Lawrence Livermore National Security, LLCDownload PDFPatent Trials and Appeals BoardDec 20, 20212021000374 (P.T.A.B. Dec. 20, 2021) Copy Citation 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. Appeal 2021-000374 Application 15/208,506 2 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. Appeal 2021-000374 Application 15/208,506 3 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 Appeal 2021-000374 Application 15/208,506 4 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 Appeal 2021-000374 Application 15/208,506 5 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 Appeal 2021-000374 Application 15/208,506 6 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 Appeal 2021-000374 Application 15/208,506 7 “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 . . . .”). Appeal 2021-000374 Application 15/208,506 8 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 Appeal 2021-000374 Application 15/208,506 9 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 Appeal 2021-000374 Application 15/208,506 10 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). Appeal 2021-000374 Application 15/208,506 11 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 Appeal 2021-000374 Application 15/208,506 12 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 Appeal 2021-000374 Application 15/208,506 13 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. Appeal 2021-000374 Application 15/208,506 14 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 Appeal 2021-000374 Application 15/208,506 15 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. Appeal 2021-000374 Application 15/208,506 16 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 Appeal 2021-000374 Application 15/208,506 17 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) Appeal 2021-000374 Application 15/208,506 18 (“[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. Appeal 2021-000374 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 Copy with citationCopy as parenthetical citation