Ex Parte Augustyniak et al

Patent Trial and Appeal Board

Dec 20, 2016

12052931 (P.T.A.B. Dec. 20, 2016)

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.
12/052,931 03/21/2008 Martin J. Augustyniak 0083.0015US1 3304
29127 7590 12/22/2016
HOT TSTON FT TNFFVA
EXAMINER
1666 Massachusetts Avenue CHOI, PETER Y
Suite 12
LEXINGTON, MA 02420 ART UNIT PAPER NUMBER
1786
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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
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grant .hou ston @ hou stonllp .com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN J. AUGUST YNIAK, and
KRIS P. HAMILTON, HOBART C. KALKSTEIN
Appeal 2015-005580
Application 12/052,931
Technology Center 1700
Before CHUNG PAK, LINDA M. GAUDETTE, and JULIA HEANEY
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner rejecting claims 44-48, 58—66, 68—70, 72—75, and
77—111 of Application 12/052,931. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
BACKGROUND
The subject matter on appeal relates to tensioned architectural
membranes that can be custom fabricated to various shapes for use in
1 Appellants identify the real parties in interest as Birdair, Inc., Geiger
Gossen Hamilton Campbell Engineers PC, and Cabot Corp. App. Br. 1.
Appeal 2015-005580
Application 12/052,931
roofing, canopies, overhangs, and other envelope structures. Specification
(“Spec.”) 12. The following claims, reproduced below with disputed
limitations italicized, are representative of the subject matter on appeal:
44. An architectural membrane structure comprising: a
tensioned architectural membrane and an insert layer, wherein
the insert layer has a thermal conductivity that remains
essentially the same or decreases with load or compression.
45. An architectural membrane structure comprising a
tensioned architectural membrane and a substantially load
bearing insulator.
46. An architectural membrane structure comprising a first
architectural membrane layer, a second architectural membrane
layer, at least one of said first and second architectural
membrane layers being tensioned and a nanoporous material
between said layers, wherein the at least one of said first and
second architectural membrane layers being tensioned is
flexible, meets an imposed load requirement and transmits a
load to supporting elements, and wherein the architectural
membrane structure has a shape determined by tension in the
architectural membrane structure, said shape including a three-
dimensional curve, and a geometry of a support structure.
App. Br. 22—23 (Claims Appendix).
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
REFERENCES
Gardner
Leeser et al.
Oles et al.
US 5,667,165
US 2007 /0004306 Al
US 2006/0141223 Al
Sept. 16, 1997
Jan. 4, 2007
June 29, 2006
Oct. 25, 2001Schwertfeger et al. US 2001/0034375 Al
THE REJECTIONS
1. Claims 44 and 45 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Leeser and Gardner.
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2. Claims 44, 46-48, 58—66, 68, 69, 72—75, and 77—111 are rejected
under 35 U.S.C. § 103(a) as unpatentable over the combination of
Leeser and Simens.
3. Claims 44 and 86 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Leeser, Simens, and
Schwertfeger.
4. Claim 70 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Leeser, Simens, and Oles.
DISCUSSION
The Examiner finds that Leeser, the primary reference, teaches a
building construction material, such as a building wrap, comprising a
breathable polymeric or cellulosic material which is permeable to water
vapor, and an aerogel material having nanometer scale pore sizes which
provides thermal insulation. Final Act. 2, citing Leeser, Abstract, H 9, 10,
12—14, 30—37, 53. The Examiner further finds Leeser teaches the aerogel
insulated layer can be laminated with an adhesive, resin, heat treatment,
binders or combinations thereof, and that the breathable material may
comprise a mat, woven or nonwoven fabric, which act as external layers
between which the aerogel layer is laminated. Final Act. 7, citing Leeser
1121, 25, 36, 38, 31, 51. Additionally, the Examiner finds that Leeser’s
insulating laminate can be in flexible wrap form and combined with a
structural element to be made load bearing. Final Act. 2, citing Leeser H 30
and 36.
Claims 44 and 86
Appellants argue claims 44 and 86 as a group, based on similar
recitations in both claims relating to thermal conductivity “that decreases
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with load or compression.” App. Br. 8. Appellants argue that Leeser does
not expressly disclose the thermal conductivity of its aerogel insert layer,
and that “thermal conductivity that remains essentially the same or decreases
with load or compression” is not inherent to Leeser. App. Br. 5. Appellants
rely on Bardy2 to show that not all aerogels inherently have thermal
conductivity as recited in claim 44. App. Br. 6—7. Specifically, Appellants
argue that Bardy demonstrates that Spaceloft™ aerogel, one of the aerogels
taught by Leeser as suitable for its building material, displays an increase in
thermal conductivity with applied pressure, contrary to the limitation of
claim 44. App. Br. 6.
The Examiner responds that claim 44 does not recite any
compositional limitations or require that thermal conductivity is measured
according to any specific method, nor does the Specification define the
scope of “remains essentially the same” or require any specific load or
compression. Ans. 22 and 24. The Examiner thus reasons, based on Leeser
and the Specification, that thermal conductivity is inherent to the use of
aerogel in the insert layer. Ans. 23, citing Leeser 19—10, Spec. Tflf 51—66
and 92—93. The Examiner additionally finds that because claim 44 does not
recite any compositional requirement for the aerogel, Bardy’s disclosure is
not useful for comparing claim 44 and Leeser, and further that Bardy
actually shows a decrease in thermal conductivity in the range of 0.1-0.3
MPa pressure. Ans. 24—26, citing Bardy Fig. 3. Appellants do not attempt
to rebut this finding. Reply Br. 3^4.
2 Erik R. Bardy et al., Thermal Conductivity and Compressive Strain of
Aerogel Insulation Blankets Under Applied Hydrostatic Pressure 129 J.
Heat Transfer (Feb. 2007).
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Appellants’ arguments are not persuasive of harmful error in the
Examiner’s finding of inherency. Having reviewed the evidence, and
particularly in view of the absence of a limitation on the composition of the
insert layer recited in claim 44, we determine that there was a reasonable
basis for the Examiner’s finding of inherency for the reasons discussed
above. Furthermore, Appellants have not responded to the Examiner’s
finding that Bardy actually shows a decrease in thermal conductivity for a
range of pressure encompassed by claim 44, and absent further evidence or
explanation, we cannot conclude that Appellants have met their burden of
showing that there are differences between the thermal conductivity of
Leeser’s insert layer and the insert layer that is the subject of claim 44. See
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”)
We have considered Appellants’ arguments concerning Gardner
(Rejection 1), Simens (Rejection 2), and Schwertfeger (Rejection 3). App.
Br. 7—8 and 17—18. We determine as discussed above, however, that Leeser
alone is sufficient to support the obviousness rejection of claims 44 and 86.
Therefore, the Examiner’s findings concerning Gardner, Simens, and
Schwertfeger are ancillary and we need not address Appellants’ arguments
of error in those findings.
Claim 45
Appellants argue that Leeser does not expressly disclose that its
aerogel composite is “a substantially load bearing insulator” as recited in
claim 45, and that a load bearing insulator is not inherent to Leeser’s
structure because Leeser is only load bearing when combined with a
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structural element. App. Br. 5. The Examiner responds that claim 45 does
not require any compositional limitation associated with the load bearing
insulator, nor recite any specific load requirements. Ans. 21. In view of
Leeser’s teaching of a substantially similar structure and composition as
claim 45, the Examiner finds that Leeser’s aerogel is inherently load bearing.
Ans. 21—22. The Examiner further reasons that in view of Leeser’s teaching
that its building material can be combined with a structural element, it would
have been reasonable for a person of ordinary skill in the art to expect that
each of the components of the building material (e.g. aerogel layer) is load
bearing. Ans. 22.
As with claim 44, the Examiner’s finding that load bearing is an
inherent property of Leeser’s aerogel composite shifted the burden to
Appellants to show otherwise. In re Spada, 911 F.2d at 708. Appellants,
however, rely solely on attorney argument concerning the load bearing
property of Leeser. Accordingly, we determine that a preponderance of the
evidence supports the conclusion of obviousness of claim 45 in view of
Leeser.
Rejection 2: Claims 46—48, 58—66, 68, 69, 72—75, and 77—111
Appellants separately argue the following groups of dependent claims:
(a) 81, 85, and 93; (b) 83 and 84; and (c) 100 and 105. App. Br. 14—16. We
first address the claims of groups (a) and (b), because the issues presented
are similar to those already discussed above.
Claims 81, 85, and 93 depend from claim 58 and recite that the
microporous or nanoporous material between the first and second layers
transfers a load between the layers, or has an elastic or spring back response
to compression. App. Br. 26—27, Claims Appx.; App. Br. 14—15. The
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Examiner finds that the recited properties of the microporous or nanoporous
material are inherent to Leeser’s aerogel placed between external fibrous
layers because Leeser teaches a substantially similar structure and
composition. Final Act. 13—14. Appellants argue that Leeser does not
expressly acknowledge the properties and therefore they are not inherent.
App. Br. 15. Appellants’ argument is insufficient to meet their burden of
coming forward with evidence to rebut the finding of inherency. See Ans.
36-37.
Claims 83 and 84 also depend from claim 58 and recite limitations
directed to using the microporous or nanoporous material when installed.
App. Br. 26, Claims Appx. The Examiner finds that the recitation of
intended use does not result in a structural difference from the substantially
similar composition and structure taught by the prior art. Final Act. 14; Ans.
37. Appellants agree that the recited features are part of the structure;
Appellants’ argument that the features “are not of interest” in the panels,
tiles, and housewrap taught by Leeser does not address the rejection and thus
is not persuasive of reversible error.
Appellants argue independent claims 46, 58, 97, and 98 and their
dependents (other than claims 81, 83—85, 93, 100, and 105) as a group,
focusing on the recitations in those claims of “architectural membrane,”
“architectural membrane layer,” and “fabric membrane.” App. Br. 9—14.
The Examiner determines that it would have been obvious to a person of
ordinary skill in the art to form Leeser’s material into a shaped and tensioned
roof structure as taught by Simens, in order to provide a tensioned roof
structure with thermal and acoustic insulating properties which is energy
efficient and economical. Final Act. 10. Appellants argue that Leeser does
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not teach use of its material as an architectural membrane structure, and that
a person of ordinary skill in the art would not have combined Leeser and
Simens because Simens’ inflatable roof support system (such as a fiberglass
fabric dome over a sports stadium) is a different structure with distinct
properties from Leeser’s material. App. Br. 10—12. Appellants characterize
Leeser’s material as a housewrap and argue “common sense alone would
have prevented any attempts to employ a housewrap such as that of Leeser
to meet the demands faced with the huge fabric structure of Simens.” App.
Br. 12. Appellants also rely on the Declaration under 37 CFR § 1.132 of
Inventor Martin J. Augustyniak as evidence that the term “architectural
membrane” holds a unique and widely recognized meaning as a class of
materials designed for fabric architectural applications.
The Examiner responds that the Specification does not define
“architectural membrane” nor describe any objective or quantitative
characteristics associated with an architectural membrane. Ans. 29—30.
Moreover, the Examiner determines that “architectural membrane” is an
intended use which does not patentably distinguish the claims. Ans. 30. We
find a preponderance of the evidence supports the Examiner’s determination.
Further, because Appellants do not present evidence that the combination of
Leeser and Simens would be structurally dissimilar from the claimed subject
matter, their argument that the prior art combination would be incapable of
performing as an architectural membrane is not persuasive. In re Spada, 911
F.2d at 708; see also In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009)
(“Even if no prior art of record explicitly discusses the [limitation],
[applicants’] application itself instructs that [the limitation] is not an
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additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”) .
As to Appellants’ arguments that a person of ordinary skill would not
have been motivated to combine Leeser and Simens, we do not find them
persuasive because they overly rely on Leeser’s housewrap embodiment
without acknowledging all that Leeser would have suggested to a person of
ordinary skill in the art. Merck & Co. v. Biocraft Labs., 874 F.2d 804 (Fed.
Cir.), cert denied, 493 U.S. 975 (1989). Appellants’ argument does not
address Leeser’s teaching that its building material can also be formed into a
rigid panel or tile (Leeser 143), or can be used as a roofing, ceiling, or
flooring material, etc. Leeser || 47, and 49. Similarly, Appellants’ argument
that Simens’ fabric dome structure would be rendered unsatisfactory for its
intended purpose if combined with Leeser’s housewrap (App. Br. 13—14) is
not persuasive because the rejection relies on Simens to show the benefits of
tensioning and shaping Leeser’s building material, and does not depend on
redesign of Simens’ structure. Ans. 35—36. Stated differently, the collective
teachings of the prior art references, as a whole, would have led one of
ordinary skill in the art to employ Simens’ tensioning and shaping approach
to improve Leeser’s building material, with a reasonable expectation of
successfully obtaining the benefits taught by Simens. Id.
Appellants’ separate argument against the rejection of claims 100
and 105 focuses on their common recitation of “a panel comprising the
architectural membrane structure ...” App. Br. 28—29, Claims Appx.; App.
Br. 15—16. Appellants argue that Leeser and Simens are not combinable
because the rigid panels of Leeser would not have been interchangeable with
the fabric membrane panels of Simens. App. Br. 16. As discussed above,
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however, we are not persuaded by Appellants’ argument, with respect to
independent claims 46 and 98, that a person of ordinary skill in the art would
not have combined Leeser and Simens. Moreover, claims 100 and 105 are
not limited to rigid panels. Accordingly, we do not find persuasive
Appellants’ argument against the rejection of claims 100 and 105.
For the reasons described above and as stated by the Examiner in the
Answer, we sustain the determination of obviousness as set forth in
Rejection 2.
Rejection 4: Claim 70
Claim 70 depends from claims 58 and 64 and recites specific coating
materials for the first and second layers of the architectural membrane. App.
Br. 24, Claims Appx. Appellants argue that nothing in Oles resolves the
issues discussed above with respect to Leeser and Simms. Because
Appellants do not attempt to show that claim 70’s recitation of specific
materials further distinguishes claim 70 from the prior art combination, we
sustain Rejection 4 for the reasons discussed above with respect to Rejection
2.
Secondary Indicia of Nonobviousness
Appellants submit Exhibits A—H as secondary indicia of
nonobviousness demonstrating commercial success, in order to rebut the
prima facie determination of obviousness. App. Br. 19—20. The exhibits
describe an architectural membrane structure used in “high visibility”
athletic facilities, although Appellants admit that the exhibits do not literally
describe the claimed features. App. Br. 20. Moreover, Appellants do not
aver, much less explain, what features in the exhibits correspond to the
features recited in the claims, what features in the exhibits are beyond what
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was readily available in the prior art, or what market share is achieved by
such features in the exhibits. App. Br. 19—20. Such evidence does not meet
Appellants’ burden to demonstrate a nexus between the claimed invention
and the alleged commercial success. See In re Huang, 100 F.3d 135, 140
(Fed. Cir. 1996) (holding that the proponent must offer proof “that the sales
were a direct result of the unique characteristics of the claimed invention—
as opposed to other economic and commercial factors [or unclaimed
features] unrelated to the quality of the patented subject matter”); Asyst
Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008)
(“[T]here was no evidence that the success of the commercial embodiment
. . . was attributable to the . . . only material difference between [the prior
art] and the patented invention.”); J.T. Eaton & Co., Inc. v. Atlantic Paste &
Glue Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“the asserted commercial
success of the product must be due to the merits of the claimed invention
beyond what was readily available in the prior art). Accordingly, we affirm
Rejections 1—4 for the reasons stated above.
SUMMARY
We affirm the rejections of claims 44—48, 58—66, 68—70, 72—75, and
77—111 as unpatentable under 35 U.S.C. § 103(a).
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
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