Ex Parte Hrubesh et alDownload PDFBoard of Patent Appeals and InterferencesMar 24, 201010746964 (B.P.A.I. Mar. 24, 2010) Copy Citation 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 ____________________ Decided: March 24, 2010 ____________________ 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 Appeal 2009-010467 Application 10/746,964 2 & 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; Appeal 2009-010467 Application 10/746,964 3 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 Appeal 2009-010467 Application 10/746,964 4 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]). Appeal 2009-010467 Application 10/746,964 5 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 Appeal 2009-010467 Application 10/746,964 6 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). Appeal 2009-010467 Application 10/746,964 7 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 Appeal 2009-010467 Application 10/746,964 8 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, Appeal 2009-010467 Application 10/746,964 9 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). Appeal 2009-010467 Application 10/746,964 10 EDDIE E. SCOTT ASSISTANT LABORATORY COUNSEL LAWRENCE LIVERMORE NAT'L LABORATORY P.O. BOX 808, L-703 LIVERMORE CA 94551 Copy with citationCopy as parenthetical citation