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 .
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-2, 8, 10, 12, 14, 22 and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP-2009-299893 to Abe, in view of US Pub No. 2018/0022059 to Dill and WO-2009/093002 to Abdul-Kader.
Regarding Claims 1-2, 8, 10, 12, 14, 22 and 25-26
Abe teaches a thermal insulation comprising a thermally insulating fabric such as non-woven or woven comprising a textile fabric layer impregnated with hydrophobized fumed silica in an amount between 50 and 99% by weight, which overlaps the claimed range of between 40and 50% by weight, and a fiber having a glass transition temperature above 200 degrees Celsius such as glass fibers which may be in the form of a non-woven textile fabric layer (Abe, paragraph [0001], [0022], [0027], [0032], [0038], [0043]-[0044], [0051]). Abe teaches the inclusion of an opacifier in an amount of 5 to 40% by weight which overlaps the claimed range of less than 10% by weight , such as silicon carbide (Id., paragraph [0052]-[0053]). Abe teaches that thermally insulating fabric layer may comprise a binder in amount of less than 20% by weight, which overlaps the claimed range of less than 10% (Id., paragraph [0040]). Abe teaches that a sealing resin such as silicone may be included within the seams of the composite which meets the limitation of a binder applied in an amount of less than 10% (Id., paragraph [0067]).
Abe does not appear to teach that the glass fibers are in the form of a needle felt having a basis weight between 1000 and 1800 gsm. However, Dill teaches a flexible thermal insulation glass fiber composite comprising a glass fiber insulating core in the form of a needle felt having a density between 4 and 15 lb/ft3 and a thickness up to 1.25 inches such as 0.5 inches (12.5 mm), which results in a basis weight at least between approximately 800 to 3,000 gsm overlapping the claimed range of between 1000 and 1800 gsm (Dill, abstract, paragraph [0025], [0031], [0045], [0048]). Dill teaches that the needle felt incorporates hydrophobic fumed silica particles (Id., paragraph [0008], [0035]). Dill teaches that the fiberglass insulation is flexible and mechanically bound without the need for adhesive (Id.). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the composite of Abe, and to include as the non-woven glass fiber component, the nonwoven needle felt of Dill, motivated by the desire to form a conventional thermal insulation having sufficient flexibility without the need for adhesive and utilizing suitable non-woven fiberglass materials known in the art.
Abe does not appear to teach the average pore size of the fumed silica. However, Abdul-Kader teaches a microporous thermal insulation material comprising fumed silica and a fabric layer, wherein the fumed silica has a pore size of 100 nm or less, which overlaps the claimed range of between 50 and 100 nm (Abdul-Kader, abstract, page 1, lines 10-25, page 7, line 30- page 8, line 25). Abdul-Kader teaches that such sized micropores provide a very low transfer of heat by air conduction (Id.). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to form the thermally insulating fabric of Abe, and to optimize the average pore size of the fumed silica within the claimed range, as taught by Abdul-Kader, motivated by the desire to form a conventional fumed silica containing thermal insulation having improved heat transfer properties.
Regarding Claims 12
Abe teaches the inclusion of a binder but does not specifically teach that the binder is of the claimed materials. However, Abdul-Kader teaches that a binder may be utilized in conjunction with fumed silica and an opacifier in an amount of from 1 to 10% by weight of the combination of fumed silica, opacifier and binder (Id., page 4, lines 4-6) which would necessarily overlap the claimed range of less than 10%. Abdul-Kader teaches that said binder improves adhesion and reduces the presence of dust (Id., page 5, lines 1-16). Abdul-Kader teaches that the binder may be colloidal silica (Id., page 4, lines 19-23). It would have been obvious to one of ordinary skill in the art at the time the invention was filed, to form the composite of the prior art combination and to include as the binder as taught by Abdul-Kader, motivated by the desire to improve the adhesion of components and reduce the presence of dust within the composite.
Regarding Claims 14 and 22
Regarding the thermal conductivity and pliability of the fabric although the prior art does not disclose the specific thermal conductivity at 300 degrees Celsius or the specific pliability around a tubular object having the claimed bending radius, the claimed properties are deemed to naturally flow from the structure in the prior art 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 the limitation of “an injected mix,” this limitation is 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 difference 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.
Claim(s) 5, 15, 23-24 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe, in view of Dill and Abdul-Kader as applied to claims 1-2, 8, 10, 12, 14, 22 and 25-26 above, in view of DE 102010005800 to Kratel.
Regarding Claim 5
Kratel teaches a thermal insulation comprising hydrophobic silica modified by silane (Kratel, paragraph . Kratel teaches that the silanes are used to render the fumed silica hydrophobic in an amount between 0.5 to 15% by weight, which overlaps the claimed range of 1 to 5% (Id., paragraph [0032]-[0051]). Kratel teaches that treating the silica with this amount of silane results in an improvement in the insulating properties (Id., paragraph [0028]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to from the insulation of the prior art combination and to utilize as the hydrophobic modification to the silica, silane in an amount taught by Kratel, motivated by the desire to form a conventional insulation product having improved insulating properties.
Regarding Claims 15, 23-24 and 29
The prior art combination teaches that the insulation layer may comprise a thickness of up to 1.25 inches such as 0.5 inches which is equivalent to 12.7 mm (Dill, abstract, paragraph [0025], [0031], [0045], [0048]). The prior art combination further teaches that the insulation fabric may be laminated with additional layers such out two outer layers such as resin films wherein the outer layers may comprise a thickness of between 0.05 and 0.8 mm which overlaps the claimed range of between 0.1 and 0.5 mm (Abe, paragraph [0071], [0081]-[0082]), but does not teach that the outer layers may be fabric layers. However, Kratel teaches that a fabric such as a fleece may be utilized as an alternative to films and may be provided on one or both sides with a textile layer such as a fleece for mechanical stabilization and dust-free handling (Id., [0055]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to from the insulation of the prior art combination and to utilize as the outer layers, fabric layers as taught by Kratel, motivated by the desire to form a conventional insulation product having improved dust-free handling and mechanical stability.
Regarding Claim 23
The prior art combination does not teach the air permeability of the outer layers. However, it should be noted that air permeability is a result effective variable. As air permeability increases, the material exhibits improved breathability at the expense of thermal insulative property. Absent unexpected results, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the air permeability, since it has been held that where general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955). In the present invention one would have been motivated to optimize the air permeability in order to achieve maximum thermal insulative properties.
Allowable Subject Matter
Claims 27 and 28 are allowed.
Claims 6 and 30 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed February 17, 2026 have been fully considered but they are not persuasive. Applicant argues that the prior art combination does not teach the claimed ranges of 40-50% by weight of silica and not exceeding 10% by weight opacifier. Examiner respectfully disagrees. As set forth above, the prior art combination teaches overlapping ranges including at approximately 10% by weight opacifier relative to the amount (50%) of silica. It should be noted that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Applicant argues that Abe does not disclose the mixing of aerogel and infrared opacifier. Examiner respectfully disagrees. As set forth above, this limitation is 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 difference 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.
Applicant argues one of ordinary skill would not apply the fabric of Dill to the invention of Abe due to fact that Dill teaches that hydrophobic additives create dust, and that the invention of Dill has inferior thermal properties. Examiner respectfully disagrees. The rejection alleges the addition of the fabric of Dill to the composite of Abe for the benefit of improving the flexibility without the need for adhesive and utilizing suitable non-woven fiberglass materials known in the art. Furthermore, just as it is obvious for one of ordinary skill in the art to eliminate a feature of the prior art along with its attendant advantage, it also is obvious to employ a feature of the prior art along with its known disadvantage. See e.g., In re Thompson, 545 F.2d 1290, 1294 (CCPA 1976); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/VINCENT TATESURE/ Primary Examiner, Art Unit 1786
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