Patent application on reinforced aerogel rejected as obvious. IN RE: ASPEN AEROGELS

When an inventor creates an invention the inventor can protect their invention with a patent. A patent is a set of exclusive rights granted, by a government, to the inventor of an invention. To get a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The United State Patent and Trademark Office reviews patent applications and grants a patent if the invention meets several requirements. A patent application must demonstrate that an invention is new, useful and not obvious for a patent to be granted. The requirements that an invention be new, useful and not obvious are deceivingly simple. While most people may be familiar with the dictionary definition of “obvious” it has an extremely precise definition in the context of patent law.

An invention that would have been obvious to a person of ordinary skill at the time of the invention is not patentable. 35 U.S.C. 103. The United States Supreme Court articulated the framework for the objective analysis for determining obviousness under 35 U.S.C. 103 in GRAHAM v. JOHN DEERE CO., 383 U.S. 1 (1966).

Obviousness is a question of law based on underlying factual inquiries. The following factors must be considered to resolve the issue of obviousness: (a) the scope and content of the prior art; (b) the differences between the claimed invention and the prior art; and (c) the level of ordinary skill in the pertinent art. In addition to these factual inquires there are also “secondary considerations” which are relevant in an obviousness inquiry. The secondary considerations include (a) evidence of commercial success; (b) long-felt but unsolved needs; (c) failure of others; and (d) unexpected results.

The question of obviousness must be resolved on the basis of these factual inquiries. Every patent application is different and must be decided on its own facts, these factual inquiries, including secondary considerations, are the controlling inquiries in any obviousness analysis. Because is can be difficult to understand exactly how the law should be applied to the facts it is useful to review case law to develop a better understanding.

IN RE: ASPEN AEROGELS, INC., 2019-2176 (C.A.F.C. 2020) illustrates a case where a method of forming an layered structure of areogel was found to be obvious.

Aerogels are effective insulating materials, but they are fragile on their own, so many applications require adding reinforcing structures. One way to create reinforced aerogel is to pour a liquid form of aerogel into a fibrous material and then dry the aerogel. The fibers inside then strengthen the otherwise fragile structure.

Aspen filed Patent Application No. 14/446,663 (the ’663 application) regarding layered reinforced aerogel. The ’663 application claims a layered structure, where one layer is fiber-reinforced aerogel and a second layer is another fiber-containing material that may or may not be fiber-reinforced aerogel. The two layers are held together by interlaced fibers.

The examiner found two pieces of prior art that render the claims in Aspen’s application obvious: U.S. Patent App. No. 2002/0094426 (Stepanian) and the English translation of the Abstract of Japanese Patent No. 2000-080549 (Sano). Stepanian teaches placing layers of fibrous material adjacent to each other and then filling those layers with aerogel to create an aerogel with multiple layers of fibrous materials. Stepanian does not teach interlacing the layers of fiber, however the examiner determined that Sano teaches connecting fibrous materials by interlacing fibers through a technique known as needle punching. The examiner determined that it would have been obvious to a person having ordinary skill in the art to combine the two pieces of prior art. The Patent Trial and Appeal Board affirmed the examiner’s rejection of Aspen’s application and Aspen appealed to the Court of Appeals for the Federal Circuit.

On appeal Aspen argued that the prior art does not teach layers of fiber reinforced aerogel attached to a separate layer of a different fibrous material, and therefore its invention is not obvious. The Federal Circuit also noted that this limitation is not in the claims of the application. The Federal Circuit also noted that whether layers of fibrous material are filled with aerogel and then stacked or stacked and then filled with aerogel makes no difference if the result is the same as the composite claimed in the ‘663 application. The Federal Circuit affirmed the Board’s decision because it found that the prior art teaches a layered fiber-containing aerogel structure, and there was substantial evidence that an artisan would have known to interlace the layers of fibers.

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