Ex Parte Thiagarajan et al

Patent Trial and Appeal Board

Apr 25, 2017

13180882 (P.T.A.B. Apr. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/180,882 07/12/2011 Chinniah Thiagarajan 10SFS0002-US-NP 3286
23413 7590 04/27/2017
TANTOR TOT RTTRN T T P
EXAMINER
20 Church Street RUMMEL, JULIA L
22nd Floor
Hartford, CT 06103 ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
04/27/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHINNIAH THIAGARAJAN, UDIT KULMI,
and SANTHOSH KUMAR RAJENDRAN
Appeal 2016-001629
Application 13/180,882
Technology Center 1700
Before TERRY J. OWENS, PETER F. KRATZ,
and N. WHITNEY WILSON, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
rejection of claims 1—6, 11—14, and 16. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a multiwall sheet. Claim 1 is illustrative:
1. A multiwall sheet, comprising:
walls, wherein the walls include;
a first wall;
a second wall; and
a transverse wall, wherein the first wall, the second wall,
and the transverse wall extend longitudinally; and
Appeal 2016-001629
Application 13/180,882
a rib extending between adjacent walls, wherein a layer is
formed by two adjacent walls;
wherein the layer is filled with a nanoporous foam
material; and
wherein the multiwall sheet comprises a normalized
thermal conductivity value less than or equal to
1.00 W-m/kg-K.
Manini
The References
US 2003/0127475 A1 July 10, 2003
Rouanet US 2005/0074566 A1 Apr. 7, 2005
Harris US 2006/0292404 A1 Dec. 28, 2006
Thiagarajan US 2009/0148665 A1 June 11, 2009
(Thiagarajan
Thiagarajan
‘665)
US 8,889,248 B2 Nov. 18, 2014
(Thiagarajan
Glorieux
‘248)
EP 2 292 408 A1 Mar. 9,2011
Aerogel Technologies, About Aerogels (© 2004—2014).
FAO Corporate Document Repository, The use of ice on small fishing
vessels: 5. Thermal insulation materials, technical characteristics and
selection criteria, http: //www. fao. org/DOCREP/006/Y 5013E/y5013e08. htm
(July 2, 2007) (hereinafter Thermal Insulation Materials).
SABIC Innovative Plastics, Lexan* Thermoclear* Plus 2UVSoftlite Sheet
Product Data Sheet (May 2008) (hereinafter SABIC).
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims
1—6, 11—14, and 16 over SABIC in view of Thiagarajan ‘665 and over
SABIC in view of Thiagarajan ‘665 and Thermal Insulation Materials,
claims 4 and 16 over SABIC in view of Thiagarajan ‘665 and Manini and
over SABIC in view of Thiagarajan ‘665, Thermal Insulation Materials and
Manini, claims 1—3 and 11 over Glorieux in view of Aerogel Technologies
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Application 13/180,882
and Thermal Insulation Materials, claims 1—3, 5, 6, and 11—14 over Rouanet
in view of Aerogel Technologies and Thermal Insulation Materials, and
claims 4 and 16 over Rouanet in view of Aerogel Technologies, Thermal
Insulation Materials and Harris. Also, claims 1—3 stand rejected on the
ground of nonstatutory obviousness-type double patenting over claim 1 of
Thiagarajan ‘248 in view of Thiagarajan ‘665, and claim 14 stands rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
OPINION
We affirm the rejections.
Rejections of claims / 6, 11—14, and 16 over SABIC in view of
Thiagarajan ‘665 and over SABIC in view of
Thiagarajan ‘665 and Thermal Insulation
Materials, and rejection of claims 4
and 16 further in view ofManini
The Appellants argue the claims in two groups: 1) claims 1—3, 5, 6,
and 11—14, and 2) claims 4 and 16 (Br. 8—14, 17). The Appellants address
dependent claims 2, 3, 5, 6, and 14 but do not provide a substantive
argument as to their separate patentability (Br. 11). We therefore limit our
discussion to one claim in each group, i.e., claims 1 and 16. Claims 2—6
and 11—14 stand or fall with claim 1, and claim 4 stands or falls with
claim 16. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
SABIC discloses a multi wall sheet having the Appellants’ recited
structure but lacking the nanoporous foam filler (p. 6, LT2UV163X28 and
LT2UV459X45).
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Application 13/180,882
Thiagarajan ‘665 discloses a nano-cellular polymer foam which has
optical transparency and, compared to a solid polymer, has superior
structural, thermal and dielectric properties (14). The foam is made by
contacting with a foaming agent a polymer having an average particle size of
about 10 nanometers to about 10 millimeters (which is the average particle
size range of the Appellants’ polymer contacted with a foaming agent
(Spec. 121)) (| 6).1 The foam has a thermal conductivity of about
0.001 W/m-K at ambient temperature to about 0.01 W/m-K at about 350 -C
(| 32) (The thermal conductivity of the Appellants’ foam is less than or
equal to 0.060 W/m-K, most specifically less than or equal to 0.001 W/m-K
(Spec. 141)).2 The foam can be used to produce a multiwall sheet
comprising nano-cellular foam between two or more plastic sheets and can
be used in roofing and glazing applications (1 66) (which are among the
Appellants’ uses of their foam (Spec. 116)).
1 Both Thiagarajan ‘665 (142) and the Appellants (Spec. 122) disclose that
a polymer having an average particle size of about 1 micron can be used to
obtain a nano-cellular polymer foam having an average pore size of about
400 nanometers, which is within the nanometer size ranges of
Thiagarajan ‘665 (about 10 nanometers to less than about 1000 nanometers;
123) and the Appellants (1 nanometer to less than 1000 nanometers; 121).
2 The Examiner finds that the normalized thermal conductivity of SABIC’s
multiwall sheet can be 1.036 W-m/kg-K (Ans. 6) which appears to be
suggestive of values within the Appellants’ range of less than or equal to
1.00 W-m/kg-K, and that the normalized thermal conductivity of
Thiagarajan ‘665’s nano-cellular polymer foam is less than 1.00 W-m/kg-K
(Ans. 6—7). Because those findings are reasonable and the Appellants have
not challenged them, we accept them as fact. See In re Kunzmann, 326 F.2d
424, 425 n.3 (CCPA 1964).
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Application 13/180,882
Thermal Insulation Materials discloses that “[b]est insulation
materials should have the lowest thermal conductivity, in order to reduce the
total coefficient of heat transmission” (p. 2, Box 5.1).3
The Appellants assert that “[tjhere is no disclosure or suggestion to
use the foam or [sic, of] Thiagarajan in the sheet of SABIC, and no
explanation or suggestion of how that would be done” (Br. 9).
“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR, 550 U.S. at 418.
The motivation would have been to provide SABIC’s sheet structures
with enhanced structural and thermal properties provided by
Thiagarajan ‘665’s nano-cellular foam (| 4). In view of Thiagarajan ‘665’s
disclosure that the nano-cellular polymer foam is extruded and can be in a
multiwall structure between two or more plastic sheets (1 66), one of
ordinary skill in the art, through no more than ordinary creativity, would
have either coextruded the nano-cellular polymer foam with the plastic
sheets or extruded the nano-cellular polymer form and placed it between
preformed plastic sheets (which are the methods used by the Appellants
(Spec. 51)).
3 The Appellants assert that Thermal Insulating Materials is not prior art
(Br. 12—13). That reference is dated July 2, 2007 (page 1, upper right
comer) which is before the Appellants’ July 12, 2011 filing date.
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Claim 16
Claim 16 depends from claim 1 and requires that “the multiwall sheet
is extruded and wherein the nanoporous foam material is in the form of
nanometer-sized beads.”
The Appellants assert that Thiagarajan ‘665 does not disclose or
suggest nanoporous foam material in the form of nanometer-sized beads
(Br. 12-14).
Thiagarajan ‘665’s foaming agent can diffuse into polymer particles
having an average particle size as small as about 10 nanometers and diffuse
out of the polymer particles such that the particle size is as small as
about 100 nanometers (Tflf 40, 41, 42) which is within the Appellants’
nanometer-size range of 1 nanometer to less than 1000 nanometers
(Spec. 121).
Rejection of claims 1—3 and 11 over Glorieux in view of
Aerogel Technologies and Thermal Insulation Materials
The Appellants argue the claims in two groups: 1) claims 1—3, and
2) claim 11. Accordingly, we limit our discussion to one claim in the first
group, i.e., claim 1, and claim 11. Claims 2 and 3 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
Glorieux teaches that “[fjilling flat multi-walled plastic plates with an
insulating material, such as an insulating aerogel with pores of
nano-dimensions, is generally known” (| 2). Glorieux’s invention is a
multiwall, light-transmitting, insulating, dome skylight element which
comprises light-transmitting, thermoformable plastic upper and lower walls
having between them an insulating, light-transmitting filler, typically a silica
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aerogel having nano-dimension pores, and can be made by extrusion
(Abstract, H 1, 5, 8). The aerogel can “be arranged between two solid plates
or between two multi-walled plates, wherein the thus formed assembly is
typically thermo formed in one operation” (| 13).
Aerogel Technologies defines “aerogel” as “an open-celled,
mesoporous, solid foam composed of a network of interconnected structures
that exhibits a porosity (non-solid volume) of no less than 50%” (p. 3).4
The Appellants assert that “Glorieux provides no characterization of
the thermal conductivity or insulation value of the light transmitting
elements and does not appear to be concerned with such a value” (Br. 15).
As indicated by Glorieux’s disclosure that the multiwall plate is
super-insulating (| 1), Glorieux is concerned with its thermal conductivity.
Hence, Glorieux would have led one of ordinary skill in the art, through no
more than ordinary creativity, to obtain the super-insulating property by
minimizing the normalized thermal conductivity to a value such as less than
or equal to 1.00 W- m/kg- K as required by the Appellants’ claim 1. See KSR,
550 U.S. at 418.
Claim 11
The Appellants assert that “[c]oextrusion is not obvious from
Glorieux which discloses a loose fill process” (Br. 16) wherein “the aerogel
is arranged loosely in the multi-walled plate and sealed at the edges with
tape” (111).
4 The Appellants assert that Aerogel Technologies cannot be considered
prior art because it is undated (it merely provides a copyright date of 2004—
2014) (p. 4)) (Br. 14—15). Aerogel Technologies, is not relied upon as prior
art but, rather, is relied upon for its definition of “aerogel” (Ans. 15) (As
disclosed by that reference, silica aerogels were first reported in 1931 (p. 3)).
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Application 13/180,882
Glorieux discloses that the multi-walled plate comprising nano-porous
aerogel between thermoformable plastic plates can be manufactured by
extrusion (1 5).5
Rejections of claims 1—3, 5, 6, and 11—14 over Rouanet in view of Aerogel
Technologies and Thermal Insulation Materials, and claims 4
and 16 over Rouanet in view of Aerogel Technologies,
Thermal Insulation Materials and Harris
The Appellants argue the claims in two groups: 1) claims 1—3, 5, 6,
and 11—14, and 2) claims 4 and 16 (Br. 6—18). Hence, we limit our
discussion to one claim in each group, i.e., claims 1 and 16. Claims 2, 3, 5,
6, and 11—14 stand or fall with claim 1, and claim 4 stands or falls with
claim 16. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Claim 1
Rouanet discloses a glazing panel which comprises a thermoplastic
sheet (512) between and substantially parallel to two thermoplastic
sheets (502, 504) and is substantially filled with hydrophobic aerogel
particles (510) (Tflf 27, 36; Fig. 11).
Harris discloses a fire-retardant, highly transparent panel comprising a
transparent matrix (18) having therein fire-retardant nanoparticles (16) with
a diameter which is less than the visible spectrum of light and can be about
0.1 to about 400 nanometers (Abstract; 132; Fig.2).
The Appellants assert that a desire to minimize Rouanet’s panel’s
thermal conductivity does not render obvious the Appellants’ required
normalized thermal conductivity value of less than or equal to
1.00 W-m/kg- K (Br. 16-17).
5 In the loose fill embodiment the sealing tape can be removed after the
multiwall plate has been thermoformed (| 11).
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That assertion is unpersuasive due to lacking evidence or even
substantive argument.
Claim 16
The Appellants argue that Harris would not have motivated one of
ordinary skill in the art to modify Rouanet’s panel because Harris is directed
toward maintaining transparency and does not mention or suggest any
benefit regarding insulation (Br. 18).
The motivation would have been provided by Rouanef s desire for
maximizing light transmission (| 28) and Harris’ disclosure that the
fire-resistant nanoparticles maintain a high level of transparency (| 32).
Rejection of claim 14 under 35 U.S.C. § 112, first paragraph,
written description requirement
To comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, an applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563—64 (Fed. Cir. 1991)).
The Appellants’ claim 14 depends from claim 1 and requires that “the
molten polymer is not gas saturated.”
The Appellants assert that their Specification shows possession of that
claim feature by disclosing that the nanoporous foam material is a gas
saturated polymer but not disclosing that the molten polymer is gas saturated
(Br. 7).
The Appellants’ Specification states that “[t]he coextrusion process
combines the flow of molten polymer (e.g., thermoplastic polymer) with a
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Application 13/180,882
gas saturated polymer (e.g., nanoporous foam material)” (1 51). That
disclosure merely indicates that the nanoporous foam material is gas
saturated, not that the molten polymer is not gas saturated.
Obviousness-type double patenting rejection
Thiagarajan ‘248’s claim 1 recites the structure of the Appellants’
claim l’s multiwall sheet except for the nanoporous foam filler.
The Appellants assert that “nowhere does Thiagarajan [‘665] disclose
depositing his foam material into multiwall sheets having ribs and there is no
motivation or prompting to modify such a multiwall sheet to include the
foam” (Br. 6).
The motivation would have been to provide sheets having
Thiagarajan ‘248’s structure with enhanced structural and thermal properties
provided by Thiagarajan ‘665’s nano-cellular foam (| 4).
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—6, 11—14, and 16
over SABIC in view of Thiagarajan ‘665 and over SABIC in view of
Thiagarajan ‘665 and Thermal Insulation Materials, claims 4 and 16 over
SABIC in view of Thiagarajan ‘665 and Manini and over SABIC in view of
Thiagarajan ‘665, Thermal Insulation Materials and Manini, claims 1—3
and 11 over Glorieux in view of Aerogel Technologies and Thermal
Insulation Materials, claims 1—3, 5, 6, and 11—14 over Rouanet in view of
Aerogel Technologies and Thermal Insulation Materials, and claims 4
and 16 over Rouanet in view of Aerogel Technologies, Thermal Insulation
Materials and Harris, the obviousness-type double patenting rejection of
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claims 1—3 over claim 1 of Thiagarajan ‘248 in view of Thiagarajan ‘665,
and the rejection of claim 14 under 35 U.S.C. § 112, first paragraph, written
description requirement are affirmed.
It is ordered that the Examiner’s decision is 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
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