Ex Parte Williams et al

Patent Trial and Appeal Board

Sep 29, 2016

12834416 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/834,416 07/12/2010 Martha K. WILLIAMS
25190 7590 09/29/2016
NASA JOHN F. KENNEDY SPACE CENTER
MAIL CODE: CC-A/OFFICE OF CHIEF COUNSEL
ATTN: PATENT COUNSEL
KENNEDY SP ACE CENTER, FL 32899
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KSC-12890-2-DIV 8446
EXAMINER
GULAKOWSKI, RANDY P
ART UNIT PAPER NUMBER
1766
MAILDATE DELIVERY MODE
09/29/2016 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
PATENT TRIAL AND APPEAL BOARD
Ex parte MARTHA K. WILLIAMS, TRENT M. SMITH, JAMES E. FESMIRE,
LUKE B. ROBERSON, and LANETRA M. CLAYTON
Appeal2014-008666
Application 12/834,4161
Technology Center 1700
Before RICHARD E. SCHAFER, CATHERINE Q. TIMM, and
DONNA M. PRAISS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is the United States of America
as represented by the Administrator of the National Aeronautics and Space
Administration (NASA). Br. 3.
Appeal2014-008666
Application 12/834,416
Introduction
Applicants seek review under 35 U.S.C. § 134(a) of the Examiner's decision
finally rejecting claims 1-13, 15, 17, and 18. We affirm.
The Rejections and Prior Art
In the Answer, the Examiner maintains the grounds of rejection listed below.
The Examiner based each on 35 U.S.C. § 103(a) (pre-AIA):
1. The subject matter of claims 6-9, 11, 15, and 18 would have
been obvious over the teachings of Van Rooy2 (Ans. 2; Final Rej. 2);
and
2. The subject matter of claims 1-13, 17, and 18 would have been
obvious over the teachings of Parrish3 (Ans. 3; Final Rej. 2).
The Examiner withdrew the rejection of claim 10 over the teachings of Van Rooy.
Ans. 3. Claims 14 and 16 stand objected to as being dependent upon a rejected
base claim. Final Rej. 3; Br. 3.
The Claimed Subject Matter
The invention relates to a composite material in which "a small amount of
aerogel, e.g., 5%" is mixed with a polymer to "significantly decrease[] the thermal
conductivity of the polymer material (i.e., makes it a better insulator) without
substantially changing the strength of the unmodified polymer." Spec. 2.
Claims 1 and 6, reproduced from the Claims Appendix, illustrate the
invention (bracketed matter added):
1. An article of manufacture comprising:
[1] a composite material comprising (a) an aerogel blended with
(b) a thermoplastic polymer material;
[2] wherein the weight ratio of the aerogel to thermoplastic
polymer in the composite material is less than 20: 100; and
2 US 2006/0194048 Al published Aug. 31, 2006.
3 US 3,584,090 issued June 8, 1971.
2
Appeal2014-008666
Application 12/834,416
[3] wherein the composite material has a thermal conductivity
less than 7 5% of the thermal conductivity of the thermoplastic
polymer material and has a yield strength that differs by no more than
15% from the yield strength of the thermoplastic polymer material;
[ 4] wherein the article is a seal, gasket, pipe, tube, or container
for transporting or containing fluids or gases and is adapted for use at
temperatures greater than 100°C.
6. An article of manufacture comprising:
[1] a composite material comprising (a) an aerogel blended with
(b) a thermoplastic polymer material;
[2] wherein the weight ratio of the aerogel to thermoplastic
polymer in the composite material is less than 20: 100;
[3] wherein the composite material and the polymer material
each have a storage modulus, and the storage modulus of the
composite material at 223 K is less than 7 5% of the storage modulus
of the polymer material at 223 K;
[ 4] wherein the article is adapted for use at less than 0°C.
Br. 16-17.
Discussion
I.
Applicants assert that the Examiner erred in finding that Van Rooy's
synthetic support containing an aero gel concentration of 0.9% by weight would
inherently contain the properties recited in claim 6. Specifically, Applicants
contend the Examiner erred by
making the assertion that he is entitled to assume that any composition
containing any thermoplastic polymer and any amount of aerogel has
all of the properties recited in the claims, even where the compositions
in the prior art are quite different from those shown by the Applicants
to have the properties recited in the claims.
Id. at 8. According to Applicants, the Examiner cannot presume Van Rooy's
composite possesses the properties recited in the claims unless Van Rooy' s
3
Appeal2014-008666
Application 12/834,416
composite is shown to be identical or substantially identical to the examples in
Applicants' Specification having a 5% aero gel content. Id. at 7.
We disagree with Applicants' general contention that the Examiner may not
rely upon the inherent physical properties of two materials, such as aero gel and a
polyamide in the claimed proportions, unless the prior art composition identically
matches an example in an Applicants' Specification. We do not read the case law
that narrowly. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("Where, as
here, the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can require
an applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product."); see also In re Spada, 911 F.2d
705, 708 (Fed. Cir. 1990) ("when the PTO shows sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.").
In Best, the predecessor to our reviewing court stated that the substantial
identity comparison is to the claimed product, not a specific example in the patent
application disclosure as Applicants asserts. Best, 562 F.2d at 1255; cf Br. 7 ("the
Examiner must make a prima facie case that the materials disclosed in the prior art
are identical or substantially identical to a specific embodiment shown to fall
within the scope of the claims."). In Spada, the Federal Circuit noted that "newly
discovered properties can be the basis of claims to novel polymers," but, given the
chemical identity of Spada' s polymers and those of the cited prior art, the Court
found "no error, in science or in law, in the Board's holding that the products
appeared to be the same and thus, that Spada's products were not new." Spada,
911 F.2d at 709. In the present case, the Examiner has established the identity of
the claimed components in Van Rooy. The Examiner also has established Van
4
Appeal2014-008666
Application 12/834,416
Rooy' s proportions of these two components fall within the range required by
claim 6. Therefore, we are not persuaded that the Examiner erred in finding that
Van Rooy's product and the claimed product appear to be the same.
As explained in Best, "the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the characteristics of his
claimed product." Id. (citation omitted). The fairness of shifting the burden to
Applicants "is evidenced by the PTO' s inability to manufacture products or to
obtain and compare prior art products." Id. (citation omitted).
Applicants do not dispute that Van Rooy's composite contains a
thermoplastic polymer and aerogel as required by paragraph [1] of claim 6. Nor do
Applicants dispute that Van Rooy' s composite contains a weight ratio of aero gel to
thermoplastic polymer in an amount that is less than 20: 100 as required by
paragraph [2] of claim 6. Therefore, the Examiner's findings are not based on the
claimed properties being inherent in "any amount of aerogel," but, rather, the
claimed amount of aero gel. In addition, Applicants' statement that "the
compositions in the prior art are quite different from those shown by the
Applicants to have the properties recited in the claims" is not supported by the
record. The only difference identified by Applicants is the concentration of
aero gel. The examples in the Specification identified by Applicants (Br. 5 (citing
Spec. Table 5)) contain either 5% or 15% aerogel in a polyamide thermoplastic
polymer. Spec. i-f 45, Table 5. Applicants do not direct us to any evidence in this
record concerning the storage modulus properties of Van Rooy's polymer and
composite materials. Instead, Appellants provide only attorney argument that "[i]f
the decrease in storage modulus with aerogel content is linear" then "the Van Rooy
materials most likely do not meet the limitation of claim 6 'wherein ... the storage
modulus of the composite material at 223 K is less than 7 5% of the storage
5
Appeal2014-008666
Application 12/834,416
modulus of the polymer material at 223 K. '" Br. 6. Applicants' argument is
unpersuasive of error because the Specification, in fact, suggests that the decrease
in storage modulus with aero gel content is NOT linear. Spec. i-f 101 ("the
difference in storage modulus between the 15% aerogel and 5% aerogel composite
materials is smaller than the difference in storage modulus between the 5% aerogel
composite and virgin MXD6.").
In our view, the Examiner has met the Office's procedural burden of
establishingprimafacie that the subject matter of the claims would have been
obvious. The Examiner has notified Applicants of the teachings of Van Rooy, Van
Rooy's silence regarding the storage modulus property, and explained why it
appears that all of the claimed properties would be inherent to the claimed article.
Ans. 2. Specifically, the Examiner identifies in Van Rooy an aerogel concentration
of 1-5% by volume, which is not disputed to equate to a maximum of 0.9% by
weight, in a synthetic support made of polyester, polyamide, or polyacrylate or in a
coating material that can be polyurethane, vinyl, acrylate, or silicone. Id. (citing
Van Rooy claims 1, 4---6). The Examiner's fact findings are further supported by
paragraphs 23 through 25 in Van Rooy. Regarding the thermal properties of Van
Rooy' s polymer and composite, the Examiner states:
Based on the fact that the elements disclosed by the reference,
and their respective amounts read on the present claims; and the fact
that the present specification does not give any special guidance on
how such claimed thermal conductivity and yield strengths are
obtained from the claimed article, other than merely meeting the
structural limitations of the claim, it would appear that all claimed
properties would be inherent to the claimed article.
Ans. 2.
We have independently reviewed the rejected claims and the references. We
see no manifest basis for questioning the Examiner's findings. Applicants have not
6
Appeal2014-008666
Application 12/834,416
directed us to any evidence in support of non-obviousness. For the most part
Applicants merely contend that the Examiner's conclusion on obviousness is in
error as a matter of law without providing evidence to suggest that the Examiner's
rejection incorrectly presumes the claimed properties of the composite are
inherently present in Van Rooy's product. As noted by the Examiner, there is no
minimum concentration of aerogel disclosed by Applicants for meeting the
functional limitations of claim 6. Ans. 3. Absent such a teaching from the
Specification or independent testing by Applicants, there is no evidence in this
record to suggest that the functional limitation would not be expected to flow
naturally from Van Rooy's product.
Applicants' general contention that the Examiner erred as a matter of law in
finding that it appears that all the claimed properties would be inherent to the
claimed article as disclosed in Van Rooy is not persuasive.
II.
With respect to independent claim 6 and dependent claims 7 and 8,
Applicants additionally contend that Van Rooy's composite is directed to artificial
hair and asserts, without support, that "[a]rtificial hair is not an article adapted for
use below 0°C as is recited in claim 6, and certainly not an article adapted for use
below -50°C as is recited in claim 7 or below -100°C as recited in claim 8." Br. 8-
9. Van Rooy discloses the article for "[i]mproved artificial hair or doll's hair."
Van Rooy, Abstr. To the extent that Applicants argue that the use of the claimed
article as artificial hair in Van Rooy is distinguishable from the use of the claimed
article for some other purpose at the claimed temperatures, Applicants' argument is
unpersuasive. "It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable." In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). To the extent that
7
Appeal2014-008666
Application 12/834,416
Applicants argue that artificial hair, such as on a doll, is not suitable for use at
temperatures less than 0°C, we are not persuaded because that is a common
weather condition under which a doll would be expected to exist. Without support
for this argument, we likewise are not persuaded by Applicants' argument as it
pertains to the temperatures recited in claims 7 and 8. In any event, Applicant has
not shown that Van Rooy's "doll hair" compositions do not have the required
properties. As we noted above, the PTO does not have facilities to manufacture
the compositions claimed and those described in the prior art to compare their
respective properties.
We affirm the Examiner's decision rejecting claims 6, 7 and 8 over Van
Rooy.
III.
With respect to independent claim 6, Applicants also argue that the
Examiner erred in finding that Parrish's polypropylene ultramicrocellular foam
containing 0.5-2.0% by weight silica aerogels would inherently contain the
properties recited in claim 6. Br. 13-14. Specifically, Applicants contend the
Examiner erred by providing "no substantive response to [Applicants'] argument
and evidence." Id. at 14. Applicants' evidence is a Rule 132 Declaration dated
May 6, 2013 by named inventors Martha K. Williams and Trent M. Smith
("Deel.") describing their prior work with a closed cell polyurethane foam to
determine its storage modulus. Deel. i-f 13. According to the Declarants, the closed
cell polymer foam "had a storage modulus at low temperature about 500 times
lower than the neat MXD6." Id. The Declarants conclude that "[s]ince the storage
modulus of closed cell foams is determined primarily by the gas pressure in the
closed cells, additives, such as aerogel, will not have a large effect on the storage
modulus." Id. Applicants argue that the Rule 132 Declaration "is the best
8
Appeal2014-008666
Application 12/834,416
evidence available since the Parrish materials cannot be made by the Applicants"
and that the Examiner's statement that "the strength of a foam depends mainly on
its expansion ratio" confuses strength for storage modulus, which is a measure of
brittleness, but, nevertheless, does not negate that "the storage modulus does not
depend mainly on expansion ratio; it depends mainly on gas pressure in the closed
cells." Br. 14--15.
The Examiner responds that the foam in Parrish's examples is partially
collapsed which "means that the expansion ratio is very small. . . . The expansion
ratio of the foam appellants tested is not known. Therefore, there cannot be a true
comparison of the two foams." Ans. 4. Applicants do not provide an argument or
direct us to evidence establishing that the partially collapsed foam in Parrish's
examples does not inherently meet the storage modulus property of claim 6. We
agree with the Examiner that the evidence of record does not call into question the
Examiner's finding that Parrish's composite material of thermoplastic polymer and
aero gel in the claimed range and in the collapsed state of the examples would
inherently possess the storage modulus property required by claim 6. Applicants
concede that "the storage modulus of closed cell polymer foams is determined
primarily by the gas pressure in the closed cells." Br. 14. Therefore, Parrish's
examples with partially collapsed cells would be expected to have less gas pressure
in the closed cells than those not partially collapsed. The Rule 132 Declaration
does not address or compare the partially collapsed examples of Parrish to any
experimental data regarding storage modulus values. Applicants' argument is
premised on foams as composite materials not meeting the storage modulus
limitation. Id. at 13; Deel. i-f 11.
Applicants' arguments are unpersuasive of error by the Examiner, because
claim 6 does not preclude polymer foams. The term "comprising" is a term of art
9
Appeal2014-008666
Application 12/834,416
that means "including but not limited to." CIAS, Inc. v. Alliance Gaming Corp.,
504 F.3d 1356, 1360 (Fed. Cir. 2007). The use of the word "comprising" in the
first paragraph of claim 6 means that the composite must have at least the elements
of an aero gel and a thermoplastic polymer material in the ratio of 20: 100, but may
also include other ingredients such as a gas as found in a foam. The use of the
word "comprising" in the preamble of claim 6 means that the article of
manufacture may include a gas as found in a foam in addition to the composite
material of thermoplasatic polymer and aero gel. The fact that the Specification
discloses two-component embodiments does not limit the plain language of the
claims that are broader than the disclosed embodiments. Electro Med. Sys., S.A. v.
Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).
The Examiner's decision rejecting claim 6 over Parrish is affirmed.
IV.
With respect to independent claim 1, Applicants argue that Parrish's
composite materials containing aerogel and a thermoplastic polymer foam would
not inherently have a thermal conductivity less than 7 5% of the thermal
conductivity of the corresponding material lacking aero gel. Br. 13. Applicants
also argue that the Examiner erred in dismissing the Rule 132 Declaration, which
Applicants assert "is the best evidence available since the Parrish materials cannot
be made by the Applicants." Id. at 11. The Rule 132 Declaration describes the
inventors' "previously produced TEEK polymer foams having 18% silica aero gel"
and states that "[t]he composite in this case had 85% of the thermal conductivity of
the polymer material without the aerogel." Deel. i-f 8. According to Applicants,
[t]here is no reason to believe the Parrish materials meet the
limitations of the claims. As the Applicants wrote in their
Declaration, the Parrish materials are polymer foams mixed with
10
Appeal2014-008666
Application 12/834,416
aerogels. Yo1ymer foams already have gooa msurnuon, so adding
aerogel would not be expected to decrease the thermal conductivity of
the material by 25%, as is required under claims 1-5, 9, 13, and 17.
Br. 11. Applicants further argue that Parrish discloses foams with densities
ranging from "extremely low" to "relatively high density," but both high density
foams and low density foams, such as scuba diver's wet suits and dry suits, have
good insulation. Id. at 13.
The Examiner responds that the comparison of Parrish's composite material
to the foam Applicants tested "cannot be a true comparison of the two foams"
because "[i]t is not known how much aerogel is needed to reach the limitations
claimed by appellants and how much is the contribution of the air and how much is
the contribution of the aero gel." Ans. 4. The Examiner points out that "since air is
an excellent insulator, the thermal conductivity of the foam is going to be much
lower than that of the polymer." Id.
After reviewing the record, we agree with the Examiner that Parrish
discloses a composite material containing aerogel and a thermoplastic polymer
material in the proportions recited by claim 1 and, on that basis, would be expected
to have the thermoconductivity properties required by the claim. We also find
Applicants' evidence to be insufficient because it does not take into consideration
the collapsed materials of Parrish identified by the Examiner. Likewise,
Applicants' arguments are unpersuasive of error by the Examiner because claim 1
does not preclude polymer foams. Like claim 6, claim 1 also uses the word
"comprising" in its preamble and in its first paragraph. As discussed above in
connection with claim 6, that means that the composite must have at least the
elements of an aero gel and a thermoplastic polymer material in the ratio of 20: 100,
but may also include other ingredients such as a gas as found in a foam. Similarly,
the use of the word "comprising" in the preamble means that the article of
11
Appeal2014-008666
Application 12/834,416
manufacture may include a gas as found in a foam in addition to the composite
material of thermoplastic polymer and aero gel. The fact that the Specification
discloses two-component embodiments does not limit the plain language of the
claims that are broader than the disclosed embodiments. Electro Med. Sys., S.A.,
34 F.3d at 1054.
The Examiner's decision rejecting claim 1 over Parrish is affirmed.
v.
Applicants do not provide any arguments, in addition to those discussed
above, directed to the patentability of dependent claims 2-5, 7-13, 17, and 18 over
Parrish. Br. 10-15. We affirm the Examiner's rejection of those claims for the
above-stated reasons. With respect to claims 9, 11, 15, and 18 that depend from
claim 6, Applicants have not argued that the additional limitations of those claims
distinguish them over Van Rooy. Id. at 5-9. We affirm the Examiner's rejections
of those claims as well. See 37 C.F.R. § 41.37(c)(l)(iv).
Decision
Upon consideration of the appeal, and for the reasons given herein, it is
ORDERED that the decisions of the Examiner rejecting claims 1-13,
15, 17, and 18 because the subject matter of those claims was unpatentable
under 35 U.S.C. § 103(a) over the prior art are 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).
AFFIRMED
12