Ex Parte Moennig et al

Patent Trial and Appeal Board

Nov 28, 2018

13978615 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/978,615 08/22/2013
23575 7590 11/30/2018
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
FIRST NAMED INVENTOR
Sven Moennig
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.
COC.P71426 4974
EXAMINER
LAUX, JESSICA L
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
docket@patentandtm.com
cortese@patentandtm.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN MOENNIG, STEP AN ROSSMA YER,
STEPHAN DETROIS, and THOMAS GASTNER
Appeal 2018-003628
Application 13/978,615
Technology Center 3600
Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-15. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appellants identify the real party in interest as "[ t ]he record owner of
the present patent application" which is "BASF SE." (Appeal Br. 3.)
Appeal 2018-003628
Application 13/978,615
STATEMENT OF THE CASE
The Appellants' invention relates to "thermally insulating an outer wall
ofa building." (Spec. 1, 11. 3--4.)
Sole Independent Claim on Appeal
1. An insulated building wall comprising a composite
thermal insulation system and an external building wall,
wherein the composite thermal insulation system is affixed
to the side of the building wall facing away from the
building, the composite thermal insulation system
comprising an at least two-layer thermal insulation
cladding, with at least two layers each containing from 25
to 95% by weight of aerogel and from 5 to 75% by weight
of inorganic fibres and from O to 70% by weight of
inorganic fillers, characterized in that the layers of the
thermal insulation cladding are joined to one another by
means of an inorganic binder and the composite thermal
insulation system has a gross calorific potential of less
than 3 MJ per kilogram.
Rejection
The Examiner rejects claims 1-15 under 35 U.S.C. § I03(a) as
unpatentable over Bullock, 2 Stepanian, 3 and Kummermehr. 4 (Final
Action 2.)
ANALYSIS
Independent claim 1 recites a "building wall" comprising a
"composite thermal insulation system." (Appeal Br., Claims App.) The
Examiner determines that the building wall recited in the claims on appeal
2 WO 2006/074449 A2, published July 13, 2006.
3 US 2002/0094426 Al, published July 18, 2002.
4 DE 32 29 318 Al, published February 9, 1984.
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Application 13/978,615
would have been obvious over the prior art of the record (see Final
Action 2--4 ); and the Appellants argue that the Examiner errs in making this
determination (see Appeal Br. 6-12). We are unpersuaded by the
Appellants' arguments that the Examiner's rejection of independent claim 1
is erroneous, but we are persuaded by the Appellants' arguments that the
Examiner does not explain sufficiently how the applied prior art discloses
the features recited in the separately-argued dependent claims.
Independent Claim 1
Claim 1 requires the composite thermal insulation system to comprise
"an at least two-layer thermal insulation cladding." (Appeal Br., Claims
App.) The Examiner finds that Bullock discloses a composite thermal
insulation system with three insulation-cladding layers. (See Final
Action 3.) Bullock discloses that "fiber-reinforced aerogels" can provide
insulation in a "thermal management system," and Bullock discloses that
this "thermal management system" can have "multiple layers" of "fiber-
reinforced aerogels." (Bullock, 4, 11. 19--24; 7, 11. 2-3; see also Figs. 1-8.)
Independent claim 1 requires at least two of the insulation-cladding
layers to contain "aerogel," or, in other words, independent claim 1
requires two or more aerogel-containing insulation layers. (Appeal Br.,
Claims App.) As indicated above, Bullock discloses two or more aerogel-
containing insulation layers. Bullock more particularly discloses "metal
oxide-based aero gels" ( e.g., "silica, titania, zirconia, alumina") that are
"fiber-reinforced" with "inorganic-based" fibers (e.g., "quartz," "basalt-
based"). (Bullock, 4, 11. 2-8.)
Independent claim 1 requires the aerogel-containing insulation layers
to each have "from 25 to 95% by weight of aerogel and from 5 to 75% by
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weight of inorganic fibres and from Oto 70% by weight of inorganic fillers."
(Appeal Br., Claims App.) The Examiner finds that Stepanian teaches the
claimed percentages; and the Examiner finds that it would have been
obvious for Bullock to adopt these claimed percentages to achieve the
predictable result of a composition suitable for "the intended use" taught by
Bullock. (Final Action 3.) Bullock's intended use is to "insulate surfaces
where high thermal events may occur." (Bullock, 1, 11. 14--20.)
Thus, in the Examiner's combination of the prior art, each of
Bullock's modified aerogel-containing insulation layers would contain
"from 25 to 95% by weight" of a metal oxide-based aerogel, and "from 5 to
75% by weight" of inorganic-based fibers, so as to be suitable for insulation
in high temperature events.
Independent claim 1 requires the aerogel-containing insulation layers
to be 'joined to one another by means of an inorganic binder." (Appeal Br.,
Claims App.) The Examiner finds that Bullock's aerogel-containing
insulation layers "are joined to one another by means of an adhesive," and
the Examiner finds that Kummermehr discloses "using an inorganic binder
on a layer of aerogel." (Final Action 3.) The Examiner further finds that it
would have been obvious "to modify the adhesive of Bullock to be an
inorganic binder," and that this modification would achieve the predictable
result of "securely bonded aerogel layers." (Id. at 4.)
The Appellants argue that "the feature of adhering multiple layers of
aerogel material together with an adhesive material is not reasonably
disclosed by Bullock." (Reply Br. 3.) According to the Appellants, a
"common theme" in all of Bullock's disclosed embodiments "is that
adhesive or binder is never used to bond one layer of aerogel insulation
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material to another layer of aerogel insulation material." (Id., emphasis
omitted.)
We are not persuaded by this argument because, as pointed out by the
Examiner (see Answer 3), Bullock specifically discloses that, where
"multiple" aerogel-containing plies are used, they can be "held together"
using any combination of "an adhesive layer," "thread stitching," and/or
"fastening" mechanisms such as "plastic tags or rivets." (Bullock, 8, 11. 6-8,
emphasis added. )5
The Appellants also argue that there is "no disclosure in Kummermehr
to join two layers of thermal insulation cladding ( comprising aero gel
material and inorganic fibers) by means of an adhesive." (Appeal Br. 7 .)
According to the Appellants, in Kummermehr, the adhesive (i.e., the
inorganic binder) "is applied to the surface of the aero gel insulation body to
fix a laminated web surface layer" thereto in order "to impart abrasion
resistance to the aerogel insulation body." (Reply Br. 4.)
We are not persuaded by this argument because, as indicated above,
Bullock teaches "two layers of aero gel joined by an adhesive" and
Kummermehr is relied upon "for teaching the use of an inorganic
adhesive/binder suitable for use with an aerogel." (Final Action 8.)
Kummermehr discloses that "the adhesive effect" between an aerogel-
5 The Appellants assert that "[t]his passage of Bullock isn't even entirely clear
that adhesives can be used alone without some other means to hold the
aerogel layers together as this passage merely refers to "combinations" of
different means to hold the aerogel layers together." (Reply Br. 3.) We note
that there is no requirement in independent claim 1 that adhesive, alone, joins
the aerogel-containing insulation layers together. And, apparently, the
Examiner's modification does not involve "removing the mechanical
fasteners" shown in Bullock's drawings. (Final Action 7.)
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Application 13/978,615
containing insulation layer and another insulation-related layer can be
"improved" by the addition of an "inorganic" binder." (Kummermehr,
translated Abstract.) The record, therefore, supports the Examiner's
finding that one of ordinary skill in the art would infer that an inorganic
binder could be used to improve the adhesive effect between Bullock's
aerogel-containing insulation layers.
The Appellants additionally assert that "the proposed modification of
Bullock," namely "to bind the aero gels with a layer of adhesive between
them," would "alter a principle of operation of Bullock" by "increas[ing] the
thickness of the composite." (Appeal Br. 11.) But the Examiner's proposed
modification does not involve adding adhesive layers to attach Bullock's
aerogel-containing insulation layers together, as such adhesive attachment is
already disclosed by Bullock. (See Answer 6.) "[T]he only modification is
the type of adhesive used," and there is nothing on the record implicating
that this would "impact the thickness" of composite. (Id. )6
Thus, the Examiner establishes adequately that the prior art teaches a
composite thermal insulation system in which 1) there are at least two layers
of aerogel-containing insulation layers; 2) the aerogel-containing insulation
layers each contain from 25 to 95% by weight of a metal oxide-based
aerogel and from 5 to 75% by weight of inorganic-based fibers layers; and 3)
the aerogel-containing insulation layers are joined to one another by means
of an inorganic binder. In short, Bullock's composite thermal insulation
6 As for the Appellants' argument that, in Stepanian, "the aero gel are
sintered together" and "no organic binder is used to join the layers" (Appeal
Br. 8), "Stepanian is not relied upon for teaching this claimed feature" (Final
Action 8).
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system, when modified in accord with the teachings of Stepanian and
Kummermehr, would possess these three features.
Independent claim 1 requires the composite thermal insulation system
to have "a gross calorific potential of less than 3 MJ per kilogram." (Appeal
Br., Claims App.) The Examiner finds that the composite thermal insulation
system created by the combined teachings of the applied prior art would
have a gross caloric potential satisfying this criteria. (See Final Action 4.)
The Appellants argue that Stepanian discloses a "monolithic aerogel"
that "shrinks, decomposes, and fails when exposed to heat loads." (Appeal
Br. 8.) The Appellants contend that such an aerogel would not result in a
composition insulation system having a gross calorific potential of less than
3 MJ per kilogram. (See id. 8-9; see also Reply Br. 4--7.) Along this same
line, the Appellants assert that the Examiner "assumes that every aerogel
material known to man possesses an appropriate gross heat of combustion"
so as to "achieve a thermal insulation system with a gross caloric potential of
3 MJ per kilogram." (Reply Br. 4.)
We are not persuaded by these arguments because they do not address
the composite thermal insulation system created by the above-discussed
combination of the prior art. In this combination, the aero gel-containing
insulation layers each contain the metal oxide-based aerogels disclosed by
Bullock (e.g. "silica," "alumina," "titania"). (Bullock, 4, 11. 2-8.) According
to the Appellants, "all aerogels based on metal oxides are particularly suitable
for the present invention," and preferably an aerogel "based on silicon,
aluminum, or titanium." (Spec. 6, 11. 20-22.)7
7 Also, in this combination, the aerogel-containing insulation layers each
contain the inorganic fibers disclosed by Bullock (e.g., "quartz," "basalt-
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Additionally, as indicated above, Bullock is concerned with "high
temperature events," and, indeed, is particularly concerned with "major fires
aboard navy vessels," in which "metallic bulkheads and decks 'spread fire'
by heat transfer which increases the temperature on the cold side above the
ignition temperature of common combustibles in adjacent and overhead
compartments." (Bullock 2, 11. 6-8.) Bullock calls attention to temperatures
hot enough "to ignite combustible material" and "to induce spontaneous
combustion" (id. at 5, 11. 10-11, 20), and talks about "reducing the
probability of combustion at higher temperatures" (id. at 10, 11. 13-14).
Thus, insofar as the "gross caloric potential" criteria recited in
independent claim 1 is related to the insulation being "a non-combustible
building product" (Appeal Br. 9), one of ordinary skill in the art would
recognize that Bullock's insulation is aligned with this non-combustible
criteria. Put another way, one of ordinary skill in the art would appreciate
that "the components of the thermal insulation system such as the aero gel
and inorganic binder must be selected according to their gross heat of
combustion." (Reply Br. 4.)
Moreover, we see nothing in the record implicating that the proposed
modifications to Bullock's insulation would alter its ability to achieve this
non-combustible-building-product status. For example, there are no
assertions in the record that the claimed aerogel/fibre percentages, and/or an
inorganic binder, would somehow compromise the gross caloric potential of
Bullock's composite thermal insulation system.
based"). (Bullock, 4, 11. 2-8.) According to the Appellants, their "inorganic
fibers," can be "glass fibres, rock fibres, metal fibres, boron fibres, ceramic
fibres, and/ or basalt fibres." (Spec. 10, 11. 2 7-29.)
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Thus, we are unpersuaded by the Appellants' arguments that
Examiner errs in determining that the building wall recited in independent
claim 1 would have been obvious over the prior art; and we sustain the
Examiner's rejection of independent claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Bullock, Stepanian, and Kummermehr.
Dependent Claims 2-5, 13, and 14
These claims depend directly independent claim 1, and the Appellants
do not argue them separately. (See Appeal Br. 12-15.) Thus, we sustain the
Examiner's rejection of dependent claims 2-5, 13, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Bullock, Stepanian, and Kummermehr.
Dependent Claim 6
Claim 6 depends directly from independent claim 1, and recites that
"the thermal insulation cladding is coated on the side facing the building
and/or the side facing away from the building with a polymeric material."
(Appeal Br., Claims App.) The Examiner appears to point to various
permutations of Bullock's element 3 ("adhesive layer"), element 8 ("woven
( or non-woven) fabric"), element 9 ("ceramic paper"), element 10
("adhesive layer"), element 11 ("retention layer"), and/or element 13
("woven ( or non-woven) fabric") to teach this limitation. (See Final
Action 5; see Bullock 7-9.) But the Examiner does not explain which of
these elements constitutes a "polymeric material" and/or where Bullock
teaches that its thermal insulation cladding is coated with this alleged
polymeric material.
Thus, we are persuaded by the Appellants' argument that the
Examiner does not explain adequately how the applied art "disclose[ s] the
features of dependent claim 6" (Appeal Br. 13.); and we do not sustain the
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Examiner's rejection of dependent claim 6 as under 35 U.S.C. § 103(a) as
unpatentable over Bullock, Stepanian, and Kummermehr.
Dependent Claim 7
Claim 7 depends directly from independent claim 1, and recites that
"the thermal insulation cladding is coated on the side facing the building
and/or the side facing away from the building with an inorganic binder."
(Appeal Br., Claims App.) The Examiner appears to point to Bullock's
element 3 ("adhesive layer") and element 10 ("adhesive layer") to teach this
limitation. (See Final Action 5, see Bullock 8, 1. 7.) But the Examiner does
not explain why an identified adhesive layer constitutes an "inorganic
binder" and/ or where teaches that its thermal insulation cladding is coated
with this alleged inorganic binder.
Thus, we are persuaded by the Appellants' argument that that the
Examiner does not explain adequately how the applied art "disclose[ s] the
features of dependent claim 7" (Appeal Br. 13); and we do not sustain the
Examiner's rejection of dependent claim 7 as under 35 U.S.C. § 103(a) as
unpatentable over Bullock, Stepanian, and Kummermehr.
Dependent Claims 8-12 and 15
Claims 8-11 depend directly or indirectly from dependent claim 7,
and claim 12 depends directly from dependent claim 6. (See Appeal Br.,
Claims App.) The Examiner's further findings with respect to these
dependent claims do not compensate for the above-discussed shortcomings
in the rejections of dependent claims 6 and 7. (See Final Action 5---6.)
Thus, we are persuaded by the Appellants' arguments that the
Examiner does not adequately explain how the applied art discloses the
features of these claims (see Appeal Br. 13-14); and we do not sustain the
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Examiner's rejection of dependent claims 8-12 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Bullock, Stepanian, and Kummermehr.
DECISION
We AFFIRM the Examiner's rejection of claims 1-5, 13, and 14.
We REVERSE the Examiner's rejection of claims 6-12 and 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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