Ex Parte Williams et al

Patent Trial and Appeal Board

Nov 27, 2012

12834225 (P.T.A.B. Nov. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/834,225 07/12/2010 Martha K. Williams KSC-12890-DIV 8074
25190 7590 11/28/2012
NASA JOHN F. KENNEDY SPACE CENTER
MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL
ATTN: PATENT COUNSEL
KENNEDY SPACE CENTER, FL 32899
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1761
MAIL DATE DELIVERY MODE
11/28/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte NATIONAL AERONAUTICS AND SPACE ADMINISTRATION
(Named inventors: Martha K. Williams, Trent M. Smith,
James E. Fesmire, Luke B. Roberson, and LeNetra M. Clayton)
____________________

Appeal 2011-012584
Application 12/834,416

Appeal 2011-013155
Application 12/834,225

Technology Center 1700
____________________

Before FRED E. McKELVEY, RICHARD TORCZON and DONNA M. PRAISS,
Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
Two related ex parte appeals are before the Board. 1
The real party in interest in both appeals is the United States of America as 2
represented by the Administrator of the National Aeronautics and Space 3
Administration. 4
Given the related nature of the subject matter involved in both appeals, we 5
exercise our discretion and consolidate the appeals for consideration and decision. 6
Appeal 2011-012584 (“Appeal 1”) 7
In Appeal 1, the real party in interest (NASA) seeks review under 35 U.S.C. 8
§ 134(a) of a final rejection dated 6 December 2010. 9
The application has been published as U.S. Patent Application Publication 10
2010/0279044 A1. 11
Appeal 2011-013155 (“Appeal 2”) 12
In Appeal 2, NASA seeks review under 35 U.S.C. § 134(a) of a final 13
rejection dated 8 December 2010. 14
The application has been published as U.S. Patent Application Publication 15
2010/0280171 A1. 16
Evidence cited by the Examiner 17
In support of prior art rejections, the Examiner relies on the following 18
evidence. 19

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Name

Identification

Date
Cited in final
rejection in
appeal number
Talcott U.S. Patent 3,006,878 31 Oct. 1961 1 and 2
Scopp et al.
“Scopp”
U.S. Patent 3,324,060 6 Jun. 1967 1 and 2
Parrish U.S. Patent 3,584,090 8 Jun. 1971 1 and 2
Ristic-Lehmann
et al.
“Ristic-Lehmann”
U.S. Patent Application
Publication
2005/0100728 A1

12 May 2005

2
Schwertfeger et al.
“Schwertfeger” or
“Hoechst Research
and Technology”
International Published
Application
WO 98/07780

26 Feb. 1998

2
Hogan et al.
“Hogan” or “Aspen
Aerogels”
International Published
Application
WO 2006/024010 A2

2 Mar. 2006

2

NASA does not contest the prior art status of the evidence relied upon by the 1
Examiner. 2
The inventions 3
The inventions are readily understandable from the subject matter claimed. 4
In Appeal 1, Claims 1-13 are on appeal. Appeal 1 Brief, page 3; Answer, 5
page 2. 6
In Appeal 2, Claims 1-3 and 5-6 are on appeal. Appeal 2 Brief, page 3; 7
Answer, page 2. 8
The following claims are reproduced from the Claims Appendices in the 9
Appeal Briefs before us. 10

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Appeal 1 Claim 1 1
Appeal 1 Claim 1 reads [bracketed matter and some indentation added, some 2
of limitations in dispute in italics]: 3
An article of manufacture comprising: 4
a composite material comprising 5
(a) an aerogel blended with 6
(b) a thermoplastic polymer material; 7
wherein the weight ratio of the aerogel to thermoplastic 8
polymer in the composite material is less than 20:100; and 9
wherein the composite material 10
[1] has a thermal conductivity less than 75% of the thermal 11
conductivity of the thermoplastic polymer material [without any 12
aerogel] and 13
[2] has a yield strength that differs by no more than 15% from 14
the yield strength of the thermoplastic polymer material [without any 15
aerogel]; 16
wherein the article is a seal, gasket, pipe, tube, or container for 17
transporting or containing fluids or gases and is adapted for use at 18
temperatures greater than 100ºC. 19

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Appeal 2 Claim 1 1
Appeal 2 Claim 1 reads [bracketed matter and some indentation added, some 2
of limitations in dispute in italics]: 3
A method of improving the thermal insulation property of a 4
thermoplastic polymer material without impairing its strength 5
comprising: 6
blending an aerogel with the thermoplastic polymer material to 7
generate [i.e., to make] a composite material 8
[1] having a thermal conductivity that is less that 75% of the 9
thermal conductivity of the thermoplastic polymer material [without 10
any aerogel] and 11
[2] having a yield strength that differs by no more than 15% 12
from the yield strength of the thermoplastic polymer material [without 13
any aerogel]. 14
Appeal 2 Claim 5 15
Appeal 2 Claim 5 reads [bracketed matter and some indentation added, some 16
of limitations in dispute in italics]: 17
A method of manufacturing an article comprising: 18
[1] incorporating a composite material into an article of 19
manufacture; 20
[2] wherein the composite material comprises 21
(a) an aerogel blended with 22

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(b) a thermoplastic polymer material; wherein the weight 1
ratio of the aerogel to thermoplastic polymer in the composite material 2
is less than 20:100; 3
[3] wherein the article of manufacture is adapted for use at 4
temperatures less than -50ºC. 5
Rejections 6
The following rejections have been maintained in the Answers. 7
Appeal 1 rejections 8
Rejection 1: Appeal 1 Claims 1-13 stand rejected under § 112 as being 9
non-enabled. Appeal 1 Answer, page 3. 10
Rejection 2: Appeal 1 Claims 1-13 stand rejected under § 112 as being 11
indefinite. Appeal 1 Answer, page 4. 12
Rejection 3: Appeal 1 Claims 1-13 stand rejected under § 102 and § 103(a) 13
as being unpatentable over Talcott. Appeal 1 Answer, pages 4-5. 14
Rejection 4: Appeal Claims 1-13 stand rejected under § 102 and § 103(a) as 15
being unpatentable over Scopp. Appeal 1 Answer, pages 4-5. 16
Rejection 5: Appeal Claims 1-13 stand rejected under § 102 and § 103(a) as 17
being unpatentable over Parrish. Appeal 1 Answer, pages 4-5. 18
Appeal 2 rejections 19
Rejection 6. Appeal 2 Claim 5 stands rejected under § 112 as being 20
non-enabled. Appeal 2 Answer, page 4. 21
Rejection 7. Appeal 2 Claim 5 stands rejected under § 112 as being 22
indefinite. Appeal 2 Answer, page 4. 23

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Rejection 8. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 1
§ 103(a) as being unpatentable over Talcott. Appeal 2 Answer, pages 5-6. 2
Rejection 9. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 3
§ 103(a) as being unpatentable over Scopp. Appeal 2 Answer, pages 5-6. 4
Rejection 10. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 5
§ 103(a) as being unpatentable over Parrish. Appeal 2 Answer, pages 5-6. 6
Rejection 11. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 7
§ 103(a) as being unpatentable over Ristic-Lehmann. Appeal 2 Answer, pages 5-6. 8
Rejection 12. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 9
§ 103(a) as being unpatentable over Hoechst Research and Technology 10
WO 98/07780 (Schwertfeger). Appeal 2 Answer, pages 5-6. 11
Rejection 13. Appeal 2 Claims 1-3 and 5-6 stand rejected under § 102 and 12
§ 103(a) as being unpatentable over Aspen Aerogels WO 2006/024010 (Hogan). 13
Appeal 2 Answer, pages 5-6. 14
Analysis 15
Rejections 1-2 and 6-7 16
The Examiner determined that the “adapted” presents both an enablement 17
and indefiniteness problem. 18
Based on a dictionary definition, the Examiner found that “adapt” means to 19
adjust. Appeal 1 Answer, page 3; Appeal 2 Answer, page 4. The Examiner was 20
unable to find a description of the nature of any adjustment in the specifications. 21
As a result, the Examiner entered lack of enablement and indefiniteness rejections. 22
However, the Examiner observed that the term “adapted for” in the claims 23
on appeal “is used by the claim[s] to mean ‘suitable for’ . . . .” Appeal 1 Answer, 24

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page 4; Appeal 2 Answer, page 5. The Examiner reasons that the meaning as used 1
in the claims departs from the dictionary definition of “adapted for” and therefore 2
NASA is acting as its own lexicographer. According to the Examiner, NASA was 3
under a burden to define the term in its specifications. 4
NASA responded to the Examiner by pointing to another dictionary 5
definition that defines “adapt” as “[t]o make suitable for a specific use or 6
situation.” Appeal 1 Brief, page 8. 7
We agree with NASA that there is not an enablement or indefiniteness 8
problem with the use of “adapted” in the claims before us. NASA’s use is 9
consistent with a dictionary definition and in the context of the specifications as a 10
whole. Accordingly, there is no need to define “adapt” in the specifications. 11
Moreover, the Examiner understood that NASA intended “adapted for” to mean 12
“suitable for”. The Examiner’s understanding is consistent with the NASA’s 13
stated use of “adapted for”. We doubt any person skilled in the art would fail to 14
understand the meaning of the disputed term. 15
We do not find it necessary to reach NASA’s additional arguments based on 16
(1) the number of patents which are said to use the term and (2) cited judicial 17
precedent said to have approved the use of the disputed term. 18
Rejections 1-2 and 6-7 are reversed. 19
Rejections 3 and 8 (Talcott) 20
The Examiner found that Talcott describes 21
(1) silica aerogels and xerogels (col. 4:8); 22
(2) siloxane polymers (col. 4:20-23); and 23

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(3) use of mixture of aerogels and siloxane polymers as hoses and 1
seals (col. 4:33). Appeal 1 Answer, page 4. 2
NASA does not dispute the Examiner findings. Rather, NASA maintains 3
that the polysiloxanes described by Talcott are not “thermoplastic” polymers. 4
According to NASA, the Talcott polysiloxanes are “thermosetting” polymers. See, 5
e.g., Appeal 1 Brief, page 9. 6
In support of its position, NASA relies on the Rule 132 testimony of 7
inventor Trent M. Smith. Mr. Smith explains that a thermoplastic polymer softens 8
and melts when heated, and becomes solid again when cooled. Smith Declaration, 9
¶ 7. Mr. Smith further explains that “[a] thermosetting polymer, in contrast, 10
hardens or cures irreversibly when heated, and remains solid when heated and 11
cooled.” Declaration, ¶ 7. Mr. Smith still further explains that polysiloxanes are 12
usually thermosetting polymers. According to Mr. Smith, the polysiloxanes 13
described by Talcott “would behave as a thermosetting polymer, not a 14
thermoplastic polymer.” Declaration, ¶ 8. The Talcott polysiloxanes would either 15
cross-link or cyclize. Declaration, ¶ 8. While not explained in his testimony, 16
cross-linking could occur through hydroxyl groups on the polysiloxane and a 17
cross-linked polysiloxane would not have thermoplastic properties. Mr. Smith also 18
observes, correctly, that the Talcott compositions are heat cured. Declaration, ¶ 9; 19
Talcott, col. 4:66. Moreover, we note that the Talcott compositions are vulcanized. 20
Col. 4:32-36. 21
The Examiner relies on the fact that Talcott describes compositions which 22
can be, but are not yet, vulcanized. See, e.g., Appeal 1 Answer, page 6. However, 23

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the Examiner has not explained how the unvulcanized Talcott compositions would 1
be expected to have the properties set out in the claims on appeal. 2
The Examiner also observes that one of the thermoplastic polymers set out 3
in the Specification and said to be suitable for NASA’s purpose are 4
“polysilicones”. See, e.g., Appeal 1 Specification, page 10, ¶ 0045. The 5
Examiner’s observation does not appear to have been made earlier in the 6
prosecution and prior to the Answers. NASA could not have been expected to 7
address an argument not made prior to the filing of the briefs. NASA did not file a 8
reply. However, it is not apparent how evidence responding to the Examiner’s 9
observation could have been presented with a reply. We will note that 10
thermoplastic polysiloxane resins are known. However, in general they are 11
copolymers comprising siloxane repeating units and other monomer repeating 12
units. See, e.g., Bargain et al., U.S. Patent 4,145,508, structures in col. 3, and 13
Bargain et al., U.S. Patent 4,233,427, structures in cols. 9-10. A “polysiloxane” 14
can be thermoplastic or thermosetting. A preponderance of the evidence in this 15
case is that the Talcott polysiloxanes are thermosetting. 16
Rejections 3 and 8 are reversed. 17
Rejection 11 (Ristic-Lehmann) 18
The Examiner found that Ristic-Lehmann describes the combination of an 19
aerogel and PTFE [polytetrafluoroethylene] in a composite with its thermal 20
conductivity in claim 1. Appeal 2 Answer, page 5. 21
Ristic-Lehmann Claim 1 reads [bracketed matter added]: 22
A material comprising 23
[1] aerogel particles and 24

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[2] a polytetrafluoroethylene (PTFE) binder 1
[3] wherein the material has a thermal conductivity of less than 2
or equal to 25 mW/mK at atmospheric conditions. 3
NASA appeals the rejection presenting several arguments. 4
First, NASA argues that Ristic-Lehmann does not describe any intent to 5
achieve the objectives of Appeal 2 Claim 1. Appeal 2 Brief, page 14. The avowed 6
purpose of an applicant does not need to be described in a reference. KSR Int’l Co. 7
v. Teleflex Inc., 550 U.S. 398, 419 (2007) (§ 103); In re Thuau, 135 F.2d 344 8
(CCPA 1943) (§ 102; old compound does not become patentable due to discovery 9
of new property). NASA’s first argument is not convincing. 10
Second, it is also argued that PTFE is not one of the polymers described as 11
suitable in the NASA Specification. NASA, however, does not deny that PTFE is 12
a thermoplastic polymer. NASA’s second argument is not convincing. 13
Third, it is argued that there is no reason to expect that the Ristic-Lehmann 14
compositions would have the claimed properties. The Examiner’s response is that 15
it is up to NASA to show that the Ristic-Lehmann composition does not have the 16
same properties, citing In re Best, 562 F.2d 1252 (CCPA 1977), and In re Spada, 17
911 F.2d 705 (Fed. Cir. 1990). NASA replies that the Examiner “has not cited any 18
specific material in the prior art . . . .” Appeal 2 Brief, page 15. We agree with 19
NASA because the Examiner has not pointed to a description in Ristic-Lehmann 20
where the proportions of ingredients are such as to expect NASA’s properties. The 21
NASA Specification describes a preferred aerogel to polymer ratio of 15:100 or 22
less. The working examples of the NASA Specification where the claimed 23
properties are obtained all use a ratio falling within the 15:100 or less ratio. On the 24

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other hand, Ristic-Lehmann describes an aerogel to PTFE ratio of 1:1 or higher. 1
See, e.g., ¶ 0011 and ¶ 0029. In order to invoke the Best/Spada practice it must 2
appear that the claimed subject matter and the subject matter described in the 3
reference is the same (Best) or very similar (Spada). In this case, the Examiner has 4
not established that Ristic-Lehmann describes any proportions which would 5
achieve the properties claimed by NASA. 6
Rejection 11 is reversed. 7
Rejection 12 (Hoechst Research and 8
Technology WO 98/07780 or Schwertfeger) 9
The Examiner found that Schwertfeger describes a composite comprising 10
an aerogel and plastics and their concentrations in the Abstract and polymers in 11
claim 5. Appeal 2 Answer, page 5. 12
Schwertfeger is written in German and no translation has been called to our 13
attention. 14
The Schwertfeger English Abstract describes “[a] transparent composite 15
product containing 5 to 97 vol.- % transparent and translucid aerogel particles and 16
at least one transparent or translucid plastic material . . . .” No thermoplastic 17
polymer is described in the English version of the Schwertfeger Abstract. 18
No member of the panel is sufficiently knowledgeable with the German 19
language so as to feel comfortable undertaking an analysis of the reference and 20
what might be described therein. German language Claim 5 referred to by the 21
Examiner mentions “Polymethylmethacrylat”, “Cycloolefin-Copolymer”, 22
“Polyvinylbutyral”, “polycarbonate” and “Polyethyleneterephthalat”, some of 23

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which may well be thermoplastic polymers. But we are unable to understand the 1
context in which these polymers are being described. 2
When a foreign language document is relied upon by an examiner, a 3
translation is to be obtained. MPEP § 706.02 (see II. Reliance upon abstracts and 4
foreign language documents in support of a rejection) (8th ed. Rev. 8-2012). 5
NASA has noted the absence of a translation. Appeal 2 Brief, page 14. 6
There are two shortcomings in the Examiner’s rejection. First, there is a 7
procedural failure to provide a translation. Second, there is a merits failure to 8
establish where the claimed subject matter is anticipated (§ 102) or how the 9
reference renders the claims unpatentable (§ 103). 10
Rejection 12 is reversed. Nothing said in this opinion should be taken as 11
precluding the Examiner from making a rejection in the future based on a 12
translation of Schwertfeger. 13
Rejection 13 (Aspen Aerogels or Hogan). 14
The Examiner found that Aspen Aerogels (Hogan) describes an 15
encapsulated aerogel in claim 1, a composite in claim 4, polymers and elastomers 16
in claims 22-23, and thermal conductivity in claim 30. A list of polymeric 17
reinforcing fibers is said to be described from page 8:16 to page 9:8. Appeal 2 18
Answer, page 5. 19
NASA argues that Aspen Aerogels (Hogan) does not anticipate the claims. 20
According to NASA, the combination of materials described by Aspen Aerogels 21
(Hogan) is not identical or substantially identical to the claimed materials. 22
The Examiner has pointed to various parts of a reference. But the pertinence 23
of each part of the reference to which the Examiner refers is not readily apparent. 24

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NASA certainly had some difficulty addressing the Examiner’s rejection and so 1
have we. See 37 CFR § 1.104(b)(2). We have not been able to discern a credible 2
basis for either a § 102 rejection or a § 103 rejection. 3
Rejection 13 is reversed. Nothing said in this opinion should be taken as 4
precluding the Examiner from pursuing a further rejection based on Aspen 5
Aerogels (Hogan) accompanied by a more detailed analysis of relevant portions of 6
the reference and an explanation as to why those portions render the claimed 7
invention unpatentable over the prior art. 8
Rejections 4-5 and 9-10 (Scopp and Parrish) 9
Scope and content of Scopp 10
The Examiner found that Scopp teaches gaskets (col. 1:19) made from a 11
composition comprising a polyolefin and silica aerogels (col. 2:35-56). The 12
concentration of polyolefin to aerogels is said to be set out in Scopp Claims 1 13
and 4. 14
In light of NASA’s arguments, we find it necessary to more fully address the 15
content of Scopp. As noted by the Examiner, Scopp describes a composition 16
comprising a combination of a polyolefin and silica aerogels. The polyolefin is 17
described as being “relatively insoluble, high molecular weight polyolefins such as 18
high density, Ziegler-type polyethylene or polypropylene.” Col. 2:58 to col. 3:63. 19
The density of the polyolefin is described as being at least about 0.92 (in 20
grams/cubic centimeter). Col. 2:68. The molecular weight is said to be in excess 21
of about 30,000. Col. 2:69. The crystalline melt point is about 135ºC or higher. 22
Col. 2:70. Embodiments describe the use of a “Ziegler process high density 23
‘Hi-Fax’ brand polyethylene (PE).” Col. 4:44-45. The aerogels are described at 24

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col. 2:35-56. We are unable to discern any difference between the aerogels 1
described by Scopp and those claimed. 2
According to NASA’s Specification, suitable thermoplastic polymers 3
include “polyolefins, e.g., HDPE [high density polyethylene], PP [polypropylene], 4
Mitsui TPX [which we understand to be polymethylpentene] or PMP [which we 5
also understand to be polymethylpentene], VERSIFY [which we understand to be 6
ethylene-propylene copolymers], or CRYSTALOR” [which we understand to be 7
polymethylpentene resins]. Appeal 1 Specification, page 10, ¶ 0045. 8
VERSIFY 2300 is described as an extrusion grade specialty propylene-9
ethylene copolymer. Appeal 1 Specification, page 19, ¶ 0092. 10
Scopp also includes in its composition an antistatic agent, e.g., TTAM that 11
may be tallow trimethyl ammonium chloride. Col. 4:15. NASA’s compositions 12
“may include other components”. Appeal 1 Specification, page 5, ¶ 0020:3. See 13
also page 16, ¶ 0078. 14
Scopp Claim 6 reads [bracketed matter added]: 15
As a new composition of matter, a uniform mixture comprising 16
[1] 20 to 400 parts by weight of a tough polyolefin, [2] 1 part by 17
weight of a quaternary ammonium salt of a C12 to C22 fatty acid and 18
[3] 0.5 to 1 part by weight of finely divided silica aerogel having a 19
surface area of about 110 to 150 square meters per gram. 20
The Scopp invention is described in the context of making useful articles 21
such as bottles or equipment parts, i.e., gaskets from a thermoplastic resin. 22
Col. 1:18-19. NASA’s composition may also be used to make gaskets. Appeal 1 23
Specification, page 16, ¶ 0082. 24

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Scope and content of Parrish 1
Parrish relates to ultramicrocellular structures. Col. 1:37. 2
The structures include a thermoplastic resin. Suitable resins are said to 3
include inter alia (1) linear polyethylene, (2) stereo-regular polypropylene or 4
polystyrene, (3) polyamides (both aliphatic and aromatic), (4) polyurethanes, and 5
(5) polyesters. Col. 8:40-54. NASA also describes the use of these polymers. 6
Appeal 1 Specification, page 10, ¶ 0045-0046. 7
In several examples, Parrish describes a combination of a polyolefin and a 8
silica aerogel. 9
Example IV describes the combination of 1000 grams of polypropylene 10
having a melt flow rate of 4 at 230C and 5 grams of silica aerogel. A ratio 11
of 5:1000 falls within the claimed ratio of aerogel to thermoplastic polymer. 12
Example VII describes a composition made from polypropylene having the 13
same melt flow rate containing 2% by weight silica aerogel. The amount of silica 14
aerogel falls within the claimed aerogel:polymer ratio. 15
Example IX describes a composition made from polypropylene 16
having 1% silica aerogel. The amount of silica aerogel falls within the claimed 17
aerogel:polymer ratio. 18
The Parrish compositions are said to be useful to form tubes. Col. 13:28-30. 19
NASA’s compositions are also said to be useful for forming tubes. Appeal 1 20
Specification, page 16, ¶ 0083. 21

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Discussion 1
The Examiner found that Scopp and Parrish describe compositions that 2
include essentially the same ingredients as those claimed. We would add that the 3
proportions of aerogel to thermoplastic polymer are essentially the same. 4
Under the circumstances, we agree with the Examiner that the burden 5
shifting principles of Best/Spada apply. 6
NASA argues that Scopp and Parrish do not describe articles having the 7
claimed properties. Appeal 1 Brief, pages 13-14. However, the fact that Scopp 8
and Parrish do not describe NASA’s claimed properties does not mean that the 9
Scopp and Parrish compositions fail to have those properties. 10
In order to avoid the burden shifting principles of Best/Spada, NASA calls 11
our attention to data in the specifications based on data said to have been obtained 12
by testing VERSIFY 2300. Appeal 1 Brief, pages 13-14. VERSIFY 2300 is said 13
to be an olefin polymer, i.e., an ethylene-propylene copolymer. According to 14
NASA, the experiment based on VERSIFY 2300 did not achieve the claimed 15
properties. Apparently because VERSIFY 2300 did not achieve the claimed 16
properties, NASA seemingly argues that it need not compare the Scopp/Parrish 17
materials to the claimed materials. 18
We have some difficulty understanding the basis for NASA’s position. We 19
start with the proposition that the NASA specifications are enabling. Both 20
specifications reveal that polyolefins can be used for NASA’s purpose. Hence, we 21
will assume at this time that one skilled in the art would have been able to make a 22
polyolefin article having NASA’s claimed properties. If our assumption is not 23
correct, then NASA has an enablement problem, at least to the extent that the 24

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claims cover articles made from a polyolefin. We will additionally note that 1
because VERSIFY 2300 cannot be used to make NASA’s articles does not 2
establish that the Scopp/Parrish compositions likewise cannot be used or that the 3
Scopp/Parrish compositions fall outside the scope of the claimed articles (or the 4
articles made by the process of Appeal 2). 5
A Best/Spada test should not be that difficult. Scopp and Parrish describe in 6
their respective examples polyolefins having certain properties. The aerogels are 7
also fairly well defined. NASA should have minimal difficulty making the 8
compositions of the Scopp/Parrish examples identified above. Likewise, we 9
assume that NASA would have no difficulty making an article from a polyolefin 10
also having the claimed properties. 11
Appeal 1 Claims 5 and 10 call for articles made from nylon. None of the 12
Appeal 2 claims are limited to a process of using nylon. Insofar as we can tell, 13
Scopp does not describe the use of nylon. The Examiner has not articulated a 14
reason why Claims 5 and 10 would be unpatentable over Scopp. 15
Parrish, on the other hand, describes the use of aliphatic and aromatic 16
polyamides. Nylon is an aliphatic polyamide. Hence, we find that Parrish—unlike 17
Scopp—suggests the use of nylon. 18
Disposition of Rejections 4-5 and 9-10 19
Rejection 4 is affirmed as to Appeal 1 Claims 1-4, 6-9, and 11-13 and is 20
reversed as to Appeal 1 Claims 5 and 10. 21
Rejection 5 is affirmed. 22
Rejection 9 is affirmed. 23
Rejection 10 is affirmed. 24

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Decision 1
Upon consideration of the appeal, and for the reasons given herein, it is 2
ORDERED that the decision of the Examiner rejecting Appeal 1 3
Claims 1-13 and Appeal 2 Claims 1-3 and 5-6 over Parrish is affirmed. 4
FURTHER ORDERED that the decision of the Examiner rejecting 5
Appeal 1 Claims 1-4, 6-9, and 11-13 over Scopp is affirmed. 6
FURTHER ORDERED that decisions of the Examiner rejecting 7
Appeal 1 and Appeal 2 claims on appeal are otherwise reversed. 8
FURTHER ORDERED that since we have provided different analysis 9
of the prior art and have answered some arguments made by NASA which were 10
not answered by the Examiner, our affirmance is designated as a new rejection. 11
37 CFR § 41.50(b). 12
FURTHER ORDERED that our decision is not a final agency action. 13
FURTHER ORDERED that within two (2) months from the date of 14
our decision, appellant may further prosecute the application on appeal by 15
exercising one of the two following options: 16
Option 1: Request that prosecution be reopened by submitting 17
an amendment or evidence or both. 37 CFR § 41.50(b)(1). 18
Option 2: Request rehearing on the record presently before the 19
Board. 37 CFR § 41.50(b)(2). 20
FURTHER ORDERED that no time period for taking any subsequent 21
action in connection with this appeal may be extended under 37 CFR 22
§ 1.136(a)(1)(iv). 23
AFFIRMED 24

Appeal 2011-012584 (application 12/834,416)
Appeal 2011-013155 (application 12/834,225)

20

37 C.F.R. § 41.50(b) 1
2
bar 3