Appeal 2007-1938
Application 10/050,437
Appellant argues, as to claim 1, that Droege "teaches a drying method
that does not reduce surface tensile forces adequately to produce a
monolithic composite" and "does not teach how to produce an essentially
monolithic foam/mat aerogel composite" (Br. 4). Appellant relies on the
definition of a monolithic composite provided by Dr. Hrubesh in his
Declaration (Br. 4). Dr. Hrubesh testified that his inventive monolithic
glassy carbon composites have average pore sizes less than 100 nm (FF 35).
Dr. Hrubesh based his opinion on typical pore sizes found in silica aerogels
of the prior art said to have "comparable densities" or prepared by
"supercritical drying" (FF 35 and FF 36). In essence, Appellant relies on an
"inverse" product-by-process argument which contends that the claimed
process produces a "monolithic" glassy carbon aerogel composite having an
average pore size less than 100 nm, whereas the Droege process does not.
First, Appellant's specification does not define the claim term
"monolithic" used to characterize the product produced by the claimed
method or provide any porosity data for the three carbon aerosol foam
composites discussed in its Table 1 (FF 11 and FF 13). The Examiner has
construed the claim term "monolithic" as meaning "a uniform whole" (FF
27). During examination of a patent application, claims are given their
broadest reasonable construction consistent with the specification. In re
Zletz, 893 F.2d 319, 320-21, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). “The
reason is simply that during patent prosecution when claims can be
amended, ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.” Id. “An essential purpose during
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous.” Id. 893 F.2d at 322, 13 USPQ2d at 1322. “Only in this way
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: September 9, 2013