Theodore Baumann et al.

Patent Trials and Appeals Board

Dec 10, 2020

2020000966 (P.T.A.B. Dec. 10, 2020)

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.
13/457,338 04/26/2012 Theodore F. Baumann LLNLP102/IL-12206 7522
78980 7590 12/10/2020
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
SHAIKH, MERAJ A
ART UNIT PAPER NUMBER
3763
NOTIFICATION DATE DELIVERY MODE
12/10/2020 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):
llnl-docket@llnl.gov
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE F. BAUMANN, JOE H. SATCHER JR., and
JOSEPH C. FARMER
Appeal 2020-000966
Application 13/457,338
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES C. HOUSEL,
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2, 4–6, 8–11, 13–15, 18, 19, 25, and
28–40. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Lawrence Livermore
National Security, LLC. Appeal Brief (“Appeal Br.”) filed April 18, 2019, 2.
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CLAIMED SUBJECT MATTER
The invention relates to adsorption cooling systems using carbon
aerogel. Specification (“Spec.”) filed April 26, 2012, Title, 1.2 Appellant
discloses that adsorption-based cooling systems, although simple and easy to
maintain, are expensive and relatively inefficient. Id. ¶ 4. Therefore,
Appellant discloses that it would be beneficial to reduce costs associated
with using highly adsorptive materials for adsorptive cooling applications by
using carbon aerogel and substrate combinations with improved
adsorption/desorption performance. Id. Appellant discloses that the substrate
includes a plurality of microchannels that provide ingress and egress paths
for a refrigerant. Id. ¶ 7.
Claim 2, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claimed subject matter:
2. A product, comprising:
a highly adsorptive structure comprising:
a substrate; and
a carbon aerogel adhered to the substrate,
wherein the carbon aerogel is characterized by having
physical characteristics of in-situ formation on the substrate,
wherein the carbon aerogel is further characterized by a
surface area of greater than 3000 m2/g; and
wherein the substrate comprises a plurality of
microchannels; and
wherein the physical characteristics of in situ formation on
the substrate comprise the carbon aerogel being adhered to
interior and exterior surfaces of the plurality of microchannels.

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
October 25, 2018, the Examiner’s Answer (“Ans.”) dated September 9,
2019, and the Reply Brief (“Reply Br.”) filed October 31, 2019.
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Application 13/457,338

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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Maus et al. (“Maus”) US 5,157,010 Oct. 20, 1992
Unger et al. (“Unger”) US 2004/0265393 A1 Dec. 30, 2004
Minhas et al. (“Minhas”) US 2010/0132359 A1 June 3, 2010
Hwang et al. (“Hwang”) US 2011/0067426 A1 Mar. 24, 2011
Farmer (“Farmer036”) US 2011/0100036 A1 May 5, 2011
Farmer et al.
(“Farmer202”)
US 2011/0143202 A1 June 16, 2011
Zhai et al. (“Zhai”) US 2011/0224376 A1 Sept. 15, 2011
Worsley et al.
(“Worsley”)
US 2012/0028798 A1 Feb. 2, 2012
Lockledge et al.
(“Brownawell”)3
WO 2006/127652 A2 Nov. 30, 2006

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
1. Claims 2, 4–6, 8–10, 13–15, 28, 37, and 38 as unpatentable
over Hwang in view of Farmer202 and Brownawell;
2. Claim 5 as unpatentable over Hwang in view of Farmer202
and Brownawell, and further in view of Zhai;
3. Claim 11 as unpatentable over Hwang in view of Farmer202
and Brownawell, and further in view of Maus;

3 Although the first named inventor of this international patent publication is
Scott P. Lockledge, both the Examiner and Appellant refer to this reference
using the last name of the second named inventor, Darrell W. Brownawell.
In order to maintain consistency within the record of this case, as well as
with the records of the related cases identified by Appellant (Appeal Br. 3),
we likewise refer to this publication as “Brownawell.”
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4. Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable
over Hwang in view of Farmer202 and Brownawell, and
further in view of Worsley;
5. Claim 31 as unpatentable over Hwang in view of Farmer202
and Brownawell, and further in view of Minhas;
6. Claim 39 as unpatentable over Hwang in view of Farmer036
and Brownawell, and further in view of Zhai;
7. Claims 32 and 34 as unpatentable over Hwang in view of
Farmer036 and Brownawell, and further in view of Worsley;
8. Claim 33 as unpatentable over Hwang in view of Farmer036
and Brownawell, and further in view of Maus and Unger;
9. Claims 35 and 36 as unpatentable over Hwang in view of
Farmer202 and Brownawell, and further in view of
Farmer036;
10. Claims 18 and 19 as unpatentable over Hwang in view of
Farmer036 and Brownawell, and further in view of Worsley;
and
11. Claims 25 and 40 as unpatentable over Hwang in view of
Farmer036 and Brownawell, and further in view of Worsley
and Zhai.
OPINION
Rejection 1
The Examiner rejects claims 2, 4–6, 8–10, 13–15, 28, 37, and 38
under 35 U.S.C. § 103(a) as unpatentable over Hwang in view of Farmer202
and Brownawell. A complete statement of this rejection is set forth in the
Final Office Action, pages 2–7.
The Examiner finds that Hwang teaches a product comprising a highly
adsorptive structure as recited in claim 2, except for explicitly teaching a
carbon aerogel adhered to the substrate and having a surface area greater
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than 3000 m2/g and that the substrate comprises a plurality of
microchannels. Final Act. 2–3. Instead, the Examiner finds that Hwang
teaches an MOF (metal-organic framework) adhered to the substrate for
adsorbing and desorbing one or more refrigerants. Id. However, the
Examiner finds that Farmer202 teaches a carbon aerogel adhered to a
substrate having a high surface area. Id. at 3. The Examiner concludes that it
would have been obvious to substitute a carbon aerogel for Hwang’s MOF
because both Hwang and Farmer202 teach highly adsorptive structures with
substrates and “to achieve a predictable result of having a highly adsorptive
and porous product with capability of increasing the surface area by thermal
activation and to also have the capability of electrical conductivity.” Id.
Further, the Examiner finds that Brownawell teaches a substrate comprising
a plurality of microchannels, wherein a base is adhered to interior and
exterior surfaces of these microchannels. Id. The Examiner concludes that it
would have been obvious to have modified Hwang’s substrate to include
microchannels “in order to increase the surface area of the substrate to allow
greater volume of refrigerant to adhere to or pass through the substrate.” Id.
Appellant argues, inter alia, that Farmer202 fails to teach a carbon
aerogel having a surface area greater than 3000 m2/g. Appeal Br. 11–13, 15–
16, 21–22. In this regard, Appellant contends that conventional carbon
aerogels such as taught by Farmer202 exhibit surface areas an order of
magnitude less than required by claim 2. Id. at 11–12. In contrast to
Farmer202, Appellant asserts that the claimed carbon aerogel’s surface area
was obtained via supercritical drying followed by thermal activation. Id. at
12. Appellant also contends that the Examiner relies on impermissible
hindsight with respect to using thermal activation to increase the surface area
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of Farmer202’s carbon aerogel, because Farmer202 fails to teach or suggest
such thermal activation. Id. at 19–20. In addition, although Appellant notes
that Hwang’s MOF may exhibit surface areas up to 10,000 m2/g, Appellant
contends that this teaching fails to teach that other materials such as carbon
aerogels also may exhibit such surface areas, much less how to obtain them.
Id. at 12. Appellant further contends that substitution a carbon aerogel in
Hwang would change Hwang’s principle of operation and render Hwang
unsatisfactory for its intended purpose. Id. at 16–17.
Appellant’s arguments are persuasive of reversible error. Although the
Examiner determines that it would have been obvious to have used
Farmer202’s carbon aerogel in place of the MOF in Hwang such that the
carbon aerogel is similarly adhered to the substrate “to increase the surface
area by thermal activation” (Ans. 5), the Examiner fails to make any finding,
or otherwise direct our attention to any prior art teaching that thermal
activation of a carbon aerogel was known and would increase the aerogel’s
surface area to greater than 3000 m2/g as required in claim 2. Instead, the
Examiner cites to Hwang, paragraphs 83–85 and claim 18, as teaching “the
technique of activating carbon to achieve high surface areas.” Id. at 6.
However, Hwang, paragraph 83, merely mentions that the adsorbent
may include a dehumidifying agent such as, among other agents, activated
carbon. Hwang ¶ 83. Hwang, paragraph 85, discusses the surface areas of
porous organic-inorganic hybrid materials, indicating that in some
embodiments, these materials may have surface areas up to 10,000 m2/g.
Id. ¶ 85. Thus, in the sections the Examiner cites, Hwang fails to discuss
techniques of activating carbon to achieve high surface areas, much less
activation of carbon aerogels to achieve surface areas of greater than 3000
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m2/g. As such, Appellant has identified error in the Examiner’s finding in
this regard.
Appellant also argues that Brownawell teaches that the particles
having micropores (which the Examiner finds to be equivalent to the recited
plurality of microchannels) are the substrate and may be MOF. Appeal
Br. 8–9. Modifying the Hwang and Farmer202 combination in view of
Brownawell, according to Appellant, would not result in a substrate on
which a carbon aerogel is adhered and wherein the substrate comprises
microchannels. Id. at 9.
This argument is also persuasive of reversible error. The Examiner’s
rejection is based on substitution of Hwang’s MOF which is adhered to a
corrugated substrate with a carbon aerogel as taught by Farmer202, and
modification of Hwang’s corrugated substrate to include microchannels
(micropores) as taught by Brownawell. Final Act. 2–3. However, as
Appellant argues, Brownawell’s micropores are provided in a substrate that
itself is the MOF. See Brownawell ¶ 165. Thus, at best, Brownawell would
have suggested to the ordinary artisan to provide micropores in Hwang’s
MOF, not in Hwang’s substrate on which the MOF or carbon aerogel is
adhered.
Therefore, on the record before us, we are persuaded that Appellant
has identified reversible error in the Examiner’s rejection because the
combined teachings of Hwang, Farmer202, and Brownawell would not have
resulted in a highly adsorptive structure including a substrate having a
plurality of microchannels and a carbon aerogel having a surface area greater
than 3000 m2/g adhered to the substrate.
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Accordingly, we do not sustain the Examiner’s obviousness rejection
of claims 2, 4–6, 8–10, 13–15, 28, 37, and 38 as unpatentable over Hwang in
view of Farmer 202 and Brownawell.
Rejections 2–5 and 9
In each of Rejections 2–5 and 9, the Examiner relies on the same
combination of Hwang, Farmer202, and Brownawell as in Rejection 1. The
Examiner does not rely on the additional prior art references used in these
references to remedy the deficiencies in this combination discussed above.
Accordingly, we likewise do not sustain the Examiner’s obviousness
rejections of claims 5, 11, 29–31, 35, and 36 over Hwang, Farmer202, and
Brownawell, combined with one or more of Zhai, Maus, Worsley, Minhas,
and Farmer036.
Rejections 6–8
The Examiner rejects claim 39 as unpatentable over Hwang in view of
Farmer036 and Brownawell, and further in view of Zhai. The Examiner also
rejects claims 32 and 34 as unpatentable over Hwang in view of Farmer036
and Brownawell, and further in view of Worsley, and rejects claim 33 as
unpatentable over Hwang in view of Farmer036 and Brownawell, and
further in view of Maus and Unger. A complete statement of these rejections
is set forth in the Final Office Action, pages 7, 8, and 19–22, respectively.
Although the Examiner substitutes Farmer036 for Farmer202 in the
statements of these rejections, indicating that this combination was applied
to claim 2, Farmer036 was not applied to claim 2 nor does the Examiner
discuss how Farmer036 is combined with Hwang and Brownawell to arrive
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at the claimed invention.4 To the extent that the Examiner intended this
rejection to maintain its reliance on Farmer202, and not on Farmer036, the
Examiner does not rely on Zhai, Worsley, Maus, and Unger to remedy the
deficiencies in this combination discussed above. Accordingly, we likewise
do not sustain the Examiner’s obviousness rejection of claims 32–34 and 39
over Hwang, Farmer202, and Brownawell, combined with one or more of
Zhai, Worsely, Maus, and Unger.
Rejection 10
The Examiner rejects claims 18 and 19 as unpatentable over Hwang in
view of Farmer036 and Brownawell, and further in view of Worsley. A
complete statement of this rejection is set forth in the Final Office Action,
pages 9–13.
The Examiner finds that Hwang teaches an adsorptive cooling system
comprising first and second highly adsorptive structures, a cooling unit, and
a circulation system configured to circulate a refrigerant to and from at least
one of the structures from and to the cooling unit, each structure comprising
a substrate and an MOF coupled to at least one surface of the substrate for
adsorbing/desorbing a refrigerant. Final Act. 9–10. The Examiner also finds
that Hwang teaches that the MOF (porous organic-inorganic material) may
include activated carbon and has a surface area greater than 3000 m2/g, and

4 We note that Farmer036, unlike Farmer202, discloses carbon aerogels
having surface areas over 3000 m2/g achieved by thermal activation of the
aerogel. Farmer036. Nonetheless, even if Farmer036 were relied on instead
of Farmer202 in the rejection of claim 2, such a combination fails to remedy
the deficiency discussed above regarding the modification by Brownawell to
the Hwang/Farmer036 structure that would provide micropores in the carbon
aerogel, rather than in the substrate as required by claim 2.
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further that the substrates comprise a plurality of microchannels or grooves
in a surface of the substrate which provide ingress and egress paths for the
refrigerant and to which the MOF is coupled. Id. at 10. However, the
Examiner acknowledges that Hwang fails to teach carbon aerogel adhered to
the substrates. Id. Further, the Examiner finds that Hwang fails to teach a
blocking system configured to block the highly adsorptive structure from
receiving thermal energy from the thermal energy source, wherein the
blocking system is a louvered shade, a shutter shade, or an electronic light
blocking system. Id. at 10–11. In addition, in spite of finding that Hwang
teaches a plurality of microchannels with the MOF adhered to the interior
and/or exterior surfaces thereof, the Examiner finds that Hwang fails to
teach a plurality of microchannels, wherein the aerogel is adhered to interior
and exterior surfaces of the microchannels. Id. at 12.
For the carbon aerogel and blocking system, the Examiner finds that
Farmer036 teaches a carbon aerogel adhered to a substrate, wherein the
carbon aerogel is a porous material of high surface area and the substrate
comprises a plurality of microchannels to which the aerogel is adhered. Final
Act. 11. The Examiner also finds that Farmer036 teaches a blocking system
configured to block the highly adsorptive structure from receiving thermal
energy from the thermal energy source, wherein the blocking system is a
louvered shade, a shutter shade, or an electronic light blocking system. Id.
The Examiner concludes that it would have been obvious to have substituted
a carbon aerogel for the MOF in Hwang’s highly adsorptive structures
because both MOF and carbon aerogels are highly adsorptive structures with
surface areas greater than 3000 m2/g. Id. In addition, the Examiner
concludes it would have been obvious to provide Hwang with a louvered
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shutter blocking system as taught in Farmer036 “in order to prevent
overheating and allow selective heating when required by the system
operation.” Id. at 12.
The Examiner further finds that Brownawell teaches a substrate
comprising a plurality of microchannels, with a base adhered to interior and
exterior surfaces of these channels. Final Act. 12. The Examiner concludes
that it would have been obvious to have provided Hwang’s microchannels as
microcapillaries for the substrate “in order to accommodate certain number
of flow channels in a small area to increase the surface area.” Id.
Finally, the Examiner acknowledges that Hwang fails to teach carbon
aerogels having bimodal porosity. Final Act. 12. For this feature, the
Examiner finds that Worsley teaches a highly adsorptive structure
comprising a carbon aerogel adhered to a substrate, wherein the aerogel has
a bimodal porosity with a first set of micropores having an average diameter
of greater than about 50 nm and a second set of micropores having an
average diameter of less than 2 nm. Id. at 12–13. The Examiner concludes
that because Hwang, Farmer036, and Worsley each teach highly adsorptive
structures, it would have been obvious to have provided the
Hwang/Farmer036 carbon aerogel with a bimodal porosity to allow for
efficient diffusion of CVD gases through the aerogel during growth. Id. at
13.
Appellant argues that the prior art of record fails to teach adhering a
carbon aerogel to a substrate, wherein the aerogel has a surface area greater
than 3000 m2/g, contrary to the Examiner’s findings. Appeal Br. 31.
Appellant contends that no skilled artisan would have been motivated to
attempt, nor reasonably expect, to increase surface area, porosity, or
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conductivity of Hwang’s highly adsorptive structure by substituting the
MOF for Farmer036’s carbon aerogel. Id. Appellant urges that the same
arguments raised against claim 2 in this regard apply equally to this
rejection. Id. at 32. As such, Appellant contends that the proposed
combination fails to teach first and second highly adsorptive structures, each
comprising a substrate and a carbon aerogel adhered to the substrate. Id.
Appellant’s arguments are not persuasive of reversible error as to this
rejection. Initially, we note that although Farmer036 fails to teach adhering a
carbon aerogel to a substrate, the rejection is based on a substitution of
Farmer036’s carbon aerogel for Hwang’s MOF in Hwang’s highly
adsorptive structure. Because Hwang’s highly adsorptive structure
comprises the MOF adhered to a substrate, such a substitution would result
in a carbon aerogel adhered to a substrate. Moreover, we note that Hwang’s
MOF and Farmer036’s carbon aerogel both serve similar functions in similar
apparatus, i.e., to adsorb/desorb refrigerant in adsorptive cooling systems.
Therefore, it would generally have been obvious to substitute a known
adsorptive structure (Farmer036’s carbon aerogel) for another adsorptive
structure (Hwang’s MOF) for the same purpose, where, as here, the
combination yields no more than a predictable result. See, e.g., KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”); In re Fout, 675 F.2d 297, 301 (CCPA 1982).
With regard to Appellant’s argument regarding the carbon aerogel’s
surface area, we note, unlike Farmer202, that Farmer036 specifically teaches
not only a carbon aerogel having a surface area greater than 3000 m2/g, but
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also teaches that such is obtained by thermal activation similarly to
Appellant’s thermal activation process. See Farmer036 ¶¶ 58 (“carbon
aerogels can be made with surface areas ranging from 600 to 3125 square
meters per gram”); 59 (“carbon aerogel with a demonstrated active surface
area of 3,125 square meters per gram”); 73–74, 85.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 18 and 19 over the combination of Hwang, Farmer036, Brownawell,
and Worsley.
Rejection 11
The Examiner rejects claims 25 and 40 as unpatentable over Hwang in
view of Farmer036 and Brownawell, and further in view of Worsley and
Zhai. A complete statement of this rejection is set forth in the Final Office
Action, pages 13–18.
Appellant argues that the Examiner’s obviousness rejection of
claim 40 “suffers from the same deficiencies as set forth above with respect
to claim 18.” Appeal Br. 32. As to claim 25, Appellant’s arguments are the
same as raised against the Examiner’s obviousness rejection of claims 18
and 19. Id. at 33. However, as discussed above, Appellant’s arguments failed
to identify reversible error in the obviousness rejection of claim 18.
Accordingly, we likewise sustain the Examiner’s obviousness rejections of
claims 25 and 40.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject
claims 2, 4–6, 8–11, 13–15, and 28–39 is reversed. However, the
Examiner’s decision to reject claims 18, 19, 25, and 40 is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
2, 4–6, 8–10,
13–15, 28,
37, 38
103(a) Hwang, Farmer202,
Brownawell
2, 4–6, 8–10,
13–15, 28,
37, 38
5 103(a) Hwang, Farmer202,
Brownawell, Zhai
5
11 103(a) Hwang, Farmer202,
Brownawell, Maus
11
29, 30 103(a) Hwang, Farmer202,
Brownawell,
Worsley
29, 30
31 103(a) Hwang, Farmer202,
Brownawell, Minhas
31
39 103(a) Hwang, Farmer036,
Brownawell, Zhai
39
32, 34 103(a) Hwang, Farmer036,
Brownawell,
Worsley
32, 34
33 103(a) Hwang, Farmer036,
Brownawell, Maus,
Unger
33
35, 36 103(a) Hwang, Farmer202,
Brownawell,
Farmer036
35, 36
18, 19 103(a) Hwang, Farmer036,
Brownawell,
Worsley
18, 19
25, 40 103(a) Hwang, Farmer036,
Brownawell,
Worsley, Zhai
25, 40
Overall
Outcome
18, 19,
25, 40
2, 4–6, 8–11,
13–15, 28–
39

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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).
AFFIRMED IN PART