Ex Parte Bullock et al

Patent Trial and Appeal Board

Jan 24, 2018

13486193 (P.T.A.B. Jan. 24, 2018)

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.
13/486,193 06/01/2012 Daniel E. Bullock 1043-05 8978
50006 7590 01/26/2018
ASPEN AEROGELS INC.
IP DEPARTMENT
30 FORBES ROAD
BLDG. B
NORTHBOROUGH, MA 01532
EXAMINER
CHANG, VICTOR S
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
mhanson @ aerogel.com
mhanson @ aerogel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL E. BULLOCK and AARON R. TOMICH
Appeal 2017-001126
Application 13/486,193
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
MERRELL C. CASHION JRAdministrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CASHION.
Opinion Dissenting-in Part and Concurring-in-part filed by Administrative
Patent Judge HANLON.
CASHION, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants timely request1 rehearing of our Decision2 entered
September 28, 2017, affirming the Examiner’s decision rejecting claims 1,
3-11, and 19-21 under 35 U.S.C. § 103(a). Request 1, 3.
1 Request for Rehearing filed November 28, 2017 (“Request”).
2 Decision on Appeal mailed September 28, 2017 (“Decision”).
Appeal 2017-001126
Application 13/486,193
The Board reviewed the following rejections on appeal:
I. Claims 1,3-11 and 19-21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Stepanian (US 2002/0094426 Al, published July 18,
2002) in view of Sano (JP 2000-80549 A, published March 21, 2000 and
relying on an English Abstract sated July 17, 2015).
II. Claims 1, 3-11 and 19-21 rejected under 35 U.S.C. § 103(a) as
unpatentable over Hrubesh (US 2004/0142168 Al, published July 22, 2004)
in view of Sano.
With respect to Rejection I, Appellants contend the Board (a) erred in
relying on the Examiner’s arguments to affirm the rejection because the
Board misapprehended these arguments and overlooked deficiencies in the
Examiner’s underlying reasoning (Request 19) and (b) presented an
undesignated new ground of rejection that departs from the reasoning
presented by the Examiner in affirming the rejection {id. at 5-8).
With respect to Rejection II, Appellants contend the Board erred in
affirming the Examiner’s rejection because the Board did not address the
Examiner’s high burden of establishing inherency as a sufficient legal basis
for rejecting the claims. Id. at 27-29.
We have reconsidered our Decision of September 28, 2017. We have
reviewed the arguments set forth by Appellants in the Request but we deny
the requested relief because Appellants have not persuaded us that we
misapprehended or overlooked any points of law or fact that would require a
different outcome. Therefore, we deny the request to modify our Decision.
Our reasoning follows.
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Application 13/486,193
Rejection I
a. The Board misapprehended the Examiner’s finding
Appellants’ contention that the Board misapprehended the Examiner’s
findings are principally based on a lack of a discussion of the word
“adjacent.” Id. at 23-25. According to Appellants, Stepanian does not teach
the subject matter of claim 1 that requires an aerogel layer reinforced by
fibers and a separate layer of fiber-containing material which is not part of
the aerogel layer, but is instead adjacent to the aerogel layer. Id. at 23-24.
Instead, Appellants argue Stepanian discloses a singular aerogel phase
throughout the composite that defines a singular block of material rather
than the separate adjacent layers required by Claims 1, 20 and 21. Id. at 25.
We are not persuaded by Appellants’ arguments. Appellants have not
established that our Decision misapprehended or overlooked any point of
law or fact that would require a different outcome. We did not overlook or
misapprehend Appellants’ argument based upon the separate adjacent layers
required by claims 1, 20 and 21. The factual findings relied upon by the
Examiner, including that Stepanian discloses the general structure of an
aerogel composite having a layer made of an aerogel matrix with
reinforcement fibers therein and a layer of lofty fibrous structure adjacent to
each other (Decision 3; Final Act. 2-3; Stepanian Figure 3, 12, 13, 26, 27,
and 45), are amply supported by the record and are sufficient to establish
obviousness for the reasons explained in the Final Action and the Answer.
Decision 3—4. Appellants’ argument that Stepanian is directed to a singular
block of material rather than the separate adjacent layers is unavailing
because, as explained by the Examiner, Stepanian’s two-layer composite
comprises distinctly different layers that read on the laminate structure as
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Application 13/486,193
claimed. Ans. 8. These layers would be adjacent each other and remain
adjacent to each other upon formation of the composite through addition of
the aerogel composition. Appellants have directed us to no objective
evidence distinguishing the claimed laminated product from the composite
of Stepanian.
b. The Board presented an undesignated new ground of rejection
Even though Appellants recognize that our affirmance is based on the
Examiner’s stated position (Request 19-27), Appellants contend that the
Decision presented an undesignated new ground of rejection because the
Board’s reasoning based on paragraph 27 of Stepanian, as discussed on page
4 of the Decision, is a clear departure from the reasoning presented by the
Examiner {id. at 6-10). According to Appellants, the Board has overlooked
clear deficiencies in the teachings of paragraph 27 of Stepanian. Id. at 14.
Appellants argue that the disclosure in paragraph 27 of Stepanian stating that
“FIG. 3 shows a gel precursor mixed with microfiber material being cast into
a continuous lofty fiber batting material to generate the composite illustrated
in FIG. 4” is clearly erroneous (as a typographical error or technical error)
because it is inconsistent with a visual inspection of Figures 3 and 4. Id. at
15-16. Appellants contend the layers in Figures 3 and 4 are not described
by Stepanian as containing aerogel. Request 15-16; Stepanian ^ 17-20, 54.
We are also unpersuaded by these arguments. We first note that the
Examiner relied upon the Figures 3, 4, and paragraph 27 of Stepanian in
further explaining the rejection in the Answer. Ans. 2. Appellants
addressed the Examiner’s reliance on these portions of Stepanian in the
Reply Brief. Reply Br. 3—4. As stated in the Decision, our affirmance is
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Application 13/486,193
based on the reasons presented by the Examiner. Decision 4, citing Ans. 6-
8. The Decision also provided additional observation regarding the
teachings of Stepanian. Id. Thus, the Decision did not raise an undesignated
new ground of rejection because Appellants addressed the teachings
provided by Figures 3, 4, and paragraph 27 of Stepanian.
Moreover, Appellants could have availed themselves of the provision
set forth in 37 C.F.R. § 41.40 (a) to request the Examiner’s rejection in the
Answer to be designated as a new ground by filing a petition to the Director
under 37 C.F.R. § 1.181 before the filing of any Reply Brief. Instead,
Appellants filed a Reply Brief in timely fashion presenting substantive
arguments addressing the disputed portions of Stepanian relied upon by the
Examiner. Thus, Appellants have not established that the Board raised an
undesignated new ground of rejection.
Rejection II
Appellants contend the Board erred in affirming the Examiner’s
rejection because the Board did not address the Examiner’s high burden of
establishing that Hrubesh’s fibers or fabrics in the disclosed aerogel/fiber
composite inherently provides integrity to the composite. Request 27-29.
Appellants argue that the Examiner failed to show that the fiber material
taught in Hrubesh necessarily functions to reinforce the aerogel powder
material in the composite layer because, while Hrubesh discloses some
embodiments where the fiber material can technically function to support the
aerogel particles in the composite layer, Hrubesh also discloses other
embodiments where the aerogel powder materials are not finely divided and
will not cling to the fibers of the material. Id. at 31-32.
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Application 13/486,193
We are not persuaded by Appellants’ arguments based on Appellants’
own statement that Hrubesh discloses embodiments where the fiber material
can function to support the aerogel particles in the composite layer {id. at
31). Moreover, it is well settled that a reference may be relied upon for all
that it discloses. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (“all disclosures of the prior art, including unpreferred
embodiments, must be considered” (quoting In re Lamberti, 545 F.2d 747,
750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982)
(explaining that a prior art reference’s disclosure is not limited to its
examples). Given Hrubesh discloses embodiments where the fiber material
can function to support the aerogel particles in the composite layer, as
recognized by Appellants, Appellants have not adequately explained why
Hrubesh’s disclosure of alternate embodiments necessarily detracts from the
embodiments that meet the claim language.
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed September 28, 2017, and is final for the purposes of
judicial review. See 37 C.F.R. § 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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Appeal 2017-001126
Application 13/486,193
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL E. BULLOCK and AARON R. TOMICH
Appeal 2017-001126
Application 13/486,193
Technology Center 1700
HANLON, Administrative Patent Judge, dissenting-in-part and concurring-
in-part.
The Appellants, in the Request for Rehearing (“Request”), argue that
the Board presented an undesignated new ground of rejection and
overlooked clear deficiencies in the Examiner’s arguments in affirming
rejection I. Request 4. In particular, the Appellants argue:
1) The Board appears to argue that Stepanian teaches
multiple aerogel composite layers which can be formed
individually, followed by the subsequent combination of the
individual composite layers into a single, multilayer laminate
composite material having multiple, separate, aerogel matrices
in each layer;
2) In contrast, Examiner argues that Stepanian teaches
multiple fiber reinforcement panels which can be combined into
a single reinforcing phase, followed by the combination of this
single, multi-layer reinforcing phase with aerogel material to
form a single, multilayer laminate composite material having
one, singular aerogel matrix throughout the material.
Request 9-10 (emphasis omitted).
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Application 13/486,193
Turning to the Examiner’s rejection on appeal, the Examiner finds
Stepanian Figure 1 illustrates an aerogel composite made by adding a gel
precursor 11 into a mold which contains a reinforcing batting 12 of a lofty
fibrous structure. Ans. 2.3 The Examiner also finds Stepanian Figures 3, 4,
and 6 illustrate multilayer embodiments with a layer of material sandwiched
between two layers of the composite. Ans. 2. The Examiner finds “the two
composite layers in Stepanian’s multilayer read on the ‘fiber-reinforced
aerogel layer’ and ‘one layer of fiber-containing material’ in claim 1.” Ans.
2.
On appeal, the Appellants argued that “[t]he teachings in Stepanian
are limited to a singular block of fiber-reinforced aerogel material
comprising a singular aerogel phase which extends continuously and
monolithically through the entirety of a single, unified reinforcing phase.”
App. Br. 11-12.4
In response, the Examiner explained that the “appellants appear to
indicate that their invention relates to a discontinuous composite laminate
which is distinct from Stepanian laminate, because Stepanian’s aerogel
matrix is continuous throughout the composite laminate.'''’ Ans. 7 (emphasis
added). The Examiner, however, concluded that “claim 1 fails to exclude
Stepanian’s singular aerogel matrix.” Ans. 7 (emphasis added).
3 Examiner’s Answer dated August 17, 2016.
4 Appeal Brief dated May 27, 2016.
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Thus, I concur with the Appellants that the Examiner found Stepanian
discloses a singular aerogel matrix, not a laminate composite comprising
multiple, separate aerogel matrices.5
In contrast, the Board found that:
One skilled in the art, upon reading the noted disclosure of
Stephanian [sic], would have reasonably expected that the fiber-
reinforced layers 42 of Figure 4 used to make a three layer
composite can each be a fiber-reinforced aerogel composite as
illustrated in Figure 3.
Decision 4 (emphasis added).
On rehearing, the Appellants argue that the Board’s finding is
erroneous. More specifically, the Appellants argue that the teachings in
Stepanian are “limited to the formation of singular aerogel composites
comprising a singular aerogel matrix which extends continuously and
monolithically through the entirety of a single, unified reinforcing phase.”
Request 18.
Stepanian discloses that:
[T]he invention is directed to a composite having two parts,
namely reinforcing fibers and an aerogel matrix wherein the
reinforcing fibers are in the form of a lofty fibrous structure (i.e.
batting)....
Stepanian]} 13.
5 Consistent with the majority, I interpret claim 1 as reciting a laminate
composite comprising at least one fiber-reinforced aerogel layer and at least
one layer of fiber-containing material that are separate from one another and
interlaced together by, for example, needle-punching. See Spec. ]( 10.
Those layers may each be a layer of fiber-reinforced aerogel. See Reply
Brief dated October 17, 2016, at 8 (stating that “[cjlaim 1 does not preclude
the inclusion of an aerogel material in the ‘layer of fiber-containing
material’” (emphasis omitted)). I would likewise interpret independent
claims 20 and 21 in the same manner.
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Application 13/486,193
Stepanian discloses that the invention can be seen via Figures 1-6.
Figure 1 is said to illustrate the fabrication process of Stepanian’s invention
wherein a gel precursor 11 is added to a reinforcing batting 12 in a
constraining mold type structure 10. Spec. ^ 27.
In one embodiment of the invention, Stepanian discloses that the
reinforcing batting “is used in the form of a multi-layer laminate as shown in
FIGS. 3, 4, and 6.” Id. 52 (emphasis omitted). Figure 3, for example, is
said to show a three layer laminate consisting of a layer of lofty fiber batting
32, a fine copper mesh 31, and a second layer of lofty fiber batting 32. Id.
154.
Based on the disclosure of Stepanian, in my opinion, a preponderance
of the evidence supports a finding that Stepanian discloses a singular aerogel
matrix which extends continuously and monolithically through reinforcing
fibers that may be in the form of, for example, a reinforcing batting or a
multi-layer reinforcing laminate as depicted in Stepanian Figures 3, 4, and 6.
For that reason, I would reverse the § 103(a) rejection based on the
combination of Stepanian and Sano.
On rehearing, the Appellants also argue that the Board overlooked
errors and clear deficiencies in the Examiner’s arguments in affirming
rejection II. More specifically, the Appellants argue that the Board did not
recognize “the Examiner’s high burden of establishing inherency as a
sufficient legal basis for rejecting the claim.”6 Request 29.
6 Inherency is a question of fact. In re Grasselli, 713 F.2d 731, 739 (Fed.
Cir. 1983). “[Fjactual determinations by the PTO must be based on a
preponderance of the evidence.” In re Oetiker, 977 F.2d 1443, 1449 (Fed.
Cir. 1992). “Preponderance of evidence” is defined as “evidence which as a
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I disagree. As the majority points out, the Appellants recognize that
“[i]n some embodiments where the aerogel nano-powder material is
‘sufficiently finely divided’ within the void volume, the aerogel material can
‘cling tenaciously’ to the fiber in the fabric, and the fiber material can
technically function to support the aerogel particles in the composite
layer.”* * 7 Request 31 (emphasis added). Thus, in those embodiments, there is
no dispute on this record that the fibers necessarily function to support or
reinforce the aerogel, and thus constitute a “fiber-reinforced aerogel layer”
within the scope of claim 1. See Request 27 (contending that “[t]he plain
and ordinary meaning of the term ‘fiber-reinforced aerogel’ requires that the
fibers in the aerogel layer function to reinforce the aerogel matrix within the
aerogel layer”). For that reason, a preponderance of the evidence supports
the Examiner’s finding of inherency. Thus, I concur with the majority that
the Board did not overlook any points in affirming the § 103(a) rejection
based on the combination of Hrubesh and Sano.
whole shows that the fact sought to be proved is more probable than not.”
Black’s Law Dictionary 1064 (5th ed. 1979).
7 See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“all disclosures of
the prior art, including unpreferred embodiments, must be considered”).
11