10439534 (B.P.A.I. Mar. 9, 2011)

Ex Parte Field et al

Board of Patent Appeals and InterferencesMar 9, 2011

10439534 (B.P.A.I. Mar. 9, 2011)

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. 10/439,534 05/15/2003 Rex James Field 01083CON 7204 65672 7590 03/10/2011 LAW DEPARTMENT CABOT CORPORATION 157 CONCORD ROAD BILLERICA, MA 01821 EXAMINER JACKSON, MONIQUE R ART UNIT PAPER NUMBER 1787 MAIL DATE DELIVERY MODE 03/10/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte REX JAMES FIELD and BEATE SCHEIDEMANTEL ____________ Appeal 2010-002794 Application 10/439,534 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 2-10, 12, and 14-31 under 35 U.S.C. § 103(a) as unpatentable over Schwertfeger (US 2002/0025427 A1, pub. Feb. 28, 2002) 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-002794 Application 10/439,534 2 in view of Andersen (US 5,868,824, issued Feb. 09, 1999).2 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants claim a heat resistant insulation composite comprising an insulation base layer comprising hollow, non-porous particles and a thermally reflective layer comprising an infrared reflecting agent (claims 12, 19). The infrared reflecting agent may comprise metallic particles (claim 23). Representative claim 12 reads as follows: 12. A heat resistant insulation composite comprising (a) an insulation base layer comprising hollow, non-porous particles and a matrix binder, and (b) a thermally reflective layer comprising an infrared reflecting agent and a protective binder, wherein the heat resistant insulation composite has a thermal conductivity of about 50 mW/(mK) or less, and wherein the matrix binder is an aqueous binder selected from the group consisting of a silicone-containing binder, a phenolic binder, and a mixture thereof. Because Appellants' arguments are directed to independent claims 12, 19, and 23 only, the dependent claims will stand or fall with their parent independent claims. 2 The Final Office Action includes a provisional obviousness-type double patenting rejection (which has not been appealed) based on the claims of application 10/353567. However, this application is now abandoned thereby rendering the provisional rejection moot. Appeal 2010-002794 Application 10/439,534 3 We affirm the rejection before us based on the findings of fact, conclusions of law, and rebuttals to argument which are well expressed by the Examiner in the Answer. The following comments are added for emphasis. Appellants advance the argument set forth below for each of the independent claims on appeal. Thus, Appellants believe that, if one of ordinary skill in the art were to combine the teaching of Andersen et al. with that of Schwertfeger et al., one might be motivated to choose a porous material from among the lengthy list of suitable inorganic fillers of Andersen et al. to replace the porous aerogel particles in the multilayer composite material of Schwertfeger et al. Choosing a non-porous filler would go against the teaching of both references. This combination is clearly not the heat resistant insulation composite recited in present claim 12, which comprises a hollow, non-porous particle. (Br. 13 (emphasis in original), see also 14, 15). This argument is unpersuasive. As correctly explained by the Examiner (and not disputed by Appellants), Schwertfeger discloses an insulation composite comprising porous aerogel particles in combination with fillers, and Andersen discloses an insulation composite comprising fillers which are either porous or non- porous such as metal particles and hollow metal or glass spheres (Ans. 3-6). These disclosures support the Examiner's conclusion that it would have been obvious for an artisan to provide the aerogel-containing composite of Schwertfeger with fillers of the type taught by Andersen such as non-porous particles including, for example, hollow glass spheres (id.). Significantly, Appellants' argument does not address with any reasonable specificity the Appeal 2010-002794 Application 10/439,534 4 Examiner's obviousness rationale. For this reason, the argument does not reveal any error in the Examiner's rationale. With regard to independent claim 19, Appellants further argue that "there is no disclosure, teaching, or suggestion in either reference of the use of a thermally reflective layer comprising an infrared reflecting agent and any of the specific protective binders recited in present claim 19" (Br. 14). In response, the Examiner correctly points out that Schwertfeger teaches additional layers which "may comprise infrared (IR) turbidity agents, which read upon the broadly claimed 'infrared reflecting agent', in addition to the binder materials that may be present throughout the composite, which read upon the broadly claimed 'protective binder'" (Ans. 7). These findings by the Examiner have not been specifically rebutted by Appellants in the record of this appeal. Under these circumstances, we perceive no convincing merit in the argument under review. As for independent claim 23, Appellants additionally argue that "there is no disclosure, teaching, or suggestion in either reference of the use of a thermally reflective layer comprising a metallic particle as an infrared reflecting agent" (Br. 15). The Examiner responds to this argument by accurately finding that Andersen's fillers include non-porous metal particles as well as hollow metal spheres which read on the metallic infrared reflecting particles required by claim 23 (Ans. para. bridging 7-8). Appellants do not dispute this finding in the record before us. Moreover, the Examiner's finding is supported by Andersen's disclosure of stainless steel as a metallic filler (para. bridging cols. 34-35) and Appellants' disclosure of stainless steel as a preferred Appeal 2010-002794 Application 10/439,534 5 infrared reflecting agent (Spec. para. [0022]). For these reasons, we are not persuaded by the argument under consideration. In light of the foregoing, we sustain the § 103 rejection of all appealed claims over Schwertfeger and Andersen. The decision of the Examiner is affirmed. 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 LAW DEPARTMENT CABOT CORPORATION 157 CONCORD ROAD BILLERICA, MA 01821