”): I. Claims 2-9, 11, and 12 under 35 U.S.C. § 103 as unpatentable over Aytug, US 2015/0239773 A1, published August 27, 2015 in view of Steiner et al., US 2001/0024684 A1, published September 27, 2001 (“Steiner”), Nelson et al., US 2004/0151627 A1; Aug. 5, 2004 (“Nelson”), M. Malboubi et al., Gigaseal Formation in Patch Clamping with Applications of Nanotechnology, Springer briefs in Applied Sciences and Technology, 50-52 (2014) (“Malboubi”), and Y. Ledemi et al., Colorless Appeal 2021-001788 Application 15/193,210 3 Chalco-halide Ga2S3-GeS2-CsCl Glasses as NewOoptical Material, 8847 Proc. of SPIE, 1-8 (2013) (“Ledemi”); and II. Claim 10 under 35 U.S.C. § 103 as unpatentable over Aytug in view of Steiner, Nelson, Malboubi, Ledemi, and S. Kulkarni et al., Growth Kinetics and Thermodynamic Stability of Octadecyltrichlorosilane Self- Assembled Monolayer on Si (100) Substrate, 59 Materials Letters, 3890-95 (2005) (“Kulkarni”). FACTUAL FINDINGS AND ANALYSIS Upon consideration of the evidence relied upon in this appeal and each of the Appellant’s contentions, we affirm the Examiner’s rejections of claims 2-12 under 35 U.S.C. § 103 for reasons set forth in the Final Action, the Answer, and below. We review appealed rejections for reversible error based on the arguments and evidence the Appellant provides for each issue the Appellant identifies. 37 C.F.R. § 41.37(c)(1)(iv) (2013); 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) (explaining that even if the Examiner had failed to make a prima facie case, “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”)). The Appellant does not separately argue any of the claims subject to the appealed rejections. Appeal Br. 3-6. We, therefore, select claim 4 as representative, and limit our discussion accordingly. 37 C.F.R. § 41.37(c)(1)(iv) (2013). The Appellant argues that “there is no disclosure or suggestion” in any of the applied prior art references “of patterning nanostructures directly Appeal 2021-001788 Application 15/193,210 4 into a glass or crystalline substrate to form an anti-reflective material.” Appeal Br. 3. The Appellant argues that “Aytug does not include nanoparticles patterned directly into a glass substrate, but rather on a film deposited on the substrate.” Id. 4. The Appellant argues that “Steiner does not teach patterning nanostructures directly into a substrate to form an anti- reflective material,” but instead “merely uses nanoporous coatings as an etching mask and removes them after etching.” Id. The Appellant’s arguments do not identify reversible error in the Examiner’s rejection of claim 4, for reasons that follow. The Examiner finds that although Aytug discloses producing a glass substrate “having a surface comprising nanostructured features,” Aytug does not disclose forming the nanostructured features directly on the glass substrate, and the Examiner relies on Steiner for disclosing this feature of the method of claim 4. Final Act. 2-3. Steiner discloses a process for imparting anti-reflective properties to an optical glass substrate that involves using a nanoporous coating as an etching mask to allow the substrate to be etched at discrete locations. More specifically, Steiner discloses providing two or more polymers that are immiscible in particular solvents, which Steiner refers to as “mutually incompatible” polymers, forming a solution by dissolving the polymers in a solvent in which all of the polymers are soluble, applying the solution to a glass substrate to form a coating on the substrate, applying a solvent to the coating that selectively dissolves only one of the polymers, repeating the step of applying a solvent to the coating using different solvents as necessary to form sites on the substrate that are not covered, or are “barely covered,” by the coating, exposing the substrate to an etching solution that “etches the optical substrate (e.g. glass) . . . only at those sites which are not at all or Appeal 2021-001788 Application 15/193,210 5 only barely covered” by the coating to etch “pores or recesses having a suitable or corresponding depth” into the substrate, and removing both the etching solution and the coating from the substrate. Steiner ¶¶ 8-17, 33-36. Steiner explains that the polymer coating serves as a stencil or mask that allows the glass substrate to be etched at discrete locations in order to form “a nanoporous structure inside the substrate,” which imparts anti- reflective properties to the substrate. Id. ¶¶ 17, 33-36. Contrary to the Appellant’s arguments, Steiner thus explicitly discloses patterning nanostructures directly into a glass substrate. The Appellant argues that “Aytug does not specify that the substrate is transmissive in the mid-wave infrared range.” Appeal Br. 4. The Appellant’s arguments again do not identify reversible error in the Examiner’s rejection. Claim 4 recites, in part, “providing a substrate that is transmissive in the mid-wave infrared range of the electromagnetic spectrum, wherein the substrate consists of glass or a crystalline material.” The Appellant’s Specification indicates suitable substrates for use in the Appellant’s invention “may be made of any material having transmissive properties for at least one wavelength of the electromagnetic spectrum . . . [and] [e]ach substrate material has transmissive properties within a known wavelength range, based on the inherent properties of the material.” Spec. ¶¶ 42-43. The Specification indicates that the wavelength range at which a particular substrate material is transmissive is an inherent property of the material; consequently, glass substrates are inherently transmissive in the mid-wave infrared range of the electromagnetic spectrum, according to the Appellant’s Specification and the plain language of claim 4. Aytug discloses forming nanostructured features on a glass substrate. Appeal 2021-001788 Application 15/193,210 6 Aytug ¶¶ 35, 115, 122. And as discussed above, Steiner discloses etching nanofeatures into an optical glass substrate to impart anti-reflective properties to the glass substrate. Steiner ¶¶ 17, 33-36. Although neither Aytug nor Steiner explicitly teaches that the glass substrates disclosed in the reference are transmissive in the mid-wave infrared range of the electromagnetic spectrum, the glass substrates disclosed in both references nonetheless would have such transmissibility as an inherent property of the materials, as taught by the Appellant’s Specification. Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1327-28 (Fed. Cir. 2001) (finding that features were inherent “as evidenced by [the patentee]’s own documents”). The Appellant’s further conclusory arguments that the remaining references applied by the Examiner in the rejection of claim 4 “do not make up for” the deficiencies of Aytug and Steiner do not identify with specificity any particular reversible error in the Examiner’s rejection of claim 4. Appeal Br. 4-5. We, accordingly, sustain the Examiner’s rejections of claims 2-12 under 35 U.S.C. § 103. DECISION SUMMARY Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-9, 11, 12 103 Aytug, Steiner, Nelson, Malboubi, Ledemi 2-9, 11, 12 10 103 Aytug, Steiner, Nelson, Malboubi, Ledemi, Kulkarni 10 Overall Outcome 2-12 Appeal 2021-001788 Application 15/193,210 7 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) (2013). AFFIRMED