Ex Parte Bauer et al

Patent Trial and Appeal Board

Jan 31, 2018

13266279 (P.T.A.B. Jan. 31, 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.
13/266,279 10/26/2011 Ulrich Bauer 2008307CIP2 9668
95685 7590
Cabot Corporation/HE
Law Department
157 Concord Road
Billerica, MA 01821-7001
EXAMINER
HIJJI, KARAM Y
ART UNIT PAPER NUMBER
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
iplaw @ c abotcorp .com
docketing@houstonllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ULRICH BAUER
and DHAVAL D. DOSHI
Appeal 2017-005756
Application 13/266,279
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 46—50, 52—62, 64, and 65 of
Application 13/266,279 under 35 U.S.C. § 103(a) as obvious. Final Act.
(December 3, 2015). Appellants1 seek reversal of the 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 Cabot Corporation is identified as the real party in interest. Appeal Br. 1.
Appeal 2017-005756
Application 13/266,279
BACKGROUND
The ’279 Application describes compositions comprising an aerogel
component said to confer low thermal conductivity. Spec. Abstract. The
described compositions may be slurries used in coating applications or self-
supporting rigid composites. Id. Claims 46 and 47 are representative of the
’279 Application’s claims and are reproduced below from the Claims
Appendix:
46. A composition comprising:
a) an aerogel component in an amount within the range of
from about 60 to about 95 volume %;
b) a surfactant;
c) either an inorganic binder or an inorganic binder-
containing formulation, but not both,
wherein, when dried, the composition is a self supporting
rigid composite having a thermal conductivity that is no
greater than about 20 mW/(m-K), measured according to
ASTM C518.
47. A composite comprising:
a) an aerogel component;
b) a binder selected from the group consisting of cement,
gypsum, lime, and any combination thereof; and
c) a surfactant,
wherein the composite has a thermal conductivity not
greater than about 30 mW/(m-K), measured according to
ASTM C518 and wherein the composite does not include
fibers.
Appeal Br. 22 (Claims App.).
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Application 13/266,279
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 46, 48—50, and 52—62,2 64, and 65 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Frank
’563,3 Rouanet,4 and Frank ’475.5 Final Act. 2; Answer 2.
2. Claim 47 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Geiss,6 Frank ’475, and Rouanet. Final Act. 8;
Answer 8.
DISCUSSION
Rejection 1. With the exception of claim 65, Appellants argue for the
reversal of the obviousness rejection to claims 46, 48—50, 52—62, 64, and 65
on the basis of limitations present in independent claims 46, 48, 50, and 56.
See Appeal Br. 4—17; Reply Br. 2—8. We select claim 46 as representative.
Accordingly, claims 48—50, 52—62, and 64 will stand or fall with claim 46.
37 C.F.R. §41.37(c)(l)(iv).
In rejecting claim 46, the Examiner found that Frank ’563 describes
each component of the claimed composition except, inter alia, that the
disclosed inorganic binder can be cement. Answer 3, 10-11.
2 The Examiner included claim 63 in Rejection 1. Final Act. 2; Answer 2.
Appellants, however, previously canceled this claim. Amendment (May 20,
2015); see also Appeal Br. 5.
3 US 6,887,563 B2, issued May 3, 2005.
4 US 2006/0125158 Al, published June 15, 2006.
5 US 6,080,475, issued June 27, 2000.
6 US 5,948,314, issued Sept. 7, 1999.
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The Examiner found that Frank ’475 discloses suitable inorganic
hydraulic binders, e.g., cement, lime, and gypsum, which produce high
strength composites that can be used in the building sector. Id. at 3 (citing
Frank ’475 3:24—32). Thus, the Examiner determined that it would have
been obvious for the ordinary skilled artisan to have modified Frank ’563’s
binder “in order to utilize suitable inorganic binders that would provide high
strength ... in the building sector.” Answer 3.
Appellants argue that the rejection of claim 46 should be reversed
because the Examiner has failed to establish a prima facie case of
obviousness. Appeal Br. 4. In particular, Appellants argue that (1) the
Examiner has not established that the applied prior art teaches or suggests
self-supporting rigid composites, id. at 7—9; (2) Frank ’475’s working
examples demonstrate that “articles prepared using inorganic binders . . .
have thermal conductivities significantly higher than the thermal
conductivities reported for [Frank ’563’s] composite materials prepared with
organic binders and fibers,” id. at 8; (3) the declaration of Dhaval D. Doshi,
one of the ’279 Application’s co-inventors, further supports that Appellants
“proceeded contrary to the accepted wisdom” and employed inorganic
“binders known to provide mechanical benefits at the expense of increased
thermal conductivity,” id. at 9; (4) JP HI0-152360 demonstrates that use of
an inorganic cement binder in a composition with aerogel “would not be
expected to result in thermal conductivities with values . . . below 26
mW/m-K,” Reply Br. 5: and (5) a chlorotrialkyl silane used to modify the
surface of a wet gel precursor during the preparation of a hydrophobic
aerogel cannot teach or suggest the claimed surfactant. Appeal Br. 21.
First, we are not persuaded by Appellants’ argument (1) because it is
well established that when claimed and prior art products are produced by
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Application 13/266,279
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product. In re Best, 562 F.2d 1252,
1256 (CCPA 1977). Appellants have not met this burden. The record
evidence is silent as to any persuasive technical reasoning or evidence
demonstrating that Frank ’563 ’s dried composition would not have the
properties of self-support and rigidity. Rather, we agree with the Examiner
that Frank ’563 teaches the dried composition in the form of panels, “which
are considered to be self-supporting and rigid [because] they must retain the
shape of a panel to be useful.” Answer 11; see, e.g., Frank ’563 7:23—25.
Second, Appellants’ arguments (2), (3), and (4) are not persuasive of
reversible error in the Examiner’s rejection. As the Examiner found, Frank
’563 teaches that the disclosed composition may contain an inorganic binder
and an aerogel “in an amount from 40—95% by volume[,] with the thermal
conductivity decreasing with greater volumetric percentages” of aerogel.
Answer 2 (citing Frank ’563 4:55—60; 5:5—10). The Examiner further found
that Frank ’563 teaches that the thermal conductivity of the composite
material is preferably in the range from 15 40 mW/(m-K). Answer 2—3
(citing Frank ’563 6:43 47). We agree with the Examiner’s determination
that “it would have been obvious to one of ordinary skill in the art... to
have chosen an amount [of aerogel component] and thermal conductivity
from the overlapping ranges.” Answer 3; see, e.g., In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (holding that a prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art).
In particular, Appellants’ arguments (2) and (3) are unpersuasive
because inorganic binders are not the sole cause for higher thermal
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conductivity in Frank ’475’s examples. These examples tested one aerogel
volume %, which was below the preferred 95 volume % maximum taught by
Frank ’563 for achieving low thermal conductivity and mechanical stability.
See Frank ’475 6:18—61; Frank ’563 4:53—59. We agree with the Examiner
that the ordinary skilled artisan would have recognized that thermal
conductivity results from a combination of variables, including higher
aerogel volume %, which can be adjusted to achieve the desired properties.
Answer 11. A person of ordinary skill in the art would have understood and
weighed this tradeoff in benefits. Winner Int 7 Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit,. . . should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”).
Likewise, Appellants’ argument (4) is similarly unpersuasive because
JP H10-152360’s composition comprising 48.5% by weight aerogel and
37% by weight inorganic binder increased the binder’s contribution to the
higher thermal conductivity of 236 mW/m-K. JP HI0-152360 1 13.
In contrast, the Specification provides that “[t]he thermal conductivity
of a self supporting rigid composite prepared from Acronal 10wt%,
Nanogel™ aerogel 50wt%, cement 15wt%, fibers 25wt% was 20.2 mW/(m
K).” Spec. 1134 (emphasis added).7
7 The Specification provides other indications that the binder’s contribution
to increased thermal conductivity must be tempered accordingly by
increasing the aerogel concentration. See, e.g., Spec. 152 (providing that
suitable ratios of aerogel to binder volume ratios include “ratios within the
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Although the applied prior art recognizes that “inorganic solids have
high thermal conductivity,” the same art provides that “inorganic binders
constitute an excellent basis for the production of shaped articles from
aerogel.” Frank ’475 1:10-11; 3:27—28. Thus, the ordinary skilled artisan
would have recognized that the combination of variables affecting thermal
conductivity and mechanical strength includes not only aerogel volume %,
but also the inorganic binder volume %. See Winner Int 7 Royalty Corp.,
202 F.3d at 1349 n.8. Thus, Appellants’ arguments are not persuasive that
JP HI0-152360 teaches away from a composition, comprising an aerogel
and inorganic cement binder, which is capable of providing thermal
conductivities below 26 mW/m-K. Reply Br. 5.
Third, we are not persuaded by Appellants’ argument (5). We note
that the subject matter of claim 46 is drawn to a composition comprising a
surfactant—limitations are silent with respect to any methods of
manufacture using chlorotrialkyl silane. “Many of appellant’s arguments
fail from the outset because,. . . they are not based on limitations appearing
in the claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
As the Examiner found, Frank ’563 does not disclose the claimed
surfactant, which could provide hydrophobic surface groups to an aerogel.
Answer 2—3. The Examiner further found Rouanet “teaches that a surfactant
should be used in order to obtain a homogenous distribution of aerogel
particles in an aqueous slurry.” Id. at 3 (citing Rouanet 125). The
Examiner correctly determined that it would have been obvious to combine
Rouanet’s surfactant, Frank ’563’s aerogel component, and Frank ’475’s
range of about 150 to about 5, preferably within the range of from about 150
to about 10, more preferably in the range of 90 to 30.”).
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cement slurry because “water is used in an inorganic hydraulic binder, and
thus surfactants would be essential to ensure a homogenous distribution of
the aerogel.” Answer 4. Thus, the Examiner has articulated an adequate
motivation to combine these teachings.
With respect to claim 65, Appellants separately argue that “the
references cited neither contemplate nor suggest the subject matter set forth
in claim 65.” Appeal Br. 17.
Claim 65 depends on claim 56, which requires that the binder is an
inorganic binder or an inorganic binder-containing formulation. Claim 65
further specifies that the binder is a grout formulation. The Specification
discloses that “[a] thin mortar, e.g., of cement, lime, or gypsum, often with
other ingredients such as sand and water .. . often is referred to as ‘grout’.”
Specification | 56. Accordingly, we agree with the Examiner’s implicit
construction that the inorganic binder-containing formulation of claim 56
encompasses the term “grout” recited in claim 65. The Examiner correctly
found that Frank ’475 discloses cement, lime, and gypsum as examples of a
suitable “inorganic binder” as recited in claim 56. Answer 6—7 (citing Frank
’475 3:24—32). Thus, it is immaterial that the Examiner has not provided
any finding that the prior art teaches or suggests an inorganic binder-
containing formulation. See Answer 8. Therefore, Appellants’ arguments
fail to identity reversible error in the Examiner’s determination that claim 65
is rendered obvious by the applied prior art.
In view of the foregoing, we affirm the Examiner’s rejection of
independent claim 46 and dependent claim 65. Thus, we also affirm the
rejection of claims 48—50, 52—62, and 64. 37 C.F.R. § 41.37(c)(l)(iv).
Rejection 2. The Examiner rejected claim 47 as unpatentable over
the combination of Geiss, Frank ’475, and Rouanet. Final Act. 8; Answer 8.
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The Examiner found, inter alia, that Geiss’ composition, which
exhibits a thermal conductivity of 35 mW/(m-K), teaches or suggests the
limitation “a thermal conductivity not greater than about 30 mW/(m-K)” as
recited in claim 47. See generally Answer 8—9.
When “about” is used as part of a numeric range, “the use of the word
‘about,’ avoids a strict numerical boundary to the specified parameter. Its
range must be interpreted in its technologic and stylistic context.” Pall
Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995).
In this instance, the Specification’s exemplified embodiments provide
thermal conductivity values no higher than 29.7 mW/(m-K). See, e.g., Spec.
Table VB, Example 10C. We note that the Examiner’s obviousness
determination is unsupported by any findings that Geiss’ compositions
provide a thermal conductivity not greater than 30.1 mW/(m- K). Therefore,
the Examiner’s finding that Geiss’ thermal conductivity of 35 mW/(m-K)
teaches or suggests the limitation at issue is erroneous.
In view of the foregoing, we reverse the Examiner’s rejection of claim
47.
CONCLUSION
For the reasons set forth above, we affirm the § 103(a) rejection of
claims 46, 48—50, 52—62, 64, and 65 of the ’279 Application. We reverse
the § 103(a) rejection of claim 47 of the ’279 Application.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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