Ex Parte Cramer

Board of Patent Appeals and Interferences

Jan 12, 2007

10234608 (B.P.A.I. Jan. 12, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BENEDICT F. CRAMER, III
__________

Appeal No. 2007-0048
Application No. 10/234,608
Technology Center 3600
__________

ON BRIEF
__________

Before LORIN, SPIEGEL and LANE, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 from the final rejection of claims
1-12, all the claims pending in the application.1
Appellant (Brief, p. 2) acknowledges that, for purposes of this appeal,
claims 1-10 stand or fall together and claims 11 and 12 stand or fall together.

1 Pursuant to 35 U.S.C. § 6(b), we review the adverse decision of the examiner. In doing so, we
have considered the record, including:
• Final Rejection (December 29, 2003)
• Amendment After Final Rejection (February 21, 2004);
• Advisory Action (March 22, 2004);
• Brief (May 19, 2004);
• Examiner's Answer (“Answer,” August 9, 2004); and,
• Reply Brief (September 3, 2004).

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Accordingly, we treat independent claims 1 and 11 as representative of the
groups and limit our consideration of the issues in this appeal as they apply to
these representative claims. See In re Young, 927 F.2d 588, 590, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991).
Claims 1 and 11 read as follows:
1. In an insulated overhead door, which comprises a plurality of slats
defined by front, back, and side panels with an insulating material
disposed therein, wherein the improvement comprises an aerogel material
as the insulating material.

11. A web comprising a plurality of aerogel-filled vacuum insulated
panels having at least one perforation between one or more of such
panels allowing for separation of one or more aerogel-filled vacuum
insulated panels from each other.

The references relied upon by the examiner are:

Lowry, III et al. [Lowry] 4,979,553 December 25, 1990
Martin 5,156,895 October 20, 1992
Gibson et al. [Gibson] 5,340,527 August 23, 1994

The rejections are :

1. Claims 11 and 12 stand rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Martin.

2. Claims 1-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Lowry in view of Gibson.

DISCUSSION
The Anticipation Rejection

Martin is applicable as prior art under 35 U.S.C. § 102(b).
The issue is whether examiner has presented a prima facie case of
anticipation of claim 11 over Martin under 35 U.S.C. §102(b). “A claim is
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anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.”
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
1051, 1053 (Fed. Cir. 1987).
Claim 11 is directed to a web comprising a plurality of aerogel-filled
vacuum insulated panels. The Examiner argues that “Martin discloses a web of
aerogel 32 filled panels 22” (Answer, p. 3) (see, for example, Fig.-1A, reference
number 20) and Appellant has not disputed this.
However, claim 11 further requires the web to have at least one
perforation between one or more of the aerogel-filled vacuum insulated panels
allowing for separation of the panels from each other.
The Examiner (Answer, p. 3) takes the position that Martin teaches the
perforation feature set forth in claim 11 because “Martin discloses that the body
20 is cut by a cutting process which fully responds to the limitation of ‘at least one
perforation’ (see column 5, lines 10-20).”
According to Martin at column 5, lines 10-20:
A great advantage of making the body 20 in accordance with
the embodiment of Fig. 1, in which the cell wall are made from a
material impermeable to air or other gases, is that a multiplicity of
shapes can be machined or otherwise cut as shown, for example in
FIG. 3A, without disturbing the thermal insulating or other
properties of the body 20. As each cell maintains its own vacuum or
other environment containing desirable gases or liquids, a cutting
process will only affect the cells on the periphery which are actually
cut and not the cells comprising the field of the shape.

Nowhere in this passage is “perforation” explicitly mentioned. Martin may
nevertheless anticipate claim 11 if the cutting process described in Martin, per
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the above passage, inherently leads to at least one perforation between one or
more of the cells of the body.
Whether or not Martin’s disclosed cutting process inherently teaches
perforation is a question of fact. In re Napier, 55 F.3d 610, 613, 34 USPQ2d
1782, 1784 (Fed. Cir. 1995). In that regard, “the examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination that
the allegedly inherent characteristic necessarily flows from the teachings of the
applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter.
1990) (citations omitted).
The Examiner (Answer, p. 3) states only that “Martin discloses that the
body 20 is cut by a cutting process which fully responds to the limitation of ‘at
least one perforation.’” However, the Examiner does not explain how a
“perforation” necessarily flows from Martin’s disclosed cutting process. Martin
describes a generic cutting process. While it is within the realm of possibility that
a cutting process might make perforations in an article, nothing in Martin’s cutting
process necessarily requires use of perforations. The mere possibility that a
generic process may produce a particular result is insufficient as a basis for
establishing that that particular result necessarily flows from, and thus is inherent
to, the process.
A prior art reference that discloses a genus still does not inherently
disclose all species within that broad category. See Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1262, 9
USPQ2d 1962 (Fed. Cir. 1989) (“Under [defendant’s] theory, a
claim to a genus would inherently disclose all species. We find [this]
argument wholly meritless. …”).

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Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1367, 71
USPQ2d 1081, 1091 (Fed. Cir. 2004).
Since the Examiner does not elaborate as to why a “perforation”
necessarily flows from Martin’s general cutting process, we find that the
Examiner has not established that Martin inherently discloses the “perforation”
feature required by claim 11. Consequently, the Examiner has not shown that
Martin describes every element as set forth in claim 11 and, thus, has not met his
initial burden of establishing a prima facie case of anticipation.
Accordingly, the Examiner’s rejection of claims 11 and 12 under 35 U.S.C.
§ 102(b) over Martin is reversed.
However, we enter new grounds of rejection under 35 U.S.C. §103(a) of
claims 11 and 12 infra.

The Obviousness Rejection
Lowry and Gibson are applicable as prior art under 35 U.S.C. § 102(b).
In a 35 U.S.C. § 103 case, the burden of proof is on the PTO to establish
a prima facie case of obviousness, In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (1967). The test is as follows:
“A claimed invention is unpatentable if the differences
between it and the prior art “are such that the subject matter as a
whole would have been obvious at the time the invention was made
to a person having ordinary skill in the art” 35 U.S.C. § 103 (1994).
The ultimate determination as to whether or not an invention is
obvious is a legal conclusion based on underlying factual inquiries
including: (1) the scope and content of the prior art; (2) the level of
ordinary skill in the art; (3) the differences between the claimed
invention and the prior art; and (4) objective evidence of
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nonobviousness. Graham v. John Deere Co., 383 US 1, 17-18, 86,
S.Ct. 684, 693-94, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966).”

In re Huang, 100 F.3d 135, 136, 40 USPQ2d 1685, 1687-1688 (Fed. Cir. 1996).

The Examiner’s rejection (Answer, p. 3) reads as follows:
Claims 1-10 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Lowry et al in view of Gibson et al. Lowry et al
discloses the claimed slats 12, 14, 16 absent the insulating material
as being an aerogel material. Gibson et al disclose an insulated
panel 2 of aerogel material, wherein, to incorporate this teaching
into the slats of Lowry et al for the explicit purpose of increasing the
insulation properties of the slats would have been obvious to one of
ordinary skill in the art.

Lowry (Figs. 1 and 3) discloses a door comprising a slat assembly having
a void and states that filling this void with a thermally insulative material “results
in improved thermal insulation performance in a curtain made up of a plurality of
slat assemblies thus configured” (column 7, lines 12-15). Lowry leaves open the
specific type of thermally insulative material which may be used to fill the void
(“This void may be filled with various materials, depending upon the intended
application for the installed door,” sentence bridging columns 2-3). Thus, the
Examiner correctly points out that Lowry teaches the “plurality of slats defined by
front, back, and side panels with an insulating material disposed therein” recited
in the preamble of claim 1. The Examiner points out that Lowry does not teach
aerogel as a candidate thermally insulative material and thus does not teach
aerogel material filing in the void within the slat assembly as claim 1 requires.2

2 Notwithstanding that Lowry teaches an insulated overhead door, it should also be pointed out
that due to the Jepson format of representative claim 1, appellant has impliedly admitted that the
insulated overhead door described in the preamble of the claim is old in the art. Rowe v. Dror,
112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).

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According to the Examiner, Gibson “disclose[s] an insulated panel 2 of
aerogel material” (Answer, p. 3). Gibson discloses a method of making a panel
of microporous thermal insulation from an aerogel at column 2, line 55-65. Given
Gibson’s disclosure, the Examiner concludes that one of ordinary skill in the art
would have been motivated to modify the door of Lowry by using an aerogel as
the thermal insulation material within the void of Lowry’s slat assembly. We
agree. One of ordinary skill in the art having Lowry in hand would look to any
conventional thermally insulative material as a candidate material to fill the void
of the slat assembly with a reasonable expectation that any thermally insulative
material selected for filling the void would give the slat assembly a thermal
insulation performance corresponding to the material selected. Gibson discloses
one such conventional thermal insulative material, aerogel. Therefore, one of
ordinary skill in the art would have reasonably expected that selecting Gibson’s
aerogel to fill the void within the slat assembly of Lowry would provide the Lowry
assembly with a thermal insulation performance corresponding to the
incorporated aerogel.
In our view, the Examiner’s findings are sufficient to support a prima facie
conclusion of obviousness. Consequently, the burden shifts to Appellant to rebut
the Examiner’s showing of obviousness. In re Dillon, 919 F.2d 688, 692, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc).
Appellant’s rebuttal consists of arguments challenging the applicability of
Gibson as a secondary reference to support a showing that it would have been
obvious to one of ordinary skill in the art to use aerogel within the Lowry slat
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assembly. Appellant (Brief, p. 4) argues that Gibson is directed to insulated
electric thermal storage heaters and not combinable with Lowry which teaches
insulated overhead doors. This argument is not persuasive because one of
ordinary skill in the art reading Gibson would understand Gibson’s thermal
insulation panels to be relevant to insulating articles generically and not limited to
electric thermal storage heaters. “[E]lectric thermal storage heaters” is recited at
column 1, lines 29-30, as an example of an application for panels of microporous
thermal insulation material. Gibson explicitly discloses aerogel as one example
of a known thermal insulative material. Thus, one of ordinary skill in the art
reading Gibson is informed that aerogel is a known thermal insulative material.
That information would provide one of ordinary skill in the art with a suggestion to
use aerogel as the thermal insulative material that Lowry discloses can be
incorporated within the slat assembly of the overhead door as well as with a
reasonable expectation of success in doing so.
Appellant (Brief, p. 6) also argues that “[s]ince Lowry certainly fails to
clearly show or suggest aerogel as an insulation material for an overhead door
…, it fails to function in a manner that would induce one to look to Gibson.” This
argument is also not persuasive. “A reference is reasonably pertinent if, even
though it may be in a different field of endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.” In re GPAC, Inc., 57 F.3d 1573, 1578, 35
USPQ2d 1116, 1121 (Fed. Cir. 1995) (quotations and citations omitted). If a
reference’s disclosure relates to the same problem as the claimed invention, “that
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fact supports use of that reference in an obviousness rejection.” In re Clay, 966
F.2d 656, 659, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992). Here, Lowry teaches
an overhead door containing thermal insulation material and Gibson discloses
aerogel as a known thermal insulation material.
Therefore, in our view, the Examiner has established that the claimed
improvement of claim 1 would have been prima facie obvious to the skilled
artisan within the meaning of 35 U.S.C. § 103 in view of the applied prior art. For
its part, Appellant has not rebutted the Examiner’s prima facie conclusion of
obviousness with objective evidence of non-obviousness. See In re Fielder, 471
F.2d 640, 176 USPQ 300 (CCPA 1973). Accordingly, the Examiner’s rejection of
claims 1-10 under 35 U.S.C. § 103 is hereby affirmed.

New Grounds of Rejection

The references relied upon by the Board are:

Gray 3,653,495 April 4, 1972
Martin 5,156,895 October 20, 1992
Kim 6,467,143 October 22, 2002 (filed June 20, 2000)

The new ground of rejection is:
Claims 11-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Martin in view of Gray or Kim.
Claim 11 reads:
A web comprising a plurality of aerogel-filled vacuum
insulated panels having at least one perforation between one or
more of such panels allowing for separation of one or more
aerogel-filled vacuum insulated panels from each other.
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Claim 12 further defines the aerogel material of claim 11 as being in
granular form.
Martin discloses a body 20 (web) comprising aerogel 32 filled cells 22
(panels). The body can be enveloped in an impermeable membrane 34, 36 to
allow a vacuum to be created within the aerogel to enhance its thermal
resistance. (See column 2, lines 9-12; column 3 lines 37-38 and 55-57; and,
column 3, line 64 to column 4, line 6.) Martin explains that a multiplicity of
shapes comprising said cells can be cut from the body (column 5, lines 10-29).
According to Martin, the cells may be constructed of gas and liquid impermeable
materials, paper, glass, ceramics, metals, etc. (column 3, lines 49-54). In
teaching a vacuum-insulated body, from which multiple shapes comprising
vacuum insulated aerogel -filled cells can be cut, Martin discloses a web
comprising a plurality of aerogel-filled vacuum insulated panels which can be cut
into individual units as claimed.
The body (web) disclosed in Martin differs from the claimed web only in
that it does not contain “at least one perforation between one or more of such
panels allowing for separation of one or more aerogel-filled vacuum insulated
panels from each other” (claim 11). Rather than employing a perforation to tear
off individual cells, Martin simply cuts the cells (panels) from the body (web) into
a multiplicity of individual forms and shapes.
Gray discloses a carton for assembling a container 10 comprising
comprising a structural web member 90 which includes a perforated line 96 “so
that it may be easily torn into halves” (column 3, lines 28-34). While Gray applies
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the known expedient of adding a perforation line to a tearing-capable structure to
be separated at the location of the perforation in the context of a carton material,
one of ordinary skill in the art would understand that this expedient is equally
applicable to separate Martin’s body (web) into individual cells, e.g., where the
cells are made of paper. Thus, it would have been obvious to one of ordinary
skill in the art to include at least one perforation in Martin’s body (web) because,
as Gray suggests, the perforation would have been expected to facilitate tearing
Martin’s body into multiple units or, in the language of the claims, to facilitate
tearing the web into individual panels, thereby providing an alternative means to
separate panels from the web.
Kim also teaches an insulated panel web with perforations. Specifically,
Kim discloses an automatic door panel producing apparatus which includes a
marking device 208 that “punches holes (not shown) on the inner plate material
202c” (column 4, lines 54-55), which inner plate material is combined with an
outer plate material and the void therebetween injected with insulated material to
form a door panel material (column 2, lines 27-59) and which perforated mark on
the inner plate material marks a cutting position (column 4, line 52) which is later
sensed causing a cutter to cut a door panel of a desired size from the door panel
material (column 6, lines 29-34). In disclosing an insulated door material
provided with punched holes to facilitate cutting the material into separate
panels, Kim is in effect disclosing an insulated web with at least one perforation
(punched hole) allowing for the web to be cut into separate panels. Thus, it
would have been obvious to one of ordinary skill in the art to provide Martin’s
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web with “at least one perforation” because, as Kim suggests, it would facilitate
separating the web into panels of desired size.
Regarding claim 12, which further defines the aerogel material of claim 11
as being in granular form, Appellant's specification (p. 2, lines 1-9) admits that
the “normal” form of aerogel is the granular form. Indeed, Martin describes prior
art methods as compacting aerogel particles to provide a thermal insulation
(column 1, lines 12-53). Given Appellant's admission that aerogel is “normally”
granular and Martin's teaching of the conventional use of aerogel particles
(granules) for thermal insulation, it would have been obvious to one of ordinary
skill in the art to use granular aerogel as the aerogel in the aerogel-filled panels
of the web as recited in Appellant's claim 12.

CONCLUSION
To summarize, the decision of the examiner rejecting claims 1-10 under
35 U.S.C. § 103 is affirmed and the decision of the examiner rejecting claims 11
and 12 under 35 U.S.C. §102(b) is reversed.
This decision also contains a new ground of rejection pursuant to 37 CFR
§ 41.50(b) (effective September 13, 2004,69 Fed. Reg. 49960 (august 12, 2004),
1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
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37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have
the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; REVERSED-IN-PART
37 CFR § 41.50(b)

)
/Hubert C. Lorin/ )
HUBERT C. LORIN )
Administrative Patent Judge )
)
)
)
/Carol A. Spiegel/ )
CAROL A. SPIEGEL ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
/Sally Gardner Lane/ )
SALLY GARDNER LANE )
Administrative Patent Judge )

Appeal No. 2007-0048 Page 14
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Richard P. Fennelly
1386 Quarry Drive
Mohegan Lake, NY 10547

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