Ex Parte Yeung et al

Board of Patent Appeals and Interferences

Mar 30, 2012

11288859 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KING LUN YEUNG, NAN YAO, AND SHENGLI CAO
______________

Appeal 2010-007113
Application 11/288,859
Technology Center 1700
_______________

Before CHARLES F. WARREN, ROMULO H. DELMENDO, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-5, 7, and 10-23 in the Office Action
(Office Action) mailed January 23, 2009. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2009).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a TiO2-SiO2 aerogel
monolith, and is representative of the claims on appeal:
1. A TiO2-SiO2 aerogel monolith, comprising:
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at least 0.1% w/w of titania;
a regular shaped TiO2-SiO2 aerogel monolith; and
a Ti-O-Si bond in said aerogel,
wherein said bond has an absorption peak around 960 cm-1 in an
infrared spectrum.
Appellants request review of the grounds of rejection under 35 U.S.C.
§§ 102(b) or 103(a) advanced on appeal by the Examiner: claims 1, 2, 5, 7,
10, 11, and 231 over Wang;2 and claims 1, 2, 7, 11, and 23 over Yoda.3 Br.
3;4 Ans. 3 and 4.
The Examiner also advanced on appeal the grounds of rejection of
claims 3 and 4 over Wang and over Yoda. Ans. 5 and 6. Appellants do not
specifically request review of these grounds but state “[w]ith respect to the
rejections subject to this appeal, claims 1-5, 7, 10-11 and 23 will stand and
fall together.” Br. 4. Thus, we review the grounds of rejection in this appeal
based on claim 1 and each of Wang and Yoda.
The Examiner has withdrawn the ground of rejection of claims 12-22
under 35 U.S.C. § 103(a) over Wimsberger and Deng. Ans. 2. Thus, we
dismiss the appeal with respect to claims 12-22 because there is no rejection
of these claims on the record before us.

1 See Ans. 2, 3; Office Action 2.
2 J. Wang, S. Uma, and K.J. Klabunde, “Visible light photocatalysis in
transition metal incorporated titania-silica aerogel,” 48 Applied Catalysis B:
Environmental 151-54 (2004).
3 S. Yoda et al. (Yoda), “TiO2-impregnated SiO2 aerogels by alcohol
supercritical drying with zeolite,” 225 Journal of Non-Crystalline Solids
105-10 (1998).
4 We considered the Appeal Brief filed October 25, 2009.
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Opinion
I. Wang
The dispositive issue with respect to Wang is whether the Examiner
erred in finding that Wang describes a TiO2-SiO2 aerogel monolith having a
Ti-O-Si bond characterized by an absorption peak around 960 cm-1 in an
infrared spectrum as specified in claim 1 to one skilled in the art within the
meaning of § 102(b). Ans. 3-4 and 7-9; Br. 5-7. The Examiner contends the
claimed TiO2-SiO2 aerogel monolith and the aerogel monoliths prepared by
Wang have the same properties, including the Ti-O-Si bond characterized by
the infrared spectrum absorption peak around 960 cm-1 in an infrared
spectrum, specified in claim 1. Ans. 3-4 and 7-8. According to the
Examiner, the claimed and Wang TiO2-SiO2 aerogels are prepared by
hydrolyzing the same TiO2 and SiO2 precursors in alcohol, water, and acid to
form the corresponding TiO2 sol and SiO2 sol, aging the mixture to form the
TiO2-SiO2 gel and supercritically drying the gel, thus forming a TiO2-SiO2
aerogel having a Ti-O-Si characterized by the infrared spectrum absorption
peak around 960 cm-1 as specified in claim 1. Ans. 4 and 7-8.
Appellants submit the Examiner has not established that Wang’s M-
TiO2-SiO2 aerogels, which contain incorporated transition metal ions (M),
inherently have a Ti-O-Si bond characterized by the infrared spectrum
absorption peak around 960 cm-1. Br. 6-7. Appellants point out Wang
discloses forming M-TiO2-SiO2 aerogels using precursors for the transition
metal ions, TiO2, and SiO2 components, thus contending that Wang uses a
different number of precursors in different process steps, including no
surfactant, to obtain a M-TiO2-SiO2 aerogel, than the process disclosed in
the Specification to obtain a TiO2-SiO2 aerogel monolith having a Ti-O-Si
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bond characterized by the infrared spectrum absorption peak around 960 cm-
1. Br. 6-7.
We find that Appellants disclose a process for preparing a TiO2-SiO2
aerogel monolith having a Ti-O-Si bond characterized by the infrared
spectrum absorption peak around 960 cm-1 by separately forming a TiO2 sol
and a SiO2 sol by separate hydrolysis of the respective precursors in alcohol
and water followed by peptization with an acid; optionally adding a
surfactant to the SiO2 sol; mixing the two sols to form a TiO2-SiO2 sol; aging
the mixture to form an alcogel; drying the alcogel under ethanol supercritical
conditions to obtain a TiO2-SiO2 aerogel; and calcining the aerogel to obtain
a TiO2-SiO2 aerogel monolith having a Ti-O-Si bond characterized by the
infrared spectrum absorption peak around 960 cm-1. Spec., e.g., ¶¶ 0009-
0020, 0034-0052, and 0135-0137, and Table 1.
We find Wang would have disclosed a process for preparing
M-TiO2-SiO2 aerogels in which “[t]he pre-hydrolysis of Si(OC2H5)4 . . . [is]
an essential step in order to adjust the sol-gel reactivities of titanium and
silicon alkoxides.” Wang 151-52. We find that Wang’s process hydrolyzes
the SiO2 precursor in a mixture of water, methanol, and an acid, and allows
the hydrolysis to proceed; thoroughly mixes in a transition metal (M) salt in
methanol; “the reaction was completed by the addition of” an TiO2 precursor
in methanol; the mixture is aged to form a “gel;” the gel is dried under
methanol supercritical conditions to obtain an aerogel; and the aerogel is
calcined to obtain an M-TiO2-SiO2 aerogel. Wang abstract and 151-52.
On this record, we agree with Appellants that the Examiner erred in
finding that Wang describes the claimed the TiO2-SiO2 aerogel monolith
having a Ti-O-Si bond characterized by the infrared spectrum absorption
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peak around 960 cm-1 encompassed by claim 1 to one skilled in the art. The
Examiner has not established that as a matter of fact it reasonably appears
from Wang’s process that Wang’s M-TiO2-SiO2 aerogel is identical to the
claimed TiO2-SiO2 aerogel monolith having a Ti-O-Si bond characterized by
the infrared spectrum absorption peak around 960 cm-1 based on a
comparison of Appellants’ disclosed process with the process described by
Wang. See, e.g., In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“The
Board held that the compositions claimed by Spada ‘appear to be identical’
to those described by Smith. While Spada criticizes the usage of the word
‘appear’, we think that it was reasonable for the PTO to infer that the
polymerization by both Smith and Spada of identical monomers, employing
the same or similar polymerization techniques, would produce polymers
having the identical composition.”). In this respect, we fail to find in the
Examiner’s analysis consideration of Wang’s disclosure that the transition
metal ion precursor is thoroughly mixed with the pre-hydrolyzed SiO2
precursor solution prior to the addition of the TiO2 precursor in methanol to
complete the “reaction,” and then aging the solution to form a “gel”
followed by methanol supercritical drying. Indeed, has the Examiner has not
adduced scientific reasoning or evidence establishing that the transitional
metal ions would not affect the formation of claimed Ti-O-Si bond in the
aerogels.
Thus, as Appellants submit, the Examiner has not considered the
effect of Wang’s transition metal ions and process steps on Ti-O-Si bond
formation characterized by the infrared spectrum absorption peak around
960 cm-1, and therefore, has not established that it reasonably appears that
claim 1 reads on Wang’s M-TiO2-SiO2 aerogel. Accordingly, in the absence
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of a prima facie case of anticipation, we reverse the ground of rejection of
claims 1, 2, 5, 7, 10, 11, and 23 over Wang under 35 U.S.C. § 102(b).5
Turning now to the ground of rejection of claim 1 under § 103(a) over
Wang, we agree with Appellants that the Examiner has not supported the
ground of rejection of claim 1 under this statutory provision with reasoning
establishing that Wang alone would have led one of ordinary skill in the art
to the claimed aerogel encompassed by claim 1. Br. 5 and 7; Ans. 8. See,
e.g., B.F. Goodrich Co. v. Aircraft Braking Sys. Corp., 72 F.3d 1577, 1582
(Fed. Cir. 1996) (“When obviousness is based on a particular prior art
reference, there must be a showing of a suggestion or motivation to modify
the teachings of that reference. . . . This suggestion or motivation need not
be expressly stated.” (citation omitted)); see also, e.g., In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). Accordingly, in the absence of a prima
facie case of obviousness, we reverse the ground of rejection of claims 1, 2,
5, 7, 10, 11, and 23 over Wang under 35 U.S.C. § 103(a).
Accordingly, we also reverse the ground of rejection of claims 3 and 4
over Wang under 35 U.S.C. § 103(a). See above p. 2.
II. Yoda
The dispositive issue with respect to Yoda is whether the Examiner
erred in finding that Yoda describes a TiO2-SiO2 aerogel monolith having a
Ti-O-Si bond characterized by an absorption peak around 960 cm-1 in an
infrared spectrum as specified in claim 1 to one skilled in the art within the
meaning of § 102(b). Ans. 4-5 and 9; Br. 7-10. The Examiner contends the

5 A rejection of a claim under § 102(b) and alternatively under § 103(a)
constitutes a separate ground of rejection under each statutory provision.
See, e.g., Spada, 911 F.2d at 707-08 n.3.
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claimed TiO2-SiO2 aerogel monolith and the monolithic TiO2-impregnated
TiO2-SiO2 aerogels prepared by Yoda’s TiO2 impregnation decomposition
method have the same “absorption peak properties.” Ans. 5. The Examiner
further contends “the isopropoxyl group of the tetraisopropylorthotitanate-
AA react with the surface silanol group of [the] silica aerogel” to form the
Ti-O-Si bond which inherently would exhibit the “vibration mode [that]
could be characterized by IR which show absorption peak around 960 cm-1.”
Ans. 5-6 and 9. In this respect, the Examiner contends the proposed
“reaction” is supported by “reaction (1), Experimental section, page 720,”
which “shows the Ti-O-Si bond form . . . will have FT-IP peak at about
960 cm-1.” Ans. 9.
We note here the Yoda article (pages “105-110”) applied in the
ground of rejection (see above note 3; Ans. 4; Office Action 6 and PTO-892)
is not the Yoda article (pages “719-723”) cited under the “Evidence Relied
Upon” in the Answer at 3 and relied on by the Examiner in argument (Ans.
9). We have not considered the latter Yoda article because it is not been
included in the statement of the ground of rejection advanced on appeal. See
In re Hoch, 428 F.2d 1341, 1342 n. 3, (CCPA 1970); cf. Ex parte Raske,
28 USPQ2d 1304, 1304-05 (BPAI 1993). Indeed, we cannot find the latter
Yoda article in the record.
Appellants submit the Examiner has not established that Yoda’s
impregnation decomposition method produces TiO2-SiO2 aerogel monolith
which inherently have a Ti-O-Si bond characterized by the infrared spectrum
absorption peak around 960 cm-1 as the claimed . Br. 6-7. Appellants point
out Yoda’s method is not the general method which includes mixing TiO2
and SiO2 sols before forming the alcogel as disclosed in the Specification,
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and thus the Examiner cannot contend that the method disclosed in the
Specification to make the claimed TiO2-SiO2 monoliths and Yoda’s
impregnation decomposition method are “identical or substantially
identical.” Br. 9-10.
We find Yoda would have disclosed that in the impregnation
decomposition method, a tetraisopropylorthotitanate-AA mixture is placed
on top of a controlled microstructure SiO2 alcogel; permitted to diffuse
through the alcogel to obtain homogeneous impregnation, and the
impregnated alcogel is subjected to ethanol SCD which decomposes the
titania precursor. Yoda 105-106. Yoda teaches the microstructure of the
TiO2-impregnated SiO2 aerogel so formed reflects the microstructure of the
corresponding SiO2 aerogel, with some of the titanium elements in the silica
matrix and the rest existing as particles on the surface of the SiO2 matrix.
Yoda Abstract 107-110, and Figs. 2 and 3. See Br. 8-9, citing Yoda 109 and
Fig. 3.
On this record, we agree with Appellants that the Examiner erred in
finding that Yoda describes the claimed the TiO2-SiO2 aerogel monolith
having a Ti-O-Si bond characterized by the infrared spectrum absorption
peak around 960 cm-1 encompassed by claim 1 to one skilled in the art. The
Examiner has not established that as a matter of fact it reasonably appears
from Yoda’s method that Yoda’s TiO2-SiO2 aerogel is identical to the
claimed TiO2-SiO2 aerogel monolith having a Ti-O-Si bond characterized by
the infrared spectrum absorption peak around 960 cm-1 based on a
comparison of Appellants’ disclosed process (see above p. 4) with Yoda’s
method. See, e.g., Spada, 911 F.2d at 708. While Ti-O-Si bonds may form
via the synthesis described by the Examiner, the Examiner has not adduced
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scientific reasoning or evidence establishing that the Ti-O-Si bonds formed
would result in the characteristic infrared spectrum absorption peak around
960 cm-1 specified in claim 1.
Thus, the Examiner has not considered the effect of Yoda’s process
steps on Ti-O-Si bond formation characterized by the infrared spectrum
absorption peak around 960 cm-1, and therefore, has not established that it
reasonably appears that claim 1 reads on Yoda’s TiO2-SiO2 aerogel.
Accordingly, in the absence of a prima facie case of anticipation, we reverse
the ground of rejection of claims 1, 2, 7, 11, and 23 over Yoda under
35 U.S.C. § 102(b).
Turning now to the ground of rejection of claims 1 under § 103(a)
over Yoda, we agree with Appellants that the Examiner has not supported
the ground of rejection under this statutory provision with reasoning
establishing that Yoda alone would have led one of ordinary skill in the art
to the claimed aerogel encompassed by claim 1. Br. 5 and 9-10; Ans. 9.
See, e.g., B.F. Goodrich, 72 F.3d at 1582; see also, e.g., Oetiker, 977 F.2d at
1445.
Accordingly, in the absence of a prima facie case of obviousness, we
reverse the ground of rejection of claims 1, 2, 7, 11, and 23 over Yoda under
35 U.S.C. § 103(a).
On the same basis, we also reverse the ground of rejection of claims
3 and 4 over Yoda under 35 U.S.C. § 103(a). See above p. 2.
We have reversed all of the grounds of rejection, and thus, the
Primary Examiner’s decision is reversed.
REVERSED
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