Ex Parte Menashi et al

Patent Trial and Appeal Board

Feb 27, 2017

12105629 (P.T.A.B. Feb. 27, 2017)

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.
12/105,629 04/18/2008 Jameel Menashi 05060 6088
95360 7590 03/01/2017
Pahnt Pnmnratinn/ T AK
EXAMINER
Cabot Corporation, Law Department
157 Concord Road
VO, HAI
Billerica, MA 01821 ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
iplaw @ c abotcorp .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMEEL MENASHI, ULRICH BAUER,
ELMAR POTHMANN, ANDREW A. PETERSON, ANNA K. WILKINS,
MIHAI ANTON, DHAVAL A. DOSHI, and WILLIAM H. DALZELL
Appeal 2015-001590
Application 12/105,629
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 3-5, 25, 36, 37, 39-41, 4A-50, 52, 53, 56, 58, and 59. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments
were heard in this appeal on February 14, 2017.
We AFFIRM-IN-PART.
Appellants’ invention is directed syntactic foams and composites
containing aerogels (Spec. 12).
Claims 1 and 25 are illustrative:
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Application 12/105,629
1. A composite comprising at least one polymer as a continuous
phase and aerogels in particulate form having pores, wherein the aerogels
are dispersed amongst the continuous phase and said at least one polymer
comprises a majority in weight percent of the composite, wherein said
polymer does not substantially enter the pores of said aerogels and wherein
said aerogels are coated on a surface thereof with a coating to substantially
prevent intrusion of said polymer into said pores wherein the coating
encapsulates from 75% to 100% of surface area of the surface of said
aerogel, wherein said coating is a different coating from said continuous
phase, and wherein said polymer is an organic polymer and said coating is a
water-based polymer coating comprising a surfactant or wetting agent.
25. A coated aerogel comprising aerogel in particulate form having
pores, wherein said aerogel is coated with at least one coating capable to
substantially prevent intrusion of a continuous phase polymer into said
pores, wherein said aerogel has a surface and an inner pore volume and
wherein said coating is on the surface of said aerogel wherein the at least
one coating encapsulates from 75% to 100% of surface area of the surface of
said aerogel, thus closing the pores but not penetrating into the inner pore
volume of the aerogel, and said coating capable to prevent said polymer
from entering into the inner pore volume of the aerogel, wherein said
polymer is an organic polymer and said coating is a water-based polymer
coating comprising a surfactant or wetting agent.
Appellants appeal the following rejections:
1. Claims 25, 36, 37, 39, 41, 47, 50, and 53 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a), as unpatentable over Schwertfeger et al. (US 6,143,400,
issued Nov. 7, 2000) (“Schwertfeger”) as evidenced by Nakamura et
al. (US 2006/0155008 Al, issued July 13, 2006) (“Nakamura”).
2. Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schwertfeger in view of Burchill I (US 2010/0140532 Al, published
June 10, 2010) (“Burchill I”).
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3. Claim 48 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schwertfeger in view of Blair et al. (US 2007/0102055 Al, published
May 10, 2007) (“Blair”).
4. Claim 59 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schwertfeger in view of Burchill II (US 2005/0148692 Al, published
July 7, 2005) (“Burchill II”).
5. Claims 1, 3-5, 25, 36, 37, 39, 41, 44, 45, 47, 49, 50, 52, 53, and 56 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Mukherjee et
al. (JP 05-182518, published July 23, 1993) (“JP ’518”) in view of
Schwertfeger.
6. Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over JP
’518 in view of Schwertfeger and Burchill I.
7. Claims 46 and 48 are rejected under 35 U.S.C. § 103(a) as
unpatentable over JP ’518 in view of Schwertfeger and Blair.
8. Claim 58 is rejected under 35 U.S.C. § 103(a) as unpatentable over JP
’518 in view of Schwertfeger and Burchill II.
FINDINGS OF FACT & ANALYSIS
REJECTIONS (1) AND (5): CLAIMS 1 AND 25
Appellants argue that Schwertfeger fails to teach or suggest a wetting
agent or surfactant in the coating applied to the aerogel particles (App. Br.
13; Reply Br. 3). Appellants contend that a “wetting agent” is a surface
active agent that, when added to water, causes it to penetrate more easily
into, or spread over a surface (Reply Br. 3). Appellants argue that
Schwertfeger’s glycerin is described as a softening agent and there is no
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Application 12/105,629
teaching that glycerin is a universal wetting agent for any application (App.
Br. 16; Reply Br. 4).
The Examiner finds that Nakamura describes glycerine as being a
“wetting agent” (Ans. 13). The Examiner finds that glycerine’s chemical-
structure makes it water soluble. Id. The Examiner finds that whether
glycerine in placed in Nakamura’s ink composition or Schwertfeger’s
coating composition the nature of “absorbing water . . . remains unchanged
due to [the] presence of the hydroxyl groups” on the glycerine molecule. Id.
The dispositive issue presented in this appeal with regard to claims 1
and 25 is whether glycerine in Schwertfeger’s coating constitutes a “wetting
agent” within the meaning of the claims. We begin our analysis by
construing the phrase “wetting agent” in claims 1 and 25. Appellants
describe in their Specification that wetting agent is synonymous with a
surface active agent (i.e., surfactant) (Spec. 64, 67). Accordingly, we
construe the phrase “wetting agent or surfactant” as including compounds
that function as surfactants (i.e., the compounds lower the surface tension of
the material they are added to in order to affect the ability of the material to
spread out on the surface).
Schwertfeger discloses that glycerin is used as a “softener” in the
coating composition (Schwertfeger col. 6,11. 53—55). Although Nakamura
teaches that glycerine is used as a wetting agent, it is important to determine
the meaning of wetting agent in the context of Nakamura (Nakamura 1345
Table 3). Nakamura describes that a water-soluble solvent acts as wetting
agent to impart “water retentivity and wetting properties to the ink
composition” (| 248). Nakamura does not describe what is meant by
“wetting properties” in any context other than the use of a wetting agent to
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Application 12/105,629
retain water. Nakamura discloses further that solid wetting agents are a
water soluble substance that has a “water-retaining function” and is a solid at
ambient temperature (1286). Nakamura describes that glycerol is used as a
water-soluble solvent (1 199). Nakamura describes that “wetting agents”
within the meaning of the document are directed to materials that retain
water. This meaning comports with the Examiner’s understanding that
glycerine “absorb[s] water” (Ans. 13). Nakamura separately describes
surface active agents that are used as surfactants in the ink composition
(1172, 74, 75, 194). In other words, Nakamura teaches glycerine is used as
a wetting agent to aid in the water retention properties of the ink (i.e., as a
humectant not a surfactant).
Therefore, Schwertfeger’s teaching that glycerine is used as softener
reasonably appears to be directed to using glycerine as a humectant that
keeps the coating moist and soft. The Examiner relies on Schwertfeger to
teach an aerogel coated with a water-based polymer coating having a
surfactant or wetting agent in the rejection over Schwertfeger alone and in
the rejection over JP ’518 in view of Schwertfeger. Because we find that
Schwertfeger does not teach a water-based coating comprising a wetting
agent within the meaning of the claim, we reverse rejections (1) to (3) and
(5) to (7).
REJECTIONS (4) and (8): Claims 59 and 58
Regarding the § 103 rejection of claim 58 over the combined
teachings of JP ’518, Schwertfeger and Burchill II and the § 103(a) rejection
of claim 59 over the combined teachings of Schwertfeger in view Burchill II,
the Examiner relies on Burchill II to teach the use of stabilizers including
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those recited in claims 58 and 59, to permit aerogels to be dispersed into a
coating material (Ans. 5—6, 10).
With respect to claim 58 that depends from claim 1 to a composite
material, the Examiner does not explain why the combined teachings of JP
’518, Schwertfeger, and Burchill II would have suggested or taught a
composite comprising an aerogel having a water-based coating and
continuous phase organic polymer that differs from the water-based coating.
The Examiner finds that JP ’518 teaches a continuous phase material and
Schwertfeger is relied upon to teach coated aerogel particles with a coating
so that the combination would have suggested two different coatings (Ans.
21). JP ’518 teaches a continuous phase polymer and so does Schwertfeger
(Ans. 14, 21). Indeed, Schwertfeger teaches that the aerogel particles are
connected via the adhesive either by point-to-point or by being embedded in
a matrix of polymer by mixing the aerogel particles with the adhesives (col.
7,11. 24—36). Accordingly, the Examiner has not explained how JP ’518 and
Schwertfeger would have suggested combining Schwertfeger’s connected
aerogel coated particles with JP ’518’s matrix coating polymer to include
two different coatings where the coated aerogels are dispersed amongst the
continuous phase polymer as recited in claim 58 via its dependency on claim
1. Based on the Examiner’s explanation of the rejection of claim 1 from
which claim 58 depends on pages 20 and 21 of the Answer, the combination
of JP ’518, Schwertfeger, and Burchill II would have suggested having a
layer with aerogel particles in it (i.e., Schwertfeger’s coated aerogel
particles) and JP ’518’s polymer layer would be another layer of polymer.
Schwertfeger does teach forming individually coated particles, but those
particles are taught to be joined together in a mold (col. 7,11. 24—31). In
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Application 12/105,629
other words, Schwertfeger does not teach to simply form stand-alone coated
aerogel particles that could then be coated so that the coated aerogel
particles are dispersed amongst JP ’518’s polymer. Therefore, we reverse
the Examiner’s § 103 rejection of claim 58.
Regarding claim 59, which depends from claim 25 directed to a
coated aerogel, the Examiner finds that the claim to a coated aerogel does
not require different coatings for the continuous phase polymer and the
water-based coating (Ans. 14). Claim 25 requires a coated aerogel having,
inter alia, a water-based polymer coating comprising a surfactant or wetting
agent applied to the aerogel. The claim 25 recitation of a continuous phase
polymer being an organic polymer does not further limit the coated aerogel
as it is not part of the coated aerogel. The recitation in claim 25 of a water-
based coating being capable of preventing the organic polymer from
entering into the inner pore volume of the aerogel is a functional limitation.
All that is required to meet such a limitation is that the prior art coated
aerogel must be capable of performing that function.
Schwertfeger teaches that the aerogels may be embedded in a
continuous binder (col. 7,11. 32—36). Schwertfeger describes the aerogels as
being “[n] on-aqueous” but further explains that “[n] on-aqueous” includes
binder compositions having less than 50% water by weight (col. 4,11. 53—
58). Although Appellants contend that Schwertfeger discloses that the
binder is non-aqueous, Appellants do not define the phrase “water-based” in
the Specification that would exclude a binder which is about half water by
weight (App. Br. 15). We agree with the Examiner that the broadest
reasonable interpretation in light of the Specification does not exclude
Schwertfeger’s binder that may include 49.9% water.
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Application 12/105,629
Schwertfeger discloses that the adhesives are selected that do not
essentially penetrate into the interior of the porous aerogel particles (col. 5,
11. 21—25). Schwertfeger teaches that the aerogels are usually made to be
hydrophobic to prevent water adsorption (col. 4,11. 11—12, 34—36).
Therefore, Schwertfeger teaches coating aerogels with a binder that may
have a large percentage by weight water and the adhesive should not
penetrate into the aerogel. Although we agree with Appellants that
Schwertfeger does not teach a wetting agent, Burchill II teaches that using a
surfactant as recited in claim 59 permits better distribution of the aerogels
(Ans. 5—6).
Based on these teachings and the properly construed claim, we find
that the combined teachings of Schwertfeger and Burchill II would have
suggested using a surfactant as recited in claim 59 to permit better
distribution of the coated aerogel particles in Schwertfeger’s coating while
preventing the coating from fully penetrating into the aerogel. Once
Schwertfeger’s aerogel particles are coated by the composition, the coated
aerogel particles would have been capable of preventing another polymer
from penetrating into the inner pore volume of the aerogel because the
aerogels would have been completely encapsulated.
On this record, we affirm the Examiner’s § 103 rejection of claim 59
over Schwertfeger in view of Burchill II.
Claim 59 depends from claim 25. The Examiner’s rejection of claim
59 constitutes an implied rejection of broader independent claim 25. See
Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)
(When the subject matter of dependent claims is determined to have been
obvious, the broader subject matter of the claims from which they depend
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Application 12/105,629
must also be determined to have been obvious.). Therefore, independent
claim 25 is also obvious over the combination of Schwertfeger and Burchill
II.
DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED-IN-PART
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