LG CHEM, LTD

Patent Trials and Appeals BoardJul 29, 2020

15554383 - (D) (P.T.A.B. Jul. 29, 2020)

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. 15/554,383 08/29/2017 Kyoung Shil OH 29137.02439.US00 6642 30827 7590 07/29/2020 Dentons US LLP 1900 K. Street, N.W. Washington, DC 20006 EXAMINER PENNY, TABATHA L ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 07/29/2020 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): mlaip@dentons.com mlapto@mckennalong.com paul.fugitt@dentons.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KYOUNG SHIL OH, MI RI KIM, and JE KYUN LEE ________________________ Appeal 2020-003491 Application 15/554,383 Technology Center 1700 ________________________ Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and MONTÉ T. SQUIRE, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s December 20, 2018 decision finally rejecting claims 1–5 and 7–16. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies LG Chem. Ltd. as the real party in interest (Appeal Br. 3). Appeal 2020-003491 Application 15/554,383 2 CLAIMED SUBJECT MATTER Appellant’s disclosure is directed to a method for preparing a silica aerogel-containing blanket (Spec., Abstract). Silica aerogels are materials having high porosities and specific surface areas, and low thermal conductivities, and are said to be used in many fields such as thermal insulation materials, catalysts, sound absorbing materials, and interlayer insulating materials in semiconductor circuits (Appeal Br. 6). However, because silica aerogels are said to have low mechanical strength due to their porous structure, they are said to commonly be produced as aerogel blankets or aerogel sheets by forming composites with a base material such as a typical glass fiber, ceramic fiber, or polymer fiber (id.). Details of the claimed method are set forth in independent claim 1, which is reproduced below from the Claims Appendix of the Appeal Brief: 1. A method for preparing a silica aerogel-containing blanket, comprising: a step for preparing a reaction solution including an alkoxysilane-based compound produced by decomposition of a silazane-based surface modification agent and an alcohol-based compound by reacting the silazane-based surface modification agent with the alcohol-based compound; a step for preparing a silica gel-base material composite by adding a silica precursor, water, and a polar organic solvent to the reaction solution to prepare a silica sol, and then immersing a base material for a blanket in the prepared silica sol to gelate the silica sol; and a step for drying the silica gel-base material composite. Appeal 2020-003491 Application 15/554,383 3 REJECTIONS I. Claims 1–5, 7, and 9–16 are rejected under 35 U.S.C. § 103 as unpatentable over Ou.2 II. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over Ou in view of Fiedler.3 DISCUSSION Appellant does not argue the claims or the rejections separately (see, Appeal Br. 11–15). Accordingly, we select claim 1 as representative and focus our analysis on the rejection of claim 1 over Ou. The remaining claims will stand or fall with claim 1. The Examiner finds that Ou teaches a method of making a silica aerogel-containing blanket which is the same as the claimed method, except that Ou does not disclose the claimed order of steps (Final Act. 2). The Examiner finds, in particular, that Ou’s method describes first mixing silica precursor, water and ethanol to prepare a silica sol, then immersing a base material (i.e., a blanket) into the silica sol to gelate it onto the blanket (id.). The Examiner further finds that Ou teaches that blanket is then aged, and then treated with an ethanolic solution of hexamethyldisilazane (the surface modifying agent) (id., citing Ou ¶ 75 (Example 9)). The Examiner also finds that Ou does not explicitly teach the claimed order of adding the silica precursor, water, and polar organic solvent to the reaction solution of the surface modification agent and the alcohol based compound to prepare the silica sol, followed by immersing a base material 2 Ou et al., US 2005/0192367 A1, published September 1, 2005. 3 Fiedler et al., EP 2 231 789 B2, published September 29, 2010. Appeal 2020-003491 Application 15/554,383 4 for the blanket in the prepared silica sol, followed by a drying (aging) step. However, the Examiner determines that “selection of any order of mixing ingredients is prima facie obvious” (id., citing MPEP 2144.04 IV C). Appellant argues that the data presented in the Specification demonstrates that the claimed invention, which involves preparing the surface modifying solution first and applying it before the gelation and drying steps, provides superior results as compared to the prior art and, therefore, would not have been obvious (Appeal Br. 11–12). Appellant’s argument is persuasive. It is well settled that Appellant has the burden of showing unexpected results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is reasonably commensurate in scope with the protection sought by the claims on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA 1972). In this instance, Appellant has pointed to Comparative Examples 2 and 3, which show a process using the same order of steps as Ou (Appeal Br. 12). The data presented in Table 1 of the Specification shows that in the case of Comparative Examples 2 and 3, the amount of HMDS (hexamethyldisilazane) used is approximately 13 g/100 ml of sol, while the examples according to the claimed method use anywhere from 1.67 to 4.98 g of HMDS per 100 ml of sol, while achieving the same thermal conductivity (see Appeal Br. 12–13). Appeal 2020-003491 Application 15/554,383 5 The Examiner does not dispute this data, but argues that because Ou itself shows acceptable levels of thermal conductivity, the data presented does not show any criticality in the order of mixing (Ans. 3). However, the Examiner’s position does not address the argument made by Appellant, which is that the claimed order of steps permits the use of significantly smaller amounts of HMDS to achieve similar levels of thermal conductivity. That the claims do not recite specific levels of a silazane-based surface modification agent or thermal conductivity is not determinative, as the showing demonstrates that much smaller amounts of the surface modification agent is needed to achieve the same level of thermal conductivity for the claimed method as compared to the prior art method. With respect to the issue of whether the data is commensurate in scope with claims, we note that Appellant provides a reasonable technical explanation of why the unexpected benefit of the claimed order of steps would apply to the use of different surface modification agents, namely that the claimed order of steps allows both the surface and the inside of the silica gel to be hydrophobized (Appeal Br. 13). The Examiner does not contest this explanation. Appellant’s technical explanation is sufficient, in our judgment, to show that the showing is reasonably commensurate with the scope of the claims. Accordingly, we determine that Appellant has demonstrated reversible error in the prior art rejections. Appeal 2020-003491 Application 15/554,383 6 CONCLUSION In summary: Claims Rejected U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7, 9–16 103 Ou 1–5, 7, 9–16 8 103 Ou, Fiedler 8 Overall Outcome 1–5, 7–16 REVERSED