LG CHEM, LTD

Patent Trials and Appeals Board

Jul 29, 2020

2020003491 (P.T.A.B. Jul. 29, 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.
15/554,383 08/29/2017 Kyoung Shil OH 29137.02439.US00 6642
30827 7590 07/29/2020
Dentons US LLP
1900 K. Street, N.W.
Washington, DC 20006
EXAMINER
PENNY, TABATHA L
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
mlaip@dentons.com
mlapto@mckennalong.com
paul.fugitt@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYOUNG SHIL OH, MI RI KIM, and JE KYUN LEE
________________________

Appeal 2020-003491
Application 15/554,383
Technology Center 1700
________________________

Before N. WHITNEY WILSON, CHRISTOPHER C. KENNEDY, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
December 20, 2018 decision finally rejecting claims 1–5 and 7–16. We
have jurisdiction over the appeal 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. Appellant identifies LG Chem. Ltd. as the real party in
interest (Appeal Br. 3).
Appeal 2020-003491
Application 15/554,383

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to a method for preparing a silica
aerogel-containing blanket (Spec., Abstract). Silica aerogels are materials
having high porosities and specific surface areas, and low thermal
conductivities, and are said to be used in many fields such as thermal
insulation materials, catalysts, sound absorbing materials, and interlayer
insulating materials in semiconductor circuits (Appeal Br. 6). However,
because silica aerogels are said to have low mechanical strength due to their
porous structure, they are said to commonly be produced as aerogel blankets
or aerogel sheets by forming composites with a base material such as a
typical glass fiber, ceramic fiber, or polymer fiber (id.). Details of the
claimed method are set forth in independent claim 1, which is reproduced
below from the Claims Appendix of the Appeal Brief:
1. A method for preparing a silica aerogel-containing blanket,
comprising:
a step for preparing a reaction solution including an
alkoxysilane-based compound produced by decomposition of a
silazane-based surface modification agent and an alcohol-based
compound by reacting the silazane-based surface modification
agent with the alcohol-based compound;
a step for preparing a silica gel-base material composite
by adding a silica precursor, water, and a polar organic solvent
to the reaction solution to prepare a silica sol, and then
immersing a base material for a blanket in the prepared silica
sol to gelate the silica sol; and
a step for drying the silica gel-base material composite.

Appeal 2020-003491
Application 15/554,383

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REJECTIONS
I. Claims 1–5, 7, and 9–16 are rejected under 35 U.S.C. § 103 as
unpatentable over Ou.2
II. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Ou in view of Fiedler.3

DISCUSSION
Appellant does not argue the claims or the rejections separately (see,
Appeal Br. 11–15). Accordingly, we select claim 1 as representative and
focus our analysis on the rejection of claim 1 over Ou. The remaining
claims will stand or fall with claim 1.
The Examiner finds that Ou teaches a method of making a silica
aerogel-containing blanket which is the same as the claimed method, except
that Ou does not disclose the claimed order of steps (Final Act. 2). The
Examiner finds, in particular, that Ou’s method describes first mixing silica
precursor, water and ethanol to prepare a silica sol, then immersing a base
material (i.e., a blanket) into the silica sol to gelate it onto the blanket (id.).
The Examiner further finds that Ou teaches that blanket is then aged, and
then treated with an ethanolic solution of hexamethyldisilazane (the surface
modifying agent) (id., citing Ou ¶ 75 (Example 9)).
The Examiner also finds that Ou does not explicitly teach the claimed
order of adding the silica precursor, water, and polar organic solvent to the
reaction solution of the surface modification agent and the alcohol based
compound to prepare the silica sol, followed by immersing a base material

2 Ou et al., US 2005/0192367 A1, published September 1, 2005.
3 Fiedler et al., EP 2 231 789 B2, published September 29, 2010.
Appeal 2020-003491
Application 15/554,383

4
for the blanket in the prepared silica sol, followed by a drying (aging) step.
However, the Examiner determines that “selection of any order of mixing
ingredients is prima facie obvious” (id., citing MPEP 2144.04 IV C).
Appellant argues that the data presented in the Specification
demonstrates that the claimed invention, which involves preparing the
surface modifying solution first and applying it before the gelation and
drying steps, provides superior results as compared to the prior art and,
therefore, would not have been obvious (Appeal Br. 11–12).
Appellant’s argument is persuasive. It is well settled that Appellant
has the burden of showing unexpected results. In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The burden requires Appellant to proffer factual evidence that
actually shows unexpected results relative to the closest prior art, see In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is
reasonably commensurate in scope with the protection sought by the claims
on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764,
786 (CCPA 1972).
In this instance, Appellant has pointed to Comparative Examples 2
and 3, which show a process using the same order of steps as Ou (Appeal Br.
12). The data presented in Table 1 of the Specification shows that in the
case of Comparative Examples 2 and 3, the amount of HMDS
(hexamethyldisilazane) used is approximately 13 g/100 ml of sol, while the
examples according to the claimed method use anywhere from 1.67 to 4.98 g
of HMDS per 100 ml of sol, while achieving the same thermal conductivity
(see Appeal Br. 12–13).
Appeal 2020-003491
Application 15/554,383

5
The Examiner does not dispute this data, but argues that because Ou
itself shows acceptable levels of thermal conductivity, the data presented
does not show any criticality in the order of mixing (Ans. 3). However, the
Examiner’s position does not address the argument made by Appellant,
which is that the claimed order of steps permits the use of significantly
smaller amounts of HMDS to achieve similar levels of thermal conductivity.
That the claims do not recite specific levels of a silazane-based surface
modification agent or thermal conductivity is not determinative, as the
showing demonstrates that much smaller amounts of the surface modification
agent is needed to achieve the same level of thermal conductivity for the
claimed method as compared to the prior art method.
With respect to the issue of whether the data is commensurate in
scope with claims, we note that Appellant provides a reasonable technical
explanation of why the unexpected benefit of the claimed order of steps
would apply to the use of different surface modification agents, namely that
the claimed order of steps allows both the surface and the inside of the silica
gel to be hydrophobized (Appeal Br. 13). The Examiner does not contest
this explanation. Appellant’s technical explanation is sufficient, in our
judgment, to show that the showing is reasonably commensurate with the
scope of the claims.
Accordingly, we determine that Appellant has demonstrated reversible
error in the prior art rejections.

Appeal 2020-003491
Application 15/554,383

6
CONCLUSION
In summary:

Claims
Rejected
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7, 9–16 103 Ou 1–5, 7, 9–16
8 103 Ou, Fiedler 8
Overall
Outcome
1–5, 7–16

REVERSED