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
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 (i.e., changing from AIA to pre-AIA ) 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 24-33 and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Schlesinger et al. (WO2017/174560).
Regarding claims 24-25, 27-33, Schlesinger teaches that it is known to form an insulating geopolymer foam (pg. 1, lines 3-7) comprising fly ash as a binder (claim 2)( an aluminum silicate source as relates to the current claims) in an amount of 15-70% of the composition (col. 11, lines 4-10), an alkaline activator in water wherein the alkaline activator may be sodium water glass (AKA sodium silicate)(pg. 8, lines 23-30) in an amount of 1 to 55% and 0-30% hollow glass beads (pg. 12, lines 29-35) and additional components such as nanocellulose that may be considered additives. Schlesinger teaches mixing solid phase components with liquid phase components into what reasonably would be considered a “slurry”. Schlesinger fails to teach wherein the hollow inorganic material particles are provided later. However, the Courts have long held that changes in the ordering of processing steps in the absence of a new and unexpected result is obvious in view of the prior art order of provided steps. See In re Burhans, 154F.2d 690, 69 USPQ 330 (CCPA 1946). Further the composition may comprise NaOH (claim 4) as an alternative to alkaline activator to sodium silicate. As such, the prior art teaches a range of 1-55% alkaline activator and therefore teaches a range of 1-55% for the combination of sodium silicate and NaOH which reads upon the currently claimed ranges for both in combination and separately. Further, the prior art reasonably supports a range of 15-70% of a combination of fly ash and metakaolin which would read upon the claimed ranges for fly ash and metakaolin in the current claims combined wherein fly ash and metakaolin are shown by the prior art to be known substitutes for one another. Schlesinger fails to teach the amount of water claimed. However, those of ordinary skill in the art would readily recognize that the amount of water present in the sprayable coating composition of Schlesinger would both readily affect both the drying time of said composition and the flowability of said composition wherein too much water would likely lead to coating that were so thinned that they took long amount of times to dry while coating that did not contain enough water would not foam properly or flow from a device used to spray them. Therefore, in the absence of criticality of the specific amount of water claimed in the current application, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of water in the composition of Schlesinger so as to control both drying time and flowability of the coating of Schlesinger. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 26, because the hollow glass spheres of Schlesinger are water insoluble and in a liquid composition comprising the fly ash, they would inherently be coated with fly ash while in the reaction medium.
Regarding claim 37, Schlesinger further teaches wherein the composition is sprayed (pg. 15, lines (34-40).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Schlesinger et al. (WO2017/174560) as applied to claims 24-33 and 36-37 above and further in view of Moore (US5474202).
Regarding claim 38, the teachings of Schlesinger are as shown above. Schlesinger fails to teach wherein the insulating foam is applied to a metal surface of the heater. However, Moore teaches that it is known to provide thermal insulating foam to metal surfaces of a water heater (col. 3, lines 31-48). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide the thermal insulation foam of Schlesinger to the water heater of Moore because the foam of Schlesinger is shown to be thermally insulating and would provide thermal insulation to the water stored by the device of Moore.
Response to Arguments
The applicants’ arguments generally revolve around the concept that both the prior art of Schlesinger fails to teach the currently claimed amount of water present in amended claim 24 and that the range of 10-15% water is critical to the invention of the applicant. As to the general teachings of the amount of water of Schlesinger the examiner does generally agree that the range of the current claims is generally outside the range of the current application. However, as previously provided, the examiner did provide a reasoned argument as to why one would optimize the range of Schlesinger even outside his explicitly stated range. The applicant did not reasonably directly address the position of the examiner so as to state why one would not do explicitly what was stated by the examiner. The examiner acknowledged in the rejection that variables may be present in a prior art invention wherein movement of said variable in some direction may cause some gain at the expense of some other quality while moving a variable in the opposite direction may favor some condition while making one more preferable. This is seemingly the underlying basis of the concept of optimization. Therefore reasonably the applicant should address at least why the proposed optimization of the examiner would not provide the benefits claimed or at least the modifications provided.
As relates to the criticality of the amount of water of the current claims, the applicant provides mere conjecture to support their assertions of benefits within the range without supporting evidence. It is not stated elsewhere in the specification or provided in a sworn statement by the applicant that the range provided is critical, especially in such a manner that could be demonstrated. Further the applicants’ general disclosure would provide embodiments of the current invention with amounts of water explicitly stated as being outside the range claimed (see Example 4). Further it is also noted that the current application lists sodium silicate in the “liquid phase content” which reasonably might imply to one of ordinary skill in the art that it is provided in a commonly used industrial form comprising 40% sodium silicate and 60% water. Accordingly, seemingly no even one single example provided by the prior art application, even though there are several examples provided, actually 1) supports the assertion that the applicant actually had possession of a composition comprising the amount of water claimed and 2) supports the assertion that the range of the amount of water is critical. Quite to the contrary, the current application as provided would seemingly support exactly the opposite position which is that the amount of water present is not critical and can be varied widely as argued by the examiner. The current application provided multiple examples, seemingly set forth as providing a desirable outcome that do not read upon the currently claims range. Further, a showing of criticality of a process parameter range would generally be accompanied by some data showing perhaps failure of material above a certain amount of water and success at other points below a data point and data showing inability to mix below a certain range with a measurable ability to mix above a certain range so that one of ordinary skill in the art could actually assess the point of criticality. Further these data points might commonly be provided in the form of an affidavit comprising sworn statement of an inventor having actually conducted the testing so as to ultimately prove the criticality of particular data points versus other as opposed to a mere statement unsupported by any data points. While this is not required, it can be effective in showing the criticality of a range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717