SECURITY, LLC, LAWRENCE LIVERMORE NATIONAL

Patent Trials and Appeals Board

Dec 2, 2020

2020000567 (P.T.A.B. Dec. 2, 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.
13/843,818 03/15/2013 Theodore F. Baumann LLNLP112/IL-12206B 6307
78980 7590 12/02/2020
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
12/02/2020 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.,
JOSEPH C. FARMER, and TODD BANDHAUER
Appeal 2020-000567
Application 13/843,818
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), Appellant appeals from the
Examiner’s decision to reject claims 2–4, 6–19, 22–26, and 28–30.1 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(a). Appellant identifies Lawrence Livermore National Security, LLC
as the real party in interest. Appeal Brief (“Appeal Br.”) filed March 19,
2019, 2.
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CLAIMED SUBJECT MATTER
The invention relates to adsorption cooling systems using carbon
aerogel. Specification (“Spec.”) filed March 15, 2013, Title, 1.2 Appellant
discloses that adsorption-based cooling systems, although simple and easy to
maintain, are expensive and relatively inefficient. Id. ¶ 5. 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. ¶ 8.
Claim 2, reproduced below from the Claims Appendix to 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 configured to selectively
adsorb and desorb one or more refrigerants; and
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.3

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.
3 Upon further examination, the Examiner and Appellant may wish to
consider whether the claims of this application conflict with the claims of
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Independent claims 18 and 25 each recites an adsorptive cooling
system comprising, among other things, first and second highly adsorptive
structures similar to that of claim 1, with first and second substrates
comprising a plurality of microchannels.
REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Maus et al.
(“Maus”)
US 5,157,010 Oct. 20, 1992
Huang US 6,946,164 B2 Sept. 20, 2005
Lockledge et al.
(“Lockledge”)
US 7,520,371 B2 Apr. 21, 2009
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”)4
WO 2006/127652 A2 Nov. 30, 2006

US Patent Application No. 13/457,338, US Patent Application No.
13/843,761, and US Patent No. 10,830,504.
4 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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REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1. Claims 12 and 17 under 35 U.S.C. § 112(b) as indefinite;
2. Claims 2, 4, 6, and 13–16 under 35 U.S.C. § 103(a) as
unpatentable over Hwang in view of Farmer202 and
Brownawell;
3. Claims 3, 26, and 29 under 35 U.S.C. § 103(a) as
unpatentable over Hwang in view of Farmer202 and
Brownawell, and further in view of Worsley;
4. Claims 7, 8, 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 and Lockledge;
5. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer202 and Brownawell, and further
in view of Huang;
6. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer202 and Brownawell, and further
in view of Huang and Lockledge;
7. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer202 and Brownawell, and further
in view of Worsley, Lockledge, and Huang;
8. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer202 and Brownawell, and further
in view of Zhai;
9. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer202 and Brownawell, and further
in view of Farmer036;
10. Claims 18 and 19 under 35 U.S.C. § 103(a) as unpatentable
over Hwang in view of Farmer036 and Brownawell, and
further in view of Maus and Zhai;
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11. Claims 22–24 under 35 U.S.C. § 103(a) as unpatentable over
Hwang in view of Farmer036 and Brownawell, and further
in view of Maus, Zhai, and Farmer202; and
12. Claims 25 and 28 under 35 U.S.C. § 103(a) as unpatentable
over Hwang in view of Farmer036 and Brownawell, and
further in view of Worsley, Huang, and Zhai.
OPINION
Rejection 1
The Examiner rejects claims 12 and 17 under 35 U.S.C. § 112(b) as
indefinite. In particular, the Examiner determines that “the substrates are
arranged so as to form an intermittent diamond structure in which peaks and
valleys thereof substantially align” is “very confusing because it is not clear
whether the two substrates align with each other or the corrugated structure
of each substrate aligns with another portion of the same substrate to form
the intermittent diamond structure.” Final Act. 2. The Examiner further
determines that it is not clear what the intermittent diamond structure entails
other than alignment of peaks and valleys. Id. Therefore, for examination
purposes, the Examiner interprets the above recitation as “each of the
substrate[s] forms a shape similar to a geometrically diamond shaped
structure with peaks and valleys aligning with each other.” Id.
Appellant first asserts that this rejection is moot with regard to claim
12 because this claim does not recite the limitation in question. Appeal Br. 7.
This argument is persuasive. Claim 12 depends directly from independent
claim 2 and requires that “the substrate comprises one or more of single-
walled carbon nanotubes (SWCNT) and multi-walled carbon nanotubes
(MWCNT).” In addition, the Examiner fails to respond to Appellant’s
assertion that this rejection is moot as to claim 12. Thus, as Appellant
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asserts, claim 12 neither recites the limitation in question nor depends from
claim 17. Accordingly, we do not sustain the Examiner’s indefiniteness
rejection as to claim 12.
Appellant next contends that claim 17 requires that “corrugations of
the substrate and corrugations of the second substrate are arranged so as to
form an intermittent diamond structure in which peaks and valleys of the
first corrugated substrate substantially align with peaks and valleys of the
second corrugated substrate.” Appeal Br. 7. Appellant contend that the
Specification and drawings provide ample guidance to inform a skilled
artisan of the metes and bounds of the recited intermittent diamond structure.
Id. In particular, Appellant directs attention to Specification paragraph 147
and Figure 15A as showing the corrugated substrates arranged to form the
intermittent diamond structure. Id. at 8. Appellant urges that this structure is
further clarified in that claim 17 specifically recites that the peaks and
valleys of the first corrugated substrate substantially align with peaks and
valleys of the second corrugated substrate. Id. at 9.
In response, the Examiner maintains that the structure shown in
Figure 15A is not equivalent to the intermittent diamond structure recited in
claim 17. Ans. 5. In addition, the Examiner finds that Figure 15A shows a
hexagonal shape with valleys (1504) separated by a distance from each other
between the two substrates (1502) and Hwang teaches a honeycomb
structure with hexagonal shapes formed by corrugated substrate sheets. Id. at
5–6.
“[W]e apply the approach for assessing indefiniteness approved by the
Federal Circuit in Packard, i.e., ‘[a] claim is indefinite when it contains
words or phrases whose meaning is unclear.”’ Ex parte McAward, No. 2015-
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006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
(quoting In re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014)). The
language in 35 U.S.C. § 112, second paragraph, “of ‘particular[ity]’ and
‘distinct[ness]’ indicates[] claims are required to be cast in clear—as
opposed to ambiguous, vague, indefinite—terms.” Packard, 751 F.3d at
1313.
Exact precision, however, is not required. The test for determining the
question of indefiniteness may be formulated as whether the claims “set out
and circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard
to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, an applicant is required to use language as precise
as the subject matter reasonably permits. Id.
In order to determine if a claim sets out and circumscribes a particular
area with a reasonable degree of precision and particularity, we analyze the
language of the claim “in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing
the ordinary level of skill in the pertinent art.” Moore, 439 F.2d at 1235.
Precision in claiming is not only dependent on the claim language itself; it is
dependent on the description of the invention in the specification. Although
a claim is not to be limited to specific embodiments set forth in the
specification when it is does not appear that an applicant desired the claim to
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be so limited, the specification is the single best guide to determining the
meaning of the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (en banc).
In this context and after considering the respective positions set forth
by the Examiner and Appellant, we determine on this record that claim 17 is
not indefinite based on the limitation in question. We first note that the
language of this limitation specifically states that the corrugations of the two
substrates are arranged so as to form the intermittent diamond structure and
that this structure is formed with the peaks and valleys of the first substrate
substantially align with the peaks and valleys of the second substrate. Taking
these two features together, it is clear that the two substrates align with each
other, rather than the corrugations of each substrate aligning with another
portion of the same substrate, so as to form the intermittent diamond
structure. Further, it is similarly clear that the alignment is such that the
peaks and valleys of the first substrate substantially align with the peaks and
valleys of the second substrate so as to form this intermittent diamond
structure.
Moreover, this construction is consistent with the Specification and
Figure 15A. Figure 15A is reproduced below:

Fig. 15A showing corrugated substrates in cross-section
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The Specification states, and Figure 15A, shows plural substrates 1502 may
be arranged to form intermittent diamond-like structures in which the peaks
1504 and valleys 1506 of adjacent substrates substantially align. See Spec.
¶ 147.
With regard to the Examiner’s view that Figure 15A shows a
hexagonal shape, we disagree. Although the corrugations of a corrugated
substrate may take a number of different forms, Figure 15A shows that the
corrugations have a triangular cross-section, rather than a trapezoid cross-
section, and thus, when arranged one over the other, forms intermittent
diamond structures, rather than hexagonal structures.
Accordingly, we do not sustain the Examiner’s indefiniteness
rejection as to claim 17.

Rejection 2
The Examiner rejects claims 2, 4, 6, and 13–16 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 3–7.
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
than 3000 m2/g and that the substrate comprises a plurality of
microchannels. Final Act. 3–4. Instead, the Examiner finds that Hwang
teaches an MOF adhered to the substrate for adsorbing and desorbing one or
more refrigerants. Id. at 3. However, the Examiner finds that Farmer202
teaches a carbon aerogel adhered to a substrate having a high surface area.
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Id. at 4. 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. 14–17, 22–
25. 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 14. 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 15. Appellant also
contends that the Examiner relies on impermissible hindsight with respect to
using thermal activation to increase the surface area of Farmer202’s carbon
aerogel, because Farmer202 fails to teach or suggest such thermal activation.
Id. at 22–23. 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, much less how to obtain, such surface areas. Id. at 15 Appellant
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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 19–20.
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. 6), the Examiner fails to make any finding,
or otherwise direct our attention to any prior art teaching, in support of
thermal activation of a carbon aerogel is known and will 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.”
Ans. 7.
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
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
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plurality of microchannels) are the substrate and may be MOF. Appeal
Br. 16–17. 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 17.
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. Ans. 8–9. 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. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claims 2, 4, 6, and 13–16 as
unpatentable over Hwang in view of Farmer202 and Brownawell.

Rejections 3–9
In each of Rejections 3–9, the Examiner relies on the same
combination of Hwang, Farmer202, and Brownawell as in Rejection 2. The
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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 3, 7–12, 17, 26, 29, and 30 over Hwang, Farmer202, and
Brownawell, combined with Worsley, Lockledge, Huang, Zhai, and
Farmer036.
Rejection 10
The Examiner rejects claims 18 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Hwang in view of Farmer036 and Brownawell, and
further in view of Maus and Zhai. A complete statement of this rejection is
set forth in the Final Office Action, pages 16–20.
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. 16–17. 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 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 17. However, the
Examiner acknowledges that Hwang fails to teach carbon aerogel adhered to
the substrates. Id. at 18. Further, in spite of finding that Hwang teaches
microchannels or grooves defined in the surface of the substrates for
providing ingress and egress paths for the refrigerant, the Examiner finds
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that Hwang fails to teach that “the microchannel[s] provide ingress path for
a refrigerant.” Id.
For the carbon aerogel, 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. 18–19. 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. at 19.
The Examiner further finds that Maus teaches microcapillaries for a
substrate providing ingress and egress paths for a refrigerant. Final Act. 19.
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. at 19–20.
In addition, the Examiner acknowledges that Hwang fails to teach
single and multi-walled carbon nanotubes (“SWCNT” and “MWCNT”,
respectively), but finds that Zhai teaches SWCNT and MWCNT bonded to
structures. Final Act. 20. The Examiner concludes that it would have been
obvious “to have provided SWCNTs and MWCNTs at the first and second
substrates as taught by Zhai to the first and second substrates of Hwang as
modified in order to have low molecular weight attached to the substrates.”
Id.5

5 Interestingly, this rejection relies on, but fails to discuss, Brownawell.
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Appellant argues that Farmer036 fails to teach adhering a carbon
aerogel to a substrate contrary to the Examiner’s finding. Appeal Br. 34. 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. at 35. Moreover, Appellant
argues that the rejection fails to establish the prerequisite factual findings
necessary to support an obviousness conclusion based on a “predictable
results” theory. Id. In particular, Appellant contends that there are no
findings that a skilled artisan could have combined the elements as claimed
by known methods, nor that each element merely performs the same
function as it does separately, such that the results of the combination were
predictable. Id. at 36. Appellant separately argues claim 19, in particular,
contending that, similar to the arguments raised against Rejection 2, the prior
art fails to teach carbon aerogels having surface areas greater than 3000
m2/g. Id. at 37.
Appellant’s arguments are not persuasive of reversible error as to this
rejection. Initially, we note that although Appellant is correct that Farmer036
fails to teach adhering a carbon aerogel to a substrate, such an error is
harmless because the rejection need not rely on this particular finding. The
Examiner’s 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.
With regard to Appellant’s separate argument that the rejection fails to
establish the prerequisite factual findings necessary to support an
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obviousness conclusion based on a “predictable results” theory, we note that
Appellant fails to argue any of the Examiner’s findings, reasoning, or
conclusions with any particularity. The Examiner has made extensive
specific factual findings and articulated reasoning with respect to the claims
subject to this rejection. Appellant merely restates the general requirements
of a proper obviousness analysis, asserts that certain aspects are missing, but
fails to identify why the specific findings of the Examiner are in error or
why these findings and attendant reasoning fails to support the conclusion of
obviousness.
Finally, turning 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 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, and 85.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 18 and 19 over the combination of Hwang, Farmer036, Brownawell,
Maus, and Zhai.
Rejection 11
The Examiner rejects claims 22–24 under 35 U.S.C. § 103(a) as
unpatentable over Hwang in view of Farmer036 and Brownawell, and
further in view of Maus, Zhai, and Farmer202. A complete statement of this
rejection is set forth in the Final Office Action, pages 21–22.
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Appellant argues that this rejection suffers from the same deficiencies
as set forth with regard to the rejection of claim 18. Appeal Br. 37. However,
as discussed above, Appellant fails to identify any deficiencies in the
rejection of claim 18 requiring cure by the additional reference to
Farmer202. Therefore, we sustain the Examiner’s obviousness rejection of
claims 22–24 over the combination of Hwang, Farmer036, Brownawell,
Maus, Zhai, and Farmer202.
Accordingly, we sustain the Examiner’s obviousness rejection of
claims 22–24.

Rejection 12
The Examiner rejects claims 25 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Hwang in view of Farmer036 and Brownawell, and
further in view of Worsley, Huang, and Zhai. A complete statement of this
rejection is set forth in the Final Office Action, pages 22–28.
With regard to claim 25, Appellant argues that no skilled artisan
would be reasonably motivated to combine and modify Hwang, Farmer036
and Brownawell, and further in view of Worsley, Huang, and Zhai in the
manner proposed in the rejection. Appeal Br. 38. In particular, Appellant
contends that the rejection fails to establish the prerequisite factual findings
necessary to support an obviousness conclusion based on a “predictable
results” theory. Id. Appellant asserts that there are no findings that a skilled
artisan could have combined the elements as claimed by known methods,
nor that each element merely performs the same function as it does
separately, such that the results of the combination were predictable. Id. at
38–39.
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This argument fails to identify reversible error in the Examiner’s
rejection of claim 25 because Appellant fails to argue any of the Examiner’s
findings, reasoning, or conclusions with any particularity. The Examiner has
made extensive specific factual findings and articulated reasoning with
respect to the claims subject to this rejection. Appellant merely restates the
general requirements of a proper obviousness analysis, asserts that certain
aspects are missing, but fails to identify why the specific findings of the
Examiner are in error or why these findings and attendant reasoning fails to
support the conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness rejection of
claim 25.
Claim 28 depends from claim 25 and further requires that the
adsorptive cooling system has no moving parts and requires no lubrication.
In relevant part, the Examiner finds that Hwang teaches a circulation system
which excludes moving parts. Final Act. 27–28. Specifically, the Examiner
states that the refrigerant moving passages of Hwang, Figure 8, excludes
refrigerant moving parts. Id. at 28.
With regard to claim 28, Appellant argues that the Examiner’s finding
that Hwang excludes moving parts is erroneous. Appeal Br. 39. Appellant
asserts that Hwang’s system includes a condenser and an evaporator, both of
which commonly include motors, as well as valves to create pressure
differences to ensure refrigerant flow. Id. at 40. Appellant further asserts that
the rejection of claim 28 does not rely on Farmer036 or any other art of
record for the exclusion of moving parts. Id. As such, Appellant urges that
the rejection of claim 28 warrants reversal. Id.
Appeal 2020-000567
Application 13/843,818

19
Appellant’s argument is persuasive of reversible error in the rejection
of claim 28, in part, because the Examiner fails to respond to this argument.
In addition, we note that the Examiner’s finding appears to indicate that the
Examiner’s interprets claim 28 as merely requiring that refrigerant moving
parts are excluded. However, claim 28 more broadly requires that the
adorptive cooling system excludes moving parts, not just the refrigerant
itself. The Examiner’s finding, even if correct, does not address whether
Hwang’s cooling system, including first and second highly adsorptive
structures, cooling unit, and circulation system, is free of moving parts.
Accordingly, we do not sustain the Examiner’s obviousness rejection
of claim 28.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Answer, the Examiner’s decision to
reject claims 18, 19, and 22–25 is affirmed, but for the reasons set forth
above and in the Appeal and Reply Briefs, the Examiner’s decision to reject
claims 2–4, 6–17, 26, and 28–30 is reversed.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12, 17 112(b) Indefiniteness 12, 17
2, 4, 6, 13–16 103(a) Hwang, Farmer202
Brownawell
2, 4, 6, 13–
16
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Application 13/843,818

20
3, 26, 29 103(a) Hwang, Farmer202,
Brownawell,
Worsley
3, 26, 29
7, 8, 30 103(a) Hwang, Farmer202,
Brownawell,
Worsley, Lockledge
7, 8, 30
9 103(a) Hwang, Farmer202,
Brownawell, Huang
9
10 103(a) Hwang, Farmer202,
Brownawell,
Huang, Lockledge
10
11 103(a) Hwang, Farmer202,
Brownawell,
Worsley,
Lockledge, Huang
11
12 103(a) Hwang, Farmer202,
Brownawell,
Worsley, Zhai
12
17 103(a) Hwang, Farmer202,
Brownawell,
Farmer036
17
18, 19 103(a) Hwang, Farmer036,
Brownawell, Maus,
Zhai
18, 19
22–24 103(a) Hwang, Farmer036,
Brownawell, Maus,
Zhai, Farmer202
22–24
25, 28 103(a) Hwang, Farmer036,
Brownawell,
Worsley, Huang,
Zhai
25 28
Overall
Outcome
18, 19,
22–25
2–4, 6–17,
26, 28–30

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).
Appeal 2020-000567
Application 13/843,818

21

AFFIRMED IN PART