DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on January 5, 2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12, 15-19, 21-26, 28, and 29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-12, 15-19, 21-26, 28, and 29, claims 1 and 17 recite the composite coating formed into a coating by application to the substrate “and directly adhered to the substrate without interstitial materials.” Applicants’ specification as originally filed does not appear to teach the claimed limitation. Note that the limitation is a negative limitation. Any negative limitation or exclusionary proviso must have basis in the original disclosure. Since the specification does not recite “interstitial materials,” the specification clearly lacks any recitation of directly adhering without interstitial materials as claimed.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12, 15-19, 21-26, 28, and 29 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1-12, 15-19, 21-26, 28, and 29, claims 1 and 17 recite the composite coating formed into a coating by application to the substrate “and directly adhered to the substrate without interstitial materials.” “Interstitial” ordinarily means “small spaces.” It is unclear what the scope of the claim necessarily entails as “interstitial” is not recited in the specification as originally filed, and the subjectivity associated with “interstitial” in the claimed “interstitial materials” lacks guidance as to the scope of the limitation. Additionally, even if “interstitial materials” was properly supported in the specification, it is further unclear if the claim is solely directed to “interstitial materials,” such that “non-interstitial materials” are not excluded by the claim.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-12, 15-19, 21-26, 28, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2017/0203552 to D’Arcy in view of USPN 7,101,607 to Mollendorf.
Regarding claims 1-12, 15-19, 21-26, 28, and 29, D’Arcy teaches thermally insulative materials comprising a polymer matrix, aerogel particles and expanded microspheres, wherein the thermal conductivity of the thermally insulative material is less than 40 mW/mK at atmospheric conditions (D’Arcy, Abstract). D’Arcy teaches that the polymer matrix may comprise a polyurethane (Id., paragraphs 0010, 0025). D’Arcy teaches that silica aerogel particles are particularly good conductive insulators, wherein the particles may have a size from about 2 µm to about 24 µm (Id., paragraph 0026) and wherein the aerogels may be hydrophobic where bonding is desired (Id., paragraph 0030). D’Arcy teaches that expandable microspheres or foaming agents are used to expand the thermally insulative material in a foamed material (Id., paragraph 0036). D’Arcy teaches laminating or adhering additional layers to form articles, wherein one or more layers can be adhered to both the first and second side of the thermally insulative material (Id., paragraph 0041). D’Arcy teaches that the one or more layers can be a woven, knit or nonwoven layer (Id.). Note that as shown in at least the Examples, the particles are bound within the matrix.
Regarding the coating formed into a coating by application to the substrate and directly adhered to the substrate without interstitial materials, as set forth above, it is unclear exactly what is claimed. However, D’Arcy teaches that the thermally insulative material can be laminated or adhered or otherwise bonded to one or more additional layers (D’Arcy, paragraph 0041). D’Arcy teaches that the layers can be adhered to the thermally insulative material using an adhesive, welding, calendaring, coating or a combination thereof (Id.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the insulation material of D’Arcy, wherein the thermally insulative material is coated onto a textile layer by application to the textile layer, motivated by the desire to form a conventional thermally insulative material composite by bonding the layers according to a method established by D’Arcy, which would not require the presence of an additional adhesive layer or step.
Alternatively, D’Arcy establishes adhering the thermally insulative material to an additional textile layer. Additionally, the manner in which the substrate is coated is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding the coating having a thickness at least ten times greater than the average diameter of the particles, D’Arcy teaches an exemplary thickness of 2 mm or 1.25 mm (D’Arcy, paragraph 0036, Example 6). Based on the silica aerogel particle sizes set forth in D’Arcy, the claimed comparison is met by the totality of the teachings of the prior art.
D’Arcy teaches that the aerogel particles are present in an amount of 30% by weight and that the expandable microspheres in an amount of 0.5% to 15% by weight, wherein the resulting material is thermally insulative with a thermal conductivity of less than 40 mW/mK (D’Arcy, paragraphs 0039, 0040). D’Arcy teaches using the thermally insulative material in articles such as gloves, footwear and garments (Id., paragraph 0012). D’Arcy does not appear to teach the claimed volume percentages and the inclusion of unexpanded microspheres.
Mollendorf teaches a composite insulation material including a syntactic foam component and a plurality of aerogel inserts embedded within the syntactic foam component (Mollendorf, Abstract, column 2 lines 35-56). Mollendorf teaches that the syntactic foam component can include an elastomeric matrix and a filler dispersed substantially throughout the elastomeric matrix (Id., column 4 lines 41-55), wherein the filler can include a plurality of microspheres, such as glass microspheres, in an amount by volume of between about 10 and about 70 percent of the syntactic foam component (Id., column 4 line 66 to column 5 line 20). Mollendorf teaches that the glass microspheres may be hollow (Id., Example 1). Mollendorf teaches that the aerogel inserts can includes silica, wherein the aerogel inserts are present in any volume of between about 40 percent and about 90 percent of the composite insulation material (Id., column 5 lines 29-42). Mollendorf teaches that the composite insulation material can include a laminate layer substantially covering the first surface of the composite insulation material core and a laminate layer substantially covering the opposed second surface of the composite insulation material core, such as a nylon/spandex laminating compound (Id., column 6 lines 9-30), which is a cloth-like material (Id., column 15 lines 13-31). Mollendorf teaches that the material can further include an adhesive layer between the laminate layers and the insulation material core (Id., column 6 lines 31-53). Mollendorf teaches that the invention relates to an article of clothing containing the composite insulation material, such as a waterproof garment (Id., column 9 lines 51-58). Mollendorf teaches that the composite insulation material can have a thermal conductivity of not more than about 50 mW/m∙K, preferably between about 10 and about 50 mW/m∙K (Id., column 9 lines 8-12).
Mollendorf establishes a substantially similar insulation material for a substantially similar use in garments, wherein the insulation material additionally comprises a substantially similar and overlapping thermal conductivity. Additionally, it is reasonable for one of ordinary skill to expect that both solid and hollow glass microspheres are suitable fillers materials, where hollow glass microspheres may be utilized based on the desired density of the material, as hollow glass microspheres occupy similar volumes to solid glass microspheres but at a lower weight.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the insulation material of D’Arcy, wherein the microspheres comprise solid or unexpanded microspheres and hollow or expanded microspheres, such that the volume percent ratio of the aerogel to the expanded and unexpanded microspheres is within the claimed ratios or approximately equal, as Mollendorf establishes suitable volume ratios in order to predictably result in the properties set forth in D’Arcy, such as thermal conductivity, based on a substantially similar structure and purpose.
Regarding claims 2, 3 and 28, as set forth above, the prior art combination teaches that the polymer matrix may comprise a polyurethane. Additionally, the prior art combination teaches that expandable microspheres or foaming agents are used to expand the thermally insulative material in a foamed material. Additionally, the prior art combination teaches the matrix as an aqueous dispersion (D’Arcy, paragraph 0031, Examples 1-6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the insulation material of D’Arcy, wherein the polymer matrix is an aqueous polyurethane dispersion and includes foaming agents, motivated by the desire of forming a conventional insulation material based on the totality of the teachings of the prior art.
Regarding claims 6-9 and 18, the prior art combination teaches that the aerogels may have a size from about 1 µm to about 10 µm (D’Arcy, paragraph 0026). The prior art combination teaches that smaller aerogel particles form a more uniform mix with other components of the insulation materials (Id., paragraph 0027). Since the particle diameter of the prior art overlaps with the claimed ranges, it is within the level of ordinary to determine suitable particle diameters and particle size distributions based on the resulting thermal conductivity and volume amount set forth in the prior art. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the composite insulation material of the prior art combination, and adjusting and varying the particle size distribution and median, such as within ranges, including the d(10), d(90) and d(50) ranges, motivated by the desire of forming a conventional composite insulation material comprising aerogel particle sizes known in the art as being predictably suitable for insulation materials, based on the desired thermal conductivity and volume amount.
Regarding claims 15, 19 and 22, the prior art combination does not appear to specifically teach the claimed property. However, the prior art combination teaches that aerogels are thermal insulators which significantly reduce convection and conductive heat transfer (D’Arcy, paragraph 0026). The prior art combination teaches a thermal conductivity within the claimed range, as the thermal conductivity may be tailored by varying the weight percentage of the aerogel in the matrix (Id., paragraph 0034). Additionally, as set forth above, the prior art combination teaches a substantially similar or identical composite for a substantially similar or identical purpose. Therefore, although the prior art combination does not disclose the claimed property, the claimed property is deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise.
Regarding claim 17, note that the limitation directed to the coating thickness and average diameter of the particles is interpreted as only referencing the relationship between the coating thickness and the silica aerogel particles and not the totality of the particulate addition (i.e. including the microspheres). Such an interpretation is consistent with the claims and Applicants’ remarks of November 16, 2022.
Regarding claim 21, the prior art combination teaches laminating the thermally insulative material to one or more additional layers such as a woven, knit or nonwoven layer (D’Arcy, paragraphs 0041, 0042).
Regarding claims 23 and 24, as set forth above, the prior art combination teaches that the thermal conductivity of the thermally insulative material is less than 40 mW/mK at atmospheric conditions.
Regarding claims 25, 26 and 29, the prior art combination teaches exemplary thicknesses of 2 mm or 1.25 mm (D’Arcy, paragraph 0036, Example 6). The prior art combination teaches that the preform may be calendered to a desired thickness and expanded into a thermally insulative material (Id., paragraph 0038). The prior art combination suggests that thicknesses such as 0.36 mm after expansion are suitable (Id., paragraphs 0069, 0070). Additionally, Mollendorf teaches that the foam component can have a thickness of between about 2 and about 25 millimeters, although smaller syntactic foam components can be prepared depending on their ultimate use (Mollendorf, column 5 lines 21-28). It is reasonable for one of ordinary skill to expect that decreasing the thickness would predictably decrease the weight of the composite, while adjusting the thermal conductivity as desired.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the insulation material of the prior art combination, and adjusting and varying the thickness of the material, such as within the claimed ranges, as it is within the level of ordinary skill to determine properties of the composite based on the desired end use of the material, as taught by the prior art combination.
Response to Arguments
Applicants’ arguments filed January 5, 2026, have been fully considered but they are not persuasive. Applicants argue that in response to the Decision of the Board, the claim language that the coating is “directly adhered to the substrate without interstitial materials” precludes any interpretation of the claims in which there is an adhesive or other layer between the substrate and coating. Examiner respectfully disagrees. As set forth above, the claimed limitation lacks support in the specification as originally filed. Additionally, the claimed limitation is indefinite for the reasons set forth above. Additionally, Applicants’ arguments that “interstitial materials” necessarily excludes an adhesive or other layer lacks support or perspective in the specification as originally filed.
Additionally, regardless of the 35 U.S.C. 112 issues, D’Arcy teaches that the layers can be adhered to the thermally insulative material using an adhesive, welding, calendaring, coating or a combination thereof. Alternatively, D’Arcy establishes adhering the thermally insulative material to an additional textile layer. Additionally, the manner in which the substrate is coated is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicants to show unobvious differences between the claimed product and the prior art product. Applicants have not established to the contrary.
Conclusion
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/PETER Y CHOI/Primary Examiner, Art Unit 1786