Lawrence Livermore National Security, LLC

Patent Trials and Appeals Board

Dec 2, 2020

2019006778 (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.
13/843,761 03/15/2013 Theodore F. Baumann LLNLP111/IL-12205B 1978
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 2019-006778
Application 13/843,761
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 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Lawrence
Livermore National Security, LLC. Appeal Brief (“Appeal Br.”) filed
March 25, 2019, 2.
Appeal 2019-006778
Application 13/843,761

2
CLAIMED SUBJECT MATTER
The invention relates to adsorption cooling systems using metal
organic frameworks (“MOFs”). Specification (“Spec.”) filed March 15,
2013, Title, 1.2 Appellant discloses that MOFs have been used in some
adsorption cooling applications, wherein the MOFs were used for
adsorption/desorption of water which limits their application. Id. ¶ 6.
Therefore, Appellant discloses that it would be beneficial to provide
improved adsorptive cooling systems employing MOFs by increasing
accessible surface area for the MOFs, using MOFs capable of
adsorption/desorption of other refrigerants, and facilitating ingress and
egress of refrigerants to and from the MOFs. Id. Appellant discloses that the
substrate includes a plurality of microchannels that provide ingress and
egress paths for a refrigerant. Id. ¶ 8.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A product comprising a highly adsorptive
structure, the highly adsorptive structure comprising:
a corrugated substrate having a plurality of
microchannels and/or microcapillaries disposed on one or
more surfaces of the substrate; and
a metal-organic framework (MOF) comprising a
plurality of metal components coordinated to a plurality
of organic spacer molecules;

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
November 1, 2018, the Examiner’s Answer (“Ans.”) dated August 20, 2019,
and the Reply Brief (“Reply Br.”) filed September 16, 2019.
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Application 13/843,761

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wherein the MOF is coupled to at least one surface
of the substrate via the microchannels and/or
microcapillaries; and
wherein the MOF is configured to adsorb and
desorb a refrigerant under predetermined thermodynamic
conditions, the refrigerant being selected from the group
consisting of: chlorofluorocarbons, fluorocarbons,
perfluorocarbons, halocarbons, halogenated aldehydes,
halogenated amines, halogenated hydrocarbons,
halomethanes, hydrochlorofluorocarbons,
hydrofluoroethers, hydrofluoroolefins, organochlorine
compounds, and organofluorine compounds.
Independent claim 6 recites a product comprising a highly
adsorptive structure similar to that of claim 1, wherein the MOF is
coupled to interior and exterior surfaces of the plurality of
microchannels.
Independent claim 16 recites an adsorptive cooling system
comprising first and second highly adsorptive structure similar to that
of claim 1.3
REFERENCES
The Examiner relies on the following prior art:

3 Upon further examination, the Examiner and Appellant may wish to
consider whether the claims of this application conflict with the claims of
US Patent No. 10,830,504, US Patent Application No. 13/457,338, and
US Patent Application No. 13/843,818.
Appeal 2019-006778
Application 13/843,761

4
Name Reference Date
Huang US 6,946,164 B2 Sept. 20, 2005
Lockledge et al.
(“Lockledge”)
US 7,520,371 B2 Apr. 21, 2009
Biener et al. (“Biener”) US 2010/0230298 A1 Sept. 16, 2010
Hwang et al. (“Hwang”) US 2011/0067426 A1 Mar. 24, 2011
Farmer US 2011/0100036 A1 May 5, 2011
Worsley et al.
(“Worsley”)
US 2012/0028798 A1 Feb. 2, 2012
Lockledge et al.
(“Brownawell”)4
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 1–4, 6, 9, 12, and 20 as unpatentable over Hwang in view
of Brownawell;
2. Claims 1–4, 6, 9, 12, and 20 as unpatentable over Hwang in view
of Farmer and Brownawell;
3. Claims 13 and 14 as unpatentable over Hwang in view of Farmer
and Brownawell, and further in view of Biener;
4. Claims 5 and 8 as unpatentable over Hwang in view of Farmer and
Brownawell, and further in view of Worsley and Lockledge;

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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5. Claims 7, 10, and 11 as unpatentable over Hwang in view of
Farmer and Brownawell, and further in view of Worsley,
Lockledge, and Huang;
6. Claim 15 as unpatentable over Hwang in view of Farmer and
Brownawell, and further in view of Huang;
7. Claims 16–19 as unpatentable over Hwang in view of Farmer and
Brownawell, and further in view of Worsley and Huang; and
8. Claim 6 as unpatentable over Hwang in view of Lockledge.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections.

Rejection 1
The Examiner rejects claims 1–4, 6, 9, 12, and 20 under 35 U.S.C.
§ 103(a) over Hwang in view of Brownawell. A complete statement of this
rejection is set forth in the Final Office Action, pages 2–6.
The Examiner finds that Hwang teaches a product comprising a highly
adsorptive structure as recited in claims 1 and 6, except for explicitly
teaching that the MOF is configured to adsorb and desorb a listed
refrigerant, that the substrate comprises a plurality of microchannels and/or
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microcapillaries, and that the MOF is coupled to the substrate via these
microchannels and/or microcapillaries. Final Act. 2–3, 4–5. However, the
Examiner finds that Hwang’s MOF is configured to adsorb and desorb a
refrigerant, including water, alcohol, or ammonia, and determines that it
likewise is capable of adsorbing and desorbing any of the listed refrigerants.
Id. at 3. In addition, 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 the Examiner’s rejection improperly
relies on nonanalogous art. Appeal Br. 6. In particular, Appellant contends
that Brownawell is outside Appellant’s field of endeavor and is not
reasonably pertinent to the problem with which Appellant is concerned. Id.
at 6–9. In this regard, Appellant asserts that Brownawell is functionally
different from the claimed substrate with microchannels in that the MOF
adsorbs and retains refrigerant, whereas Brownawell’s filter system permits
oil to flow through the chemical filter while irreversibly retaining
combustion acid. Id. at 7. Moreover, Appellant argues that those skilled in
the art would not have combined Hwang and Brownawell as the Examiner
proposes because those skilled in the art would recognize that Brownawell
teaches that the particles cannot accommodate bulkier molecules such as
weak bases and, therefore, are not capable of accommodating Hwang’s
MOF. Id. at 13–14.
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In response to Appellant’s argument that Brownawell is non-
analogous prior art, the Examiner finds that Appellant discloses that the
highly adsorptive structure is achieved by forming peaks and valleys and
microchannels, whereas Brownawell teaches increasing the substrate’s
surface area to increase the amount of base material deposited on the
surface. Ans. 4. Therefore, the Examiner determines that Brownawell is not
outside Appellant’s field of endeavor as both Appellant and Brownawell
increase substrate surface area to capture more MOF or solution,
respectively. Id.
Appellant’s arguments are persuasive of reversible error. Our
reviewing court has stated that “[t]wo separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.” In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (citations and internal quotes
omitted).
The Specification describes “the field of the invention” as “relat[ing]
to metal organic frameworks (MOFs), and particularly, to high-surface area
MOFs as adsorbents for adsorptive cooling systems and methods of use
thereof.” Spec. ¶ 3. In addition, claims 1 and 6 recite that the MOF is
configured (claim 1) or adapted (claim 6) for adsorbing and desorbing a
refrigerant under predetermined thermodynamic conditions. In contrast,
Brownawell describes its field of invention as “relat[ing] to lubrication
systems for use with internal combustion engines and more particularly, to a
lubrication system that reduces the formation of combustion by-products
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without reducing the performance of the lubricant in lubricating the internal
combustion engine.” Brownawell ¶ 2. In light of such disclosures, the
Examiner fails to explain how Brownawell is from the same field of
endeavor as Appellant.
To the extent that the Examiner, instead, is asserting that Brownawell
is reasonably pertinent to the problem with which the inventors were
involved, Appellant contends that the Examiner fails to explain how
Brownawell’s ion exchange chemical filtration would solve any problem
presented in forming an adsorption/desorption cooling system or improving
the refrigerant adsorption/desorption performance of MOF substrate
combinations. Appeal Br. 8–9. We agree. In this regard, we note that the
Examiner does not respond to or otherwise address Appellant’s argument
that Brownawell’s particles would be unsuitable for use with Hwang’s MOF
because the particle’s micropores could not accommodate Hwang’s much
larger MOF. Nor does the Examiner address Appellant’s assertion that
Brownawell is functionally different from the claimed invention. Therefore,
Appellant’s arguments persuade us that the Examiner fails to establish that
Brownawell is reasonably pertinent to the problem with which the inventors
here were involved.
Thus, on this record, we are persuaded that Brownawell is non-
analogous prior art. Accordingly, we do not sustain the Examiner’s
obviousness rejection of claims 1–4, 6, 9, 12, and 20 as unpatentable over
Hwang in view of Brownawell.

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Rejections 2–7
In each of Rejections 2–7, the Examiner relies on Brownawell in the
same manner as in Rejection 1. The Examiner does not rely on the additional
prior art references used in these rejections to remedy the deficiencies
discussed above in the combination of Hwang and Brownawell.
Accordingly, we likewise do not sustain the Examiner’s obviousness
rejections of claims 1–20 as unpatentable over Hwang and Brownawell,
combined with Farmer, Biener, Worsley, Lockledge, and/or Huang.

Rejection 8
The Examiner rejects claim 6 under 35 U.S.C. §103(a) as
unpatentable over Hwang in view of Lockledge. A complete statement of
this rejection is set forth in the Final Office Action, page 15.
The Examiner finds that Hwang teaches all the limitations of claim 6,
and further discloses that the corrugation on the substrate surface act as
microchannels and that the MOF reaction solution is deposited on the
exterior of these microchannels. Final Act. 15. However, the Examiner
acknowledges that “Hwang does not explicitly teach [a] plurality of the
microchannels, where MOF is coupled.” Id. For this feature, the Examiner
finds Lockledge teaches a plurality of microchannels in a substrate having
grooves and ridges arranged in a concentric pattern, wherein solvent is
deposited on the channels. Id. The Examiner concludes that it would have
been obvious to have modified Hwang’s adsorptive structure by providing
microchannels on the substrate “in order to increase the surface area of the
adsorptive structure, improved diffusion efficiency and utility as a new
catalyst support or electrode.” Id.
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However, we note that Lockledge is the US equivalent of
Brownawell. For example, Lockledge was filed as US Patent Application
No. 11/283,435, and was a continuation-in-part of US Patent Application
No. 11/133,530. Brownawell is an international patent publication of a
Patent Cooperation Treaty (“PCT”) application claiming priority to each of
the above US patent applications. Moreover, the Examiner relies on the
identical teachings in Lockledge and Brownawell for both this rejection and
Rejection 1. Therefore, Lockledge, like Brownawell, is non-analogous prior
art. As such, this rejection suffers from the same deficiencies as discussed
with regard to Rejection 1 above. Accordingly, we do not sustain the
Examiner’s obviousness rejection of claim 6 as unpatentable over Hwang in
view of Lockledge.
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 1–20 is reversed.
More specifically, each of the rejections of the claims under 35 U.S.C.
§ 103(a) as set forth in the Final Office Action is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6, 9, 12,
20
103(a) Hwang,
Brownawell
1–4, 6, 9, 12,
20
1–4, 6, 9, 12,
20
103(a) Hwang, Farmer,
Brownawell
1–4, 6, 9, 12,
20
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11
13, 14 103(a) Hwang, Farmer,
Brownawell, Biener
13, 14
5, 8 103(a) Hwang, Farmer,
Brownawell,
Worsley, Lockledge
5, 8
7, 10, 11 103(a) Hwang, Farmer,
Brownawell,
Worsley,
Lockledge, Huang
7, 10, 11
15 103(a) Hwang, Farmer,
Brownawell, Huang
15
16–19 103(a) Hwang, Farmer,
Brownawell,
Worsley, Huang
16–19
6 103(a) Hwang, Lockledge 6
Overall
Outcome
1–20

REVERSED