10353567 (B.P.A.I. Feb. 24, 2010)

Ex Parte Ackerman et al

Board of Patent Appeals and InterferencesFeb 24, 2010

10353567 (B.P.A.I. Feb. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte WILLIAM CLAY ACKERMAN, REX JAMES FIELD, FRANZ-JOSEF HEINRICH POETTER, and BEATE SCHEIDEMANTEL ____________ Appeal 2009-003480 Application 10/353,567 Technology Center 1700 ____________ Decided: February 24, 2010 ____________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and ADRIENE LEPIANE HANLON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-31.1 We have jurisdiction under 35 U.S.C. § 6. 1 The Final Office Action contains a provisional obviousness-type double patenting rejection of claims 1-31 based on the claims of co-pending application No. 10/493,533 (FOA 9; see also Ans. 2, last para.). However, Appeal 2009-003480 Application 10/353,567 We AFFIRM for the reasons expressed in the Answer and below. Appellants claim a heat resistant aerogel insulation composite comprising an insulation base layer and a thermally reflective top layer which comprises an infrared reflecting agent, wherein the infrared reflecting agent is a metallic particle, metallic pigment or metallic paste (claim 1). Representative independent Claim 1 reads as follows: 1. A heat resistant aerogel insulation composite comprising (a) an insulation base layer comprising hydrophobic aerogel particles and an aqueous binder, and (b) a thermally reflective top layer comprising a protective binder and an infrared reflecting agent, wherein the infrared reflecting agent is a metallic particle, metallic pigment, or metallic paste. The Examiner relies upon the following references as evidence of unpatentability: Kummermehr 4,363,738 Dec. 14, 1982 Durham 4,555,448 Nov. 26, 1985 Wong 5,610,274 Mar. 11, 1997 Mielke 5,656,195 Aug. 12, 1997 Schwertfeger ‘400 6,143,400 Nov. 07, 2000 Schwertfeger (US ‘427) 2002/0025427 A1 Feb. 28, 2002 Schwertfeger (US ‘284) 2003/0003284 A1 Jan. 02, 2003 Schwertfeger ‘7092 WO 98/32709 Jul. 30, 1998 Schwertfeger ‘6023 WO 98/32602 Jul. 30, 1998 this provisional rejection is now moot because the co-pending application is currently abandoned according to its electronic file record. 2 Both the Examiner and Appellants rely on and cite to US 2002/0025427 as an equivalent to WO ‘709. 3 Both the Examiner and Appellants rely on and cite to US 2003/0003284 as an equivalent of WO ‘602. 2 Appeal 2009-003480 Application 10/353,567 Under 35 U.S.C. § 102(b), the Examiner rejects claims 1-20, 25, 26, and 28-31 as being anticipated by WO ‘709 (a.k.a. US ‘427) and rejects claims 1-9, 11-18, 25, 26, and 28-31 as being anticipated by WO ‘602 (a.k.a. US ‘284). Under 35 U.S.C. § 103(a), the Examiner rejects claims 23 and 24 as being unpatentable over either WO ‘709 (a.k.a. US ‘427) or WO ‘602 (a.k.a. US ‘284) in view of Kummermehr and rejects the other appealed claims over the WO references in various combinations with the other references listed above. Appellants’ arguments are directed solely to the claim 1 limitation that the infrared reflecting agent of the thermally reflecting top layer “is a metallic particle, metallic pigment, or metallic paste” and the limitation of claims 23 and 24 that the reflecting agent or metallic particle of claim 1 is aluminum (Br. 14-26). Appellants have not separately argued any other appealed claims including the separately rejected claims. Therefore, in our disposition of this appeal, we will focus on the previously mentioned limitations of independent claim 1 and dependent claims 23 and 24. The § 102 Rejections of Independent Claim 1 Appellants acknowledge the Examiner’s findings (i) that the WO references disclose an aerogel insulation composite comprising an insulation base layer and a thermally reflective top layer which comprises an infrared reflecting agent such as iron oxide or zirconium oxide and (ii) that such metal oxides are known in the art as metallic particles (i.e., as evidenced by Wong) (Br. 14, 16-17). However, Appellants argue that “metal oxides are not the metallic particles, pigments, or pastes [required by claim 1]” (id. at 15, 17; underlining deleted). According to Appellants, this argument is supported by Specification paragraph [0021] “which states that infrared 3 Appeal 2009-003480 Application 10/353,567 reflecting agents include titania (i.e., titanium dioxide) and metallic particles” (id.). It is Appellants’ ultimate position, therefore, that the reflecting metal oxides of the WO references do not satisfy the claim 1 limitation of a reflecting metallic particle because “metal oxides are clearly distinguished from metallic particles in the present invention” (id.; underlining deleted). This argument is unpersuasive. Appellants’ Specification paragraph [0021] discloses, inter alia, that “[t]he infrared reflecting agent can be any compound or composition that reflects or otherwise blocks infrared radiation, including opacifiers such as carbon black, carbon fibers, titania (rutile), and metallic and non-metallic particles, fibers, pigments, and mixtures thereof”. Appellants’ argument is based on the implicit belief that the opacifiers listed in this paragraph are mutually exclusive such that the term “metallic particles” would not include metal oxides in view of the separate listing of the metal oxide titania (i.e., TiO2). This implicit belief is not well founded. Nothing in paragraph [0021] defines the term “metallic particles” as excluding metal oxides or characterizes the listed opacifiers as being mutually exclusive such that the term “metallic particles” would exclude metal oxides. For these reasons, Appellants’ argument fails to identify error in the Examiner’s § 102 rejections of claim 1. The § 103 Rejections of Claims 23 and 24 The Examiner acknowledges that the WO references disclose iron oxide rather than aluminum as required by claims 23 and 24 but finds that aluminum is an equivalent opacifier to iron oxide (Ans. para. bridging 5-6, 9, second para.). Based on this finding, the Examiner concludes that it 4 Appeal 2009-003480 Application 10/353,567 would have been obvious for one with ordinary skill in this art “to substitute aluminum for the iron oxide of the WO . . . invention since [the] two materials have been shown in the art to [be] recognized equivalent opacifier agents for use in the thermal insulating material” (id.). Appellants argue that the metallic aluminum and iron oxide [of Kummermehr] are only taught as functioning when in combination with an insulating material, such as an aerogel [, and accordingly] [t]here is no disclosure, teaching, or suggestion that they can also be used in a separate thermally reflective top layer, as in present claim 1 (Br. para. bridging 22-23). Appellants’ argument is unconvincing for two reasons. First, Appellants have not identified any error in the Examiner’s finding that aluminum and iron oxide are equivalent agents in that they perform the same reflecting function regardless of whether they are located in an aerogel insulating layer as in Kummermehr or located in a thermally reflective top layer as in the WO references. Based on the record of this appeal, aluminum and iron oxide would perform the same reflecting function in either layer, and this supports the Examiner’s conclusion that it would have been obvious to substitute the aluminum of Kummermehr for the iron oxide of the WO references. Second, even assuming Kummermehr limits using aluminum and iron oxide alternatively only in the environment of an insulating aerogel material as Appellants contend, such a limited teaching does not reveal error in the Examiner’s rejection. The deficiency of Appellants’ contention is explained by the Examiner as follows: 5 Appeal 2009-003480 Application 10/353,567 Appellants contend that the combination of the references does not achieve the claimed invention because the metallic aluminum and iron oxide are used in combination with an aerogel in view of the teachings of Kummermehr. Appellants then assert that "there is no disclosure, teaching or suggestion that they can also used in a separate thermally reflective top layer as in present claim 1." The arguments appear to be technically erroneous. WO 98/32709 discloses the additional layer comprising aerogel (see paragraph 52 of the corresponding US Patent Publication No. 2002/0025427). Similarly, WO 98/32602 discloses the multilayer composite material comprising at least one aerogel containing layer wherein the aerogel contains infrared reflecting agent (see abstract and paragraph 30 of the corresponding US Patent Publication No. 2003/0003284). One aerogel containing layer reads on the claimed insulating base layer and an additional aerogel containing layer reads on the claimed thermally reflective top layer. The examiner notes that nothing in the claim requires the thermally reflective top layer that is free of aerogel. The combined teachings of the references thus achieve the claimed invention. (Ans. para. bridging 11-12). Significantly, the Examiner’s above-quoted explanation is reasonable and has not been contested by Appellants in the record of this appeal. The above circumstances lead us to determine that Appellants have failed to reveal any error in the Examiner’s § 103 rejections of claims 23 and 24. Conclusion In light of the foregoing and for the reasons expressed in the Answer, we sustain each of the § 102 and § 103 rejections advanced by the Examiner in this appeal. The decision of the Examiner to reject all appealed claims is affirmed. 6 Appeal 2009-003480 Application 10/353,567 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2008). AFFIRMED ssl MICHELLE B. LANDO 157 CONCORD ROAD BILLERICA, MA 01821-7001 7