Ex Parte Hrubesh et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10746964 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LAWRENCE W. HRUBESH, JOHN F. POCO, and
PAUL R. CORONADO
____________________

Appeal 2009-010467
Application 10/746,964
Technology Center 1700
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Decided: March 24, 2010
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Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claim 8 under 35 U.S.C. § 103 as obvious over Bartell (US
2,893,962, July 7, 1959) in view of Kirk-Othmer Encyclopedia of Chemical
Technology, Fourth Edition, “Aerogels,” Supplement Volume, John Wiley
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& Sons, pp. 1-22 (1998) (hereinafter “the Encyclopedia”). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to fibers and fabrics with insulating,
waterproofing, and flame-resistant properties (Spec. ¶ [0003]). Claim 8 is
the only pending claim and is reproduced below.
8. A water-repellant fabric made of woven fibers with
fabric spaces between the woven fibers and with fiber voids in
the fibers, the fabric spaces containing air having thermal
resistance; comprising:
a multiplicity of woven fibers, said woven fibers
comprising single fiber strands;
fiber voids in said single fiber strands;
first particles at least partially filling said fiber voids in
said single fiber strands,
wherein said first particles are in the size range of 1-100
nanometers and
wherein said first particles are composed of a
hydrophobic silica aerogel;
the fabric comprising said single fiber strands associated
with each other to form the fabric;
fabric spaces between said single fiber strands, said
fabric spaces containing air having thermal resistance; and
second particles in the size range of 1-100 nanometers,
wherein said second particles are composed of a hydrophobic
silica aerogel,
wherein said second particles have particle thermal
resistance;
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said second particles at least partially filling said fabric
spaces between said single fiber strands;
wherein said second particles are so small that said
particle thermal resistance of said second particles is higher
than the thermal resistance of said air that said second particles
displace, and
wherein said second particles cling tenaciously to said
single fiber strands and cling together resisting any tendency to
be removed from the fabric and provide the water-repellant
fabric.
II. DISCUSSION
1. ISSUE ON APPEAL
Initially, Appellants sweepingly argue that the Bartell reference fails
to disclose Appellants’ claimed invention, and then recite every limitation of
claim 8 (Br. 15-16). Then, Appellants list eight separate limitations of claim
8 asserting that Bartell and the Encyclopedia fail to disclose these
limitations, with no further elaboration (Br. 16-17). We remind Appellants
that merely pointing out what a claim recites is not considered an argument
for separate patentability of the claim. A general allegation that the art does
not teach any of the claim limitations is no more than merely pointing out
the claim limitations. 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”).
More specifically, Appellants contend that Bartell does not disclose a
cloth “impregnated with hydrophobic silica aerogel particles of about 10
nm” and that disclosing “using ‘anaqueous [sic, an aqueous] paste or cream’
to produce a ‘dried film or layer of bonded aerogel’ . . . is not ‘at least
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partially filling said fiber voids in a single fiber’ or ‘second particles at least
partially filling said fabric spaces between said single fiber strands’ as
claimed in claim 8 on appeal” (Br. 20-21).
Appellants also contend that neither Bartell nor the Encyclopedia are
enabling references because they do not disclose how to imbed hydrophobic
silica aerogel particles in the claimed size in fiber voids and in fabric spaces,
such as particularly described in paragraph [0051] of Appellants’
Specification (Br. 17-19).
The issue on appeal arising from the contentions of Appellants and the
Examiner is: did the Examiner reversibly err in rejecting claim 8 as obvious
(a) based on the asserted lack of a teaching or suggestion of a hydrophobic
silica aerogel “at least partially filling” fiber voids in a single fiber strand
and fabric spaces between fiber strands, and (b) because Bartell would not
have enabled one of ordinary skill in the art to make the claimed invention?
2. FACTUAL FINDINGS
Appellants’ Specification has no express definition of the phrase “at
least partially filling” (see generally Spec.).
Appellants’ Specification states that methods for filling the void
volume include an embodiment of “filling the void volume with solution that
precipitates particles as it dries” and an embodiment of filling the void
volume “with a solution containing a colloidal suspension of particles that
remain when the liquid dries” (Spec. ¶ [0051]).
Appellants’ Specification also states that the invention includes “the
use of known manufacturing systems for processing fibers and processing
fabrics” (Spec. ¶ [0053]).
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Appellants’ Specification characterizes Bartell as having “surface
coatings [that] impart various characteristics to the surface of a web, but do
not substantially impregnate the web fibers” (Spec. ¶ [0015]).
Bartell teaches applying a cream or paste composed of an aerogel
rendered hydrophobic by treatment and an aqueous blending agent (e.g., 2%
aqueous methyl cellulose), with or without adding particles of latex rubber
(a colloidal suspension/emulsion) (Bartell, col. 4, ll. 15-20 and 62-65).
Bartell teaches that the cream or paste may be applied to a fabric by
being “passed through a knife coater” or may be “sprayed on, troweled on,
or otherwise applied” and dried (Bartell, col. 5, ll. 55-67 and col. 7, ll. 21-
24). Bartell teaches that the coated fabrics “can be made with equipment
usually found in textile coating and finishing plants” (Bartell, col. 9, ll. 3-5).
Bartell teaches that “fabrics may be prepared by coating one side, or
both sides, with the bonded paste or, by using the bonded paste between two
pieces of fabric, it is possible to prepare a laminated fabric having unusual
properties” (Bartell, col. 8, ll. 34-38). Bartell teaches that suitable
lamination can be made by passing the fabric “through a set of positioned
squeeze rolls” and “into a standard textile dryer” (Bartell, col. 9, ll. 9-12).
Bartell teaches that the paste “exhibits sufficient adhesion so that,
when dried, it maintains itself firmly in position under ordinary conditions of
use” (Bartell, col. 8, ll. 26-31).
3. PRINCIPLES OF LAW
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
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interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
When the Examiner puts forth a finding of inherency, the Examiner
must provide enough evidence or scientific reasoning to establish that the
Examiner’s belief that the property is inherent is a reasonable belief.
Ex parte Levy, 17 USPQ2d 1461, 1464-65 (BPAI 1990); Ex parte Skinner,
2 USPQ2d 1788, 1789 (BPAI 1986). However, where the Examiner has
reason to believe that a claimed property may, in fact, be an inherent
characteristic of the prior art product, an Examiner possesses the authority to
require applicant to prove that the subject matter shown to be in the prior art
does not in fact possess the property. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977).
It is well settled that prior art under 35 U.S.C. § 102(b) must be
“enabling”, i.e., it “must sufficiently describe the claimed invention to have
placed the public in possession of it.” In re Donohue, 766 F.2d 531, 533
(Fed. Cir. 1985). “Such possession is effected if one of ordinary skill in the
art could have combined the publication's description of the invention with
his own knowledge to make the claimed invention.” Id. A reference is
presumed to be enabling and therefore, once the examiner establishes that
the reference teaches each and every limitation of the claimed invention, the
burden shifts to the applicants to prove the reference is not enabling.
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990); In re Sasse,
629 F.2d 675, 681 (CCPA 1980).
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4. ANALYSIS
The Examiner admits that Bartell does not expressly disclose that the
aerogel particles enter the fiber voids and fabric spaces, but finds that this
property would have been “inherent to the combination of the fabric
structure itself and to the hydrophobic silica aerogel particles of about 10 nm
size applied to the fabric as a dispersion” (Ans. 4). The Examiner also finds
that, upon coating, the fabric voids would inherently be “filled at least
partially with the silica particles” (Ans. 4). We find the Examiner’s finding
to be reasonable.
Appellants do not expressly define the phrase “at least partially
filling” so as to render a meaning other than the broadest reasonable
interpretation, which would encompass even the smallest degree of “filling.”
In other words, to meet the claim limitation, a single aerogel particle need
only permeate the voids to the smallest extent.
Bartell teaches aerogel particles being applied to fabric in
substantially the same manner as Appellants’ invention, either as an aqueous
solution or as part of a colloid suspension, using equipment conventional to
fabric manufacturing. These teachings of Bartell alone support the
Examiner’s finding that the aerogel particles taught by Bartell inherently fill
the voids in the fibers and fabrics to the same extent as Appellants’
invention. Moreover, Bartell teaches that adhesion with the fabric occurs,
suggesting at least some migration of particles into the voids of the fabric.
Bartell also teaches forming a laminate using squeeze rolls, the pressure of
which would reasonably force the aerogel particles into any voids present in
the fabric. Thus, Bartell provides sufficient evidence to establish a
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reasonable belief that the aerogel particles would inherent fill the voids of
the fabric and the fibers to at least some degree. Thus, the burden falls to
Appellants to prove that the aerogel particles, in fact, do not migrate into the
voids in the fibers and fabric to at least some degree.
Appellants’ arguments do not contest the Examiner’s assertion that
the voids of the fabric and the fibers of Bartell’s fabric are inherently at least
partially filled and fail to provide any evidence to the contrary. While
Appellants’ Specification states that Bartell’s aerogel particles “do not
substantially impregnate the web fibers” (Spec. ¶ [0015]) (emphasis added),
there is no assertion by Appellants that the particles do not “at least
partially” fill the voids, i.e., fill the voids to some degree.
Thus, the Examiner did not err in rejecting claim 8, even though
Bartell does not expressly teach aerogel particles “at least partially filling”
the fiber and fabric voids.
The Examiner also asserts that, since Bartell teaches processes for
applying an aqueous dispersion of hydrophobic silica aerogel particles onto
a fabric that results in a product substantially similar to the claimed
invention, the disclosure is sufficiently enabling (Ans. 5). We agree.
Enablement requires only that the invention be sufficiently described
such that one of ordinary skill in the art would have been able to make and
use the invention. Bartell teaches a process for making an aqueous
dispersion or colloidal suspension and adding it to a fabric, similar to that
disclosed in Appellants’ Specification. One of ordinary skill in the art would
have been able to use the process taught by Bartell to make the insulating
and waterproof fabric described therein. Bartell is presumed to be enabling,
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and, for the same reasons discussed above, the Examiner has properly found
that Bartell inherently teaches the claimed invention. Thus, the burden falls
to Appellants to provide evidence that providing aerogel particles to a fabric
in the form of an aqueous dispersion or a colloidal suspension, using the
process taught by Bartell, would not inherently cause the aerogel particles to
at least partially fill the voids in the fibers and fabric. Appellants provide no
such evidence.
Accordingly, Appellants’ contention that Bartell is not an enabling
disclosure is not persuasive.
III. CONCLUSION
On the record before us1 and for the reasons discussed above, we
sustain the rejection maintained by the Examiner.
IV. DECISION
We affirm the Examiner’s decision.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).
AFFIRMED

cam

1Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii) (2008).
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EDDIE E. SCOTT
ASSISTANT LABORATORY COUNSEL
LAWRENCE LIVERMORE NAT'L LABORATORY
P.O. BOX 808, L-703
LIVERMORE CA 94551