Lawrence Livermore National Security, LLC

Patent Trials and Appeals Board

Dec 20, 2021

2021000374 (P.T.A.B. Dec. 20, 2021)

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.
15/208,506 07/12/2016 Swetha Chandrasekaran LLNLP151/IL-13093 9619
78980 7590 12/20/2021
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
SALVITTI, MICHAEL A
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
12/20/2021 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SWETHA CHANDRASEKARAN,
THEODORE F. BAUMANN, JUERGEN BIENER,
PATRICK CAMPBELL, JAMES S. OAKDALE, and
MARCUS A. WORSLEY1
____________

Appeal 2021-000374
Application 15/208,506
Technology Center 1700
____________

Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12–25. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM IN PART.
BACKGROUND
The subject matter on appeal relates to aerogels. E.g., Spec. ¶ 2;
Claim 12. Claim 12 is reproduced below from page 37 (Claims Appendix)

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Lawrence Livermore National Security, LLC. Appeal Br. 2.
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of the Appeal Brief:
12. A product, comprising:
an aerogel having inner channels corresponding to outer walls of
a three-dimensional printed template around which the aerogel
was formed.
REJECTIONS ON APPEAL
The claims stand rejected as follows:
1. Claim 21 under 35 U.S.C. § 112(b) as indefinite.
2. Claims 12, 13, and 15–25 under 35 U.S.C. § 102(a)(1) as
anticipated by Baumann (Baumann et al., Template-directed synthesis of
periodic macroporous organic and carbon aerogels, 350 J. Non-Crystalline
Solids 120 (2004)).
3. Claims 12–25 under 35 U.S.C. § 103 as unpatentable over
Baumann and Uram (US 2014/0339745 A1, published Nov. 20, 2014).
ANALYSIS
Rejection 1
A claim is indefinite under 35 U.S.C. § 112(b) when it contains words
or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1309
(Fed. Cir. 2014). The Examiner determines:
Claim 21 is indefinite because the limitation “predefined gradient
of density” cannot be determined. This limitation exists in the
mind of the inventor, and can be argued to be whatever applicant
wants it to be. It is not definite whether a gradient of density is
required at all, because the inventor could think of a predefined
gradient of zero in his mind and it would meet the claimed
limitation without changing the claimed composition of matter.
Final Act. 3.
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The Appellant argues that “a gradient of density . . . is a structural
characteristic that is clearly measurable,” and therefore does not “exist[]
only in the mind.” Appeal Br. 36. The Appellant asserts that a person of
ordinary skill would have understood that a gradient of density is “a spatial
variation of density over an area.” Id. The Appellant cites Figures 6A–D of
the Specification of exemplifying a predefined gradient of density. Id.
In the Answer, the Examiner maintains the rejection because
“‘predefined gradient of density’ is not limited in the instant specification
allowing the appellant to argue whatever he wants it to mean. . . .
‘Predefined’ could be any number.” Ans. 10, 17.
The Examiner’s reasoning is unpersuasive. Although it is true that the
claim does not specify a numerical value for the gradient of density, and is
therefore broad, that does not render the term indefinite. See In re Miller,
441 F.2d 689, 693 (CCPA 1971) (“[B]readth is not to be equated with
indefiniteness.”). The Examiner does not dispute the Appellant’s assertion
that a person of ordinary skill would have understood a “gradient of density”
to be “a spatial variation of density over an area.” Appeal Br. 36. That
understanding of the term is consistent both with the plain and ordinary
meaning of the word “gradient,” e.g., https://www.dictionary.com/
browse/gradient (“a measure of the change of some physical quantity . . .
over a specified distance”), and with how the Specification uses the term
“gradient of density,” e.g., Spec. 2 (“This may be used to design a gradient
of density, for example, by increasing the spacing between structural
elements the density may be changed from high to low.”).
The Examiner essentially applies a per se rule that the word
“predefined” renders a claim indefinite unless the predefined value is
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specified in the claim. One definition of “predefined” is “defined in
advance.” https://www.merriam-webster.com/dictionary/predefined. In
combination with the term “gradient of density,” the disputed term as a
whole simply means that the aerogel has a gradient of density that has been
predefined, i.e., defined in advance. In other words, the aerogel has a
gradient of density that has been preselected or “predefined,” rather than, for
example, a gradient of density that may arise randomly from a particular
manufacturing process.
We find unpersuasive the Examiner’s statement that it is unclear
“whether a gradient of density is required at all, because the inventor could
think of a predefined gradient of zero.” Final Act. 3. Claim 21 expressly
requires “a predefined gradient of density.” As the Examiner notes, a
gradient density of zero is effectively not a gradient at all. See id. Because
the claim requires a “gradient of density,” the plain language of the claim
requires an actual gradient of density, i.e., that the gradient be nonzero.
In summary, the Examiner has not adequately established that a
person of ordinary skill in the art would have been unable to understand the
scope of the term “predefined gradient of density.” We reverse the
Examiner’s § 112(b) rejection of claim 21.
Rejection 2
The Appellant presents separate arguments as to claims 12, 18, 19, 21,
and 24. We address those claims below. The remaining claims subject to
Rejection 2 will stand or fall with claim 12, from which they depend.
Claim 12. The Examiner finds that Baumann anticipates claim 12.
Final Act. 4. Of particular relevance to the arguments raised by the
Appellant, the Examiner finds that Baumann’s interconnected spherical
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voids fall within the scope of the term “inner channels” “because no precise
definition (e.g. depth or size) is assigned to the term channel,” and because
Baumann itself considers its voids “to be channels.” Id. The Examiner also
determines that the recitation “corresponding to outer walls of a three-
dimensional printed template around which the aerogel was formed” is a
product-by-process limitation, and that “the method of 3D printing a
template from which the aerogel is made does not necessarily further limit
the aerogel itself.” Id. The Examiner acknowledges that Baumann “does
not teach the method step of 3D printing the template,” but finds that such
difference does not cause Baumann’s aerogel to fall beyond the scope of
claim 12 because “the template itself can be made by other routine means
(molding, lithography) to arrive at a template having substantially identical
structure as a 3D printed template.” Id.
The Appellant argues that claim 12 does not include process
recitations, but that, even if it does, they imply a certain structure that cannot
be disregarded. Appeal Br. 9–10. The Appellant also argues that Baumann
“does not disclose a three dimensional printed template” (emphasis in
original), and that Baumann does not disclose “inner channels corresponding
to outer walls” because Baumann’s “template” consists of polystyrene
spheres, which “are distinct from the claimed three-dimensional printed
template.” Appeal Br. 7.
Those arguments are not persuasive of reversible error in the
Examiner’s rejection. We agree with the Examiner that claim 12 includes
product-by-process recitations. In particular, the recitation that the aerogel’s
inner channels “correspond to outer walls of a three-dimensional printed
template around which the aerogel was formed” is process recitation in that
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it states a process by which the product, i.e., the aerogel, is formed (around a
3D printed template). Whether the template is 3D printed or formed by
some other process does not limit the scope of the claimed product absent a
showing that a 3D printed template yields an aerogel product that is
structurally different from an aerogel formed from an equivalent template
made by a non-printing method. See, e.g., In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).
In this case, there is no dispute that Baumann discloses aerogels that
include interconnected voids formed by non-printed polystyrene spheres.
Nor is there any dispute that claim 12 does not specify any particular shape
or dimensions for its channels. Nor does there appear to be any meaningful
dispute that Baumann’s interconnected voids constitute “channels” within
the plain and ordinary meaning of the term “channel.” The Appellant itself
refers to Baumann’s interconnected voids as “channels.” Appeal Br. 9. Like
the Appellant’s own Specification, Baumann discloses that these
interconnected voids or channels are useful for mass transport applications
and other applications such as “catalysis, separation technology, energy
storage and conversion, photonic crystals, and nanoelectronics.” Compare
Baumann at 120, 124, with Spec. ¶¶ 34, 56 (identifying mass transport,
energy storage, and catalyst applications). Finally, there does not appear to
be any meaningful dispute that Baumann’s interconnected spherical voids,
i.e., channels, correspond to the outer walls of the template around which the
aerogel is formed, i.e., the outer walls of the polystyrene spheres. See, e.g.,
Baumann at Abstr. (describing forming an aerogel by depositing a sol-gel
solution over a polystyrene-sphere template). The Appellant has not argued
that the outer surfaces of Baumann’s polystyrene spheres fail to constitute
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“walls” simply because they are spherical rather than, e.g., rectangular in
shape.
The central point of dispute is whether the fact that Baumann’s
polystyrene spheres are not disclosed as being 3D printed causes Baumann’s
aerogel to fall beyond the scope of claim 12. In view of our product-by-
process claim interpretation discussed above, the answer to that question is
no: That Baumann’s polystyrene spheres may not be 3D printed does not
cause Baumann’s aerogel to fall beyond the scope of claim 12.
The Appellant argues that “Baumann’s channels are derived
randomly” because Baumann’s spherical voids are interconnected only by
“incidental space created between adjacent PS sphere templates that happen
to touch during aerogel preparation. Baumann’s interconnections are not
defined but rather occur randomly.” Appeal Br. 9. That fails to indicate
reversible error in the Examiner’s rejection, however, because claim 12 does
not preclude such formation of channels. As described above, the record
supports the Examiner’s determination that Baumann’s aerogel has inner
channels (i.e., interconnected spherical voids useful, for example, for mass
transport through the aerogel) corresponding to outer walls of a template
(i.e., array of polystyrene spheres). That the interconnectedness of the
spherical voids may possess some degree of randomness does not cause
Baumann’s aerogel to fall beyond the scope of claim 12.
We have carefully considered the Appellant’s arguments concerning
claim 12, but we are not persuaded of reversible error in the Examiner’s
rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . .”).
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Claim 18. Claim 18 depends from claim 12 and recites, “wherein the
template is created using a photo-activated resist.” Appeal Br. 38 (Claims
Appendix).
The Examiner determines that the material from which the template is
made is not limiting of the aerogel itself absent a showing that the material
imparts a structural difference to the aerogel. Final Act. 5.
The Appellant argues that the material from which the template is
created implies structural characteristics, “such as, for example, channels
corresponding to a millimeter-sized 3D template with sub-micron
resolution.” Appeal Br. 12. The Appellant acknowledges, however, that
“claim 18 does not expressly require” any such features. Id. The Appellant
also argues that the rejection “must rely on an assumption that a skilled
artisan reading Baumann would be able to create [Baumann’s] polystyrene
spheres ‘using a photo-activated resist,’ as recited in claim 18.” Id. at 13.
Those arguments are unpersuasive. As explained above, the method
by which (3D printing or otherwise), and the material from which, the
template is made limit the resulting aerogel only to the extent that they imply
a structure that is different from the structure of the aerogel formed by the
prior art. Although the Appellant acknowledges that the claims do not
include any express recitations concerning shapes or sizes of channels, the
Appellant suggests that the recited material (photo-activated resist) implies a
negative limitation excluding Baumann’s interconnected spheres from the
scope of claim 18 because a photo-activated resist material “does not lend
itself to creating spheres.” Id. at 12–13. However, the Appellant provides
no evidence that the recited material somehow implicitly excludes
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Baumann’s spherical channels. “Attorney’s argument in a brief cannot take
the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 18.
Claim 19. Claim 19 depends from claim 12 and recites, “wherein at
least some of the channels have straight longitudinal axes of at least 1
micron in length.” Appeal Br. 38 (Claims Appendix).
The Examiner finds that, because Baumann “states that particles
having a size of 1 micron are used . . . [t]hese particles create voids/channels
upon removal,” and “[i]nterconnectedness of 1 micron voids creates
channels having a sizer greater than 1 micron.” Final Act. 5.
The Appellant argues that “the Examiner’s spartan reasoning does not
show that Baumann discloses the identical invention in as complete detail as
contained in the claim,” and that “Baumann is silent in regard to ‘channels
having straight longitudinal axes’” as required by claim 19. Appeal Br. 14.
The Appellant also argues that “Baumann is silent regarding any
measurement of a diameter of Baumann’s spherical voids, rather Baumann is
limited to the original diameters of the PS sphere template, 300 and 450
nm.” Id. (citing Baumann’s “Sample Preparation” section).
Those arguments are not persuasive. Contrary to the Appellant’s
assertion that “Baumann is silent regarding any measurement of a diameter
of Baumann’s spherical voids,” id., Baumann expressly describes a
“macroporous replicate solid with periodic voids in the 0.1–1 µm size
range.” Baumann at 120. Given that Baumann’s voids are created using
“spheres . . . as templates,” Baumann’s disclosures adequately teach or
suggest spherical voids having diameters up to 1 µm in size. See id. That
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Baumann provides an example using 300 and 450 nm microspheres does not
negate its broader teachings. See In re Mills, 470 F.2d 649, 651 (CCPA
1972) (“[A] reference is not limited to the disclosure of specific working
examples.”).
Given that Baumann teaches that its voids are interconnected, we
discern no error in the Examiner’s finding that Baumann teaches or suggests
longitudinal axes at least 1 µm in length. For example, if two 1 µm
spherical voids are interconnected at the point of contact of the spheres, a
straight line drawn through the channel created by the interconnected
spherical voids would be “at least 1 micron in length,” as required by claim
19, as illustrated below.

Above is a cropped, annotated portion of Baumann’s Figure 1 with a dashed
line added by the Board to demonstrate a longitudinal axis through a channel
created by two interconnected spherical voids.
The Appellant has not identified reversible error in the Examiner’s
rationale.
Claim 21. Claim 21 depends from claim 12 and recites, “wherein the
aerogel has a predefined gradient of density.” Appeal Br. 38 (Claims
Appendix).
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In the Examiner’s discussion of the § 112(b) rejection of claim 21, the
Examiner states that “the prior art references have been interpreted to meet
the limitation of a predefined density gradient, since they are compositions
of matter and must possess a density property.” Final Act. 3. In the
Examiner’s discussion of the § 102 rejection of claim 21, the Examiner finds
that Baumann’s aerogel “necessarily contains distinct regions of different
densities because there are voids in the product,” and, “[a]s Baumann
recognizes the porosity can be controlled, the product as claimed can be
‘predefined’ as claimed: a less dense product containing more pores can be
made, and vice-versa.” Final Act. 5–6 (citation omitted). The Examiner
also determines that “[t]he limitation ‘predefined’” is a “process that does
not limit the product as claimed,” implying that an aerogel with any gradient
of density—whether predefined or not—would structurally fall within the
scope of the claim. Id. at 5.
The Appellant argues that Baumann does not disclose an aerogel
having a varying density that can be measured, and that Baumann instead
“teaches an aerogel having uniform density by describing [t]he aerogel as
having ‘ordered domains of spherical cavities.’” Appeal Br. 15. The
Appellant also argues that Baumann’s disclosures indicate that “the density
of Baumann’s aerogel is clearly uniform across the bulk material,” and thus
does not have a gradient of density as required by claim 21. Id. The
Appellant also argues that Baumann does not disclose a “predefined” density
gradient. Id.
In the Examiner’s Answer, the Examiner responds that claim 21 reads
on a density gradient of zero, which a uniform gradient would meet, and that
the composition of Baumann “is not 100% uniform and must necessarily
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possess a gradient of density wherein the composition is denser where the
aerogel is present, compared to the voids where no aerogel is present.”
Ans. 16.
The Appellant has not identified reversible error in the rejection. In
particular, we agree with the Examiner that the word “predefined” describes
a process by which the aerogel is made (i.e., a gradient of density is
predefined during the manufacturing process), and that it does not
structurally distinguish the subject matter of claim 21 from an aerogel with a
gradient of density regardless of when or how that gradient of density was
selected or defined. We also agree with the Examiner that Baumann’s
aerogel inherently possesses a gradient of density at least because “the
composition is denser where the aerogel is present, compared to the voids
where no aerogel is present.” See id. The broad scope of claim 21 is
consistent with the Examiner’s reasoning.
We affirm the Examiner’s rejection of claim 21.
Claim 24. Claim 24 depends from claim 12 and recites, “wherein at
least some of the channels have straight longitudinal axes, wherein a length
of some of the channels extends continuously along an entire length of the
aerogel.” Appeal Br. 38 (Claims Appendix).
The Examiner finds that, because “Baumann teaches that mass
transport occurs through the pores,” Baumann “indicat[es] that there are
channels that extend continuously along an entire length of the aerogel.”
Final Act. 6.
The Appellant argues that Baumann’s statement that its aerogel
exhibits “increased mass transport through the larger ordered macropores”
does not indicate that channels extend continuously along an entire length of
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the aerogel. Appeal Br. 16. The Appellant argues that “Baumann is silent”
concerning straight longitudinal axes and channels that extend continuously
along an entire length of the aerogel. Id.
The Examiner responds that Baumann explicitly teaches mass
transport “through the larger ordered macropores,” and that, “[i]n order for
matter to pass through another material[,] a contiguous channel must exist
from one side of the aerogel to the other.” Ans. 10.
That rationale is not persuasive. Baumann discloses two types of
pores or voids in its aerogel. As explained above, one is the channels
formed by the spherical voids that are interconnected at points that
“correspond to regions where the polystyrene spheres were in contact with
one another” and the aerogel sol “was unable to completely penetrate the
narrow regions around the contact points between” spheres. Baumann at
122. Above, we find that those channels constitute “inner channels
corresponding to outer walls” of a template, as recited by claim 12.
Baumann also describes a different type of pore or void. Baumann
describes “mesoporous channels” that are “determined by the resorcinol-to-
catalyst (R/C) ratio used in the sol-gel reaction.” Id. at 121. Baumann states
that “capillary condensation” occurs within mesopores, “indicating that
textural mesoporosity exists within the wall structure.” Id. at 123; see also
id. at 124 (“[T]he solid material that comprises the walls in these ordered
macroporous aerogels is inherently mesoporous.”). These mesoporous
channels within the walls of Baumann’s aerogels do not correspond to outer
walls of a template; rather, as set forth above, they are “determined by the
resorcinol-to-catalyst (R/C) ratio used in the sol-gel reaction.” Id. at 121.
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The mesoporous channels thus do not constitute “inner channels
corresponding to outer walls” of a template as recited by claim 12.
Even accepting the Examiner’s position that mass transport can occur
from one side of Baumann’s aerogel to the other, Baumann indicates that it
is the combination of its interconnected spherical voids and its mesoporous
walls that permit such mass transport. See id. at 121, 124. The Examiner
does not identify a disclosure in Baumann suggesting that any of Baumann’s
“inner channels” (i.e., the spherical voids interconnected at contact points
between spheres in Baumann’s template) extend continuously along an
entire length of the aerogel, as required by claim 24. Accordingly, we agree
with the Appellant that the Examiner has not established that Baumann
discloses an aerogel that anticipates the subject matter of claim 24.
We reverse the Examiner’s rejection of claim 24.
In summary, we affirm the Examiner’s § 102(a)(1) rejection of claims
12, 13, 15–23, and 25, and we reverse the Examiner’s § 102(a)(1) rejection
of claim 24.
Rejection 3
The Appellant presents separate arguments as to claims 12, 14, 18, 19,
21, and 24. We address those claims below. The remaining claims subject
to Rejection 3 will stand or fall with claim 12, from which they depend.
Claim 12. The Examiner relies on Baumann as discussed above in
the context of Rejection 2. The Examiner finds that “Baumann is silent
concerning a process in which the templates . . . are 3D printed as claimed.”
Final Act. 7. The Examiner finds that Uram teaches 3D printing molds that
would produce inner channels if used as templates in aerogel production. Id.
The Examiner finds that both Baumann and Uram “are concerned with the
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same technical feature, namely using templates/molds to control the shape of
curable products.” Id. The Examiner determines that it would have been
obvious “to 3D print the template of Baumann . . . to enable complex
structures and passages . . . to be printed.” Id. The Examiner finds that such
would be beneficial in Baumann “because specific structures (e.g.
interconnected micro/mesoporous channels) are desired in Baumann and
printing a template is a facile means of making the desired structure.” Id.
(citation omitted).
The Appellant argues that Uram fabricates molds, not templates, using
3D printing, and that Uram’s molds “allow a product to be cast inside the
mold.” Appeal Br. 18–19. The Appellant raises various arguments as to
why replacement of Baumann’s template with Uram’s mold would not have
resulted in an aerogel that falls within the scope of claim 12. Id. at 19–22.
The Appellant’s arguments are not persuasive because they
misapprehend the Examiner’s rationale. The Examiner does not propose
replacing Baumann’s template with Uram’s hollow mold. The Examiner
proposes “3D print[ing] the template of Baumann” because Uram teaches
that 3D printing is a suitable way to make complex shapes with precision.
Final Act. 7–8; Ans. 12 (“[I]t would have been obvious . . . to 3D print
[Baumann’s] template to arrive at the precisely desired shape and structure
for the aerogel used by Baumann.”). In the Appeal Brief, the Appellant fails
to address or otherwise show error in that rationale. To the extent the
Appellant addresses the Examiner’s rationale in the Reply Brief, those
arguments are untimely, and we decline to consider them. See 37 C.F.R.
§ 41.41(b)(2).
We affirm the Examiner’s rejection of claim 12.
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Claim 14. Claim 14 depends from claim 12 and further recites,
“wherein the template is present in the product.” Appeal Br. 38 (Claims
Appendix).
In the Final Action, the Examiner essentially repeats portions of the
analysis of claim 12. See Final Act. 8. We understand the Examiner to
imply that, if the aerogel is formed using a 3D printed template, then at some
point during the manufacturing process—even if only briefly—“the template
is present in the product,” as recited by claim 14. See Ans. 13 (clarifying the
Final Action).
The Appellant argues that “it is clear that Baumann’s [template is]
removed before the aerogel is finally prepared” because Baumann teaches a
“supercritical drying” step after its template is removed. Appeal Br. 24.
In the Answer, the Examiner cites page 122 of Baumann as disclosing
“an aerogel in which the template is removed from the aerogel after
formation of the aerogel.” Ans. 13. Consistent with that finding, Baumann
discloses, “[t]he template was removed from the aerogel by washing with
toluene and the replicate gel was dried using supercritical carbon dioxide.”
Baumann at 122 (emphasis added). Thus, Baumann itself refers to the
product from which the template is removed as an aerogel.
In the Reply Brief, the Appellant argues that “neither Baumann nor
Uram discloses an aerogel wherein the template is present in the product.”
Reply Br. 14 (emphasis omitted). The Appellant also raises arguments
concerning whether Baumann’s template of interconnected spheres could
easily be 3D printed. Id.
Those arguments are not persuasive. As set forth above, page 122 of
Baumann discloses an aerogel where the template is present in the product
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until removal by toluene. Although Baumann’s template is not 3D printed,
the template of the combination of prior art proposed by the Examiner is 3D
printed, and the Appellant does not allege that it would have been beyond
the level of ordinary skill in the art to remove a 3D printed template from a
formed aerogel.
We also find untimely the Appellant’s Reply Brief argument about the
ease with which one of ordinary skill in the art could have 3D printed
Baumann’s template, and we decline to consider it. See 37 C.F.R.
§ 41.41(b)(2). In any event, that argument is not supported with evidence.
See Pearson, 494 F.2d at 1405.
We affirm the Examiner’s rejection of claim 14.
Claim 18. Claim 18 depends from claim 12 and requires the template
to be created “using a photo-activated resist.” Appeal Br. 38 (Claims
Appendix).
The Examiner finds that “Uram teaches the photopolymerization of
the 3D template,” which allows “computer controlled laser beams to create
the desired structure.” Final Act. 8–9. The Examiner finds that being able
to create the template using such computer controller laser beams provides
the motivation for 3D printing the templates of Baumann using photo-
activated resist. Id.
The Appellant first argues that “Uram only discloses additive
manufacturing processes to form 3D objects for fabricating molds,” not
templates. Appeal Br. 26. That argument is unpersuasive because it attacks
Uram alone and overlooks the Examiner’s proposal of forming Baumann’s
templates by 3D printing. See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
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(“[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.”).
The Appellant also argues that Baumann’s polystyrene spheres could
not be fabricated using a computer controller laser to photopolymerize
Baumann’s template. Appeal Br. 27. That argument is unpersuasive
because the Examiner is not proposing the use of Baumann’s polystyrene.
The Examiner is proposing making Baumann’s spherical template using the
3D printing method—and materials appropriate to that method—of Uram.
Additionally, as we explained above in the context of Rejection 2, the
material from which the template is made limits the resulting aerogel only to
the extent that the material implies a structural aspect of the resulting
product. The Appellant does not identify a structural difference between
inner walls formed on the basis of a template 3D printed using photo-
activated resist as compared to templates formed using other materials or
methods.
We affirm the Examiner’s rejection of claim 18.
Claim 19. Claim 19 depends from claim 12 and recites, “wherein at
least some of the channels have straight longitudinal axes of at least 1
micron in length.” Appeal Br. 38 (Claims Appendix).
The Examiner relies on the analysis described above in the context of
Rejection 1. Final Act. 9. The Examiner also finds that “3D printing is a
very facile means of making templates,” and “Baumann would have found it
obvious to fabricate desired channel lengths for applications such as catalyst
supports through routine experimentation.” Id. (citation omitted).
The Appellant’s arguments are essentially the same as the arguments
made in the context of Rejection 1, discussed above.
Appeal 2021-000374
Application 15/208,506

19
We affirm the Examiner’s rejection of claim 19 for reasons set forth
above in the context of Rejection 1.
Claim 21. Claim 21 depends from claim 12 and recites, “wherein the
aerogel has a predefined gradient of density.” Appeal Br. 38 (Claims
Appendix).
The Examiner’s discussion of claim 21, and the Appellant’s
arguments concerning claim 21, are the same as those discussed above in the
context of Rejection 1.
For the reasons set forth above, we affirm the Examiner’s rejection of
claim 21.
Claim 24. Claim 24 depends from claim 12 and recites, “wherein at
least some of the channels have straight longitudinal axes, wherein a length
of some of the channels extends continuously along an entire length of the
aerogel.” Appeal Br. 38 (Claims Appendix).
The Examiner relies on Baumann as described above in our discussion
of Rejection 1. That rationale is not persuasive as set forth above.
The Examiner “[a]lternatively” finds that Uram discloses “that
structures having continuous channels throughout the length of the structure
can be made via template removal.” Final Act. 10. The Examiner
determines that it would have been obvious to prepare Baumann’s template
to have a continuous channel the length of the structure because Baumann’s
aerogels “are fitted for applications such as in sensors and catalysis . . . and
it would have been obvious for a person having ordinary skill in the art to
shape the compositions of Baumann according to their desired structure.”
Id.
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Application 15/208,506

20
The Appellant argues that Uram does not teach channels or channels
having straight longitudinal axes and does not remedy the deficiencies of
Baumann. Appeal Br. 33.
We agree. The Examiner cites Uram Figure 4 as showing that
“continuous channels throughout the length of the structure can be made via
template removal.” Final Act. 10. The structure in Uram’s Figure 4,
however, has no channels. It is a solid structure made from mold 3.
Moreover, even assuming Uram’s Figure 4 did depict channels
throughout the length of a structure, Uram does not concern aerogels. The
mere fact that a 3D printed structure could be made to have continuous
channels throughout its length does not provide a reason to form the
template of Baumann in such a way. Obviousness “concerns whether a
skilled artisan not only could have made but would have been motivated to
make the combinations or modifications of prior art to arrive at the claimed
invention.” See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) (emphases in original).
Although the Examiner references “applications such as in sensors
and catalysis,” Final Act. 10, the Examiner does not explain why designing a
template for Baumann for those applications would have resulted in a
template that yields channels that fall within the scope of claim 24.
We reverse the Examiner’s rejection of claim 24.
Appeal 2021-000374
Application 15/208,506

21
CONCLUSION
In summary:
Claim(s)
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
21 112(b) Indefiniteness 21
12, 13, 15–
25 102(a)(1) Baumann
12, 13, 15–23,
25 24
12–25 103 Baumann, Uram 12–23, 25 24
Overall
Outcome 12–23, 25 24
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