DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 5, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on January 5, 2026 has been fully considered. In light of the amendment, the previous rejections not cited below are withdrawn. The new grounds of rejections are set forth below.
Claim Rejections - 35 USC § 112
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.
4. Claims 1 and 24 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.
5. Instant claims 1 and 24 refer to “intumescent particles” used for the second time, but there is no a preposition “the” or “said” in front of those terms; therefore, it is not clear if “intumescent particles” used for the second time are the same or different from those cited earlier.
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.
6. Claims 1-2, 4-7, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Schwarz et al (US 4,833,172) in view of Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552), as evidenced by Sodium Silicate, Wikipedia flyer and Sodium Aluminosilicate, Wikipedia flyer.
It is noted that while the rejection is made over GB 2562254 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0042301 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0042301.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
7. Schwarz et al discloses a microporous material comprising:
A) an ultrahigh molecular weight polyolefin matrix, specifically ultra-high molecular weight polyethylene (UHMWPE) (Abstract, col. 2, lines 35-40, as to instant claim 4),
B) 50-90%wt of a particulate silicious filler, specifically vermiculite (as to instant claim 24) and sodium aluminum silicate (col. 1, lines 55-60, col. 4, lines 15-20, 30-32, as to instant claim 1, 22) having particle size of 5-40 micron (col. 3, lines 60-69) and
C) additional fillers including carbon black and/or graphite (col. 4, lines 22-25) and
D) about 15%wt of flame retardants (col. 5, lines 55-58).
8. The material comprises pores, high void content of more than 80% (col. 5, lines 63-67, as to instant claim 2).
9. The microporous material is in the form of continuous fibers or fibrous mats (col. 1, lines 30-35).
10. Based on the teachings of Schwarz et al, it would have been obvious to a one of ordinary skill in the art to choose and use the ultra-high molecular weight polyethylene as the matrix and further the combination of sodium aluminum silicate and vermiculite as the component B) with carbon black or graphite as the additional filler component C) to form the microporous composite of Schwarz et al, and firm the microporous material in the form of continuous fibers, i.e. fibrils, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
11. It is noted that, as evidenced by Sodium Silicate, Wikipedia flyer and Sodium Aluminum Silicate, Wikipedia flyer, both sodium silicate and sodium aluminum silicate are based on combination of (Na2O) and (SiO2) units in various weight ratios. Therefore, sodium aluminum silicate cited by Schwarz et al appears to belong to the class of “silicates of sodium”, i.e. to be a species of sodium silicate genus, cited in instant claims as the intumescent particles. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
It is further noted that vermiculite particles are claimed in instant invention as the intumescent particles (as to instant claim 24); and carbon black and graphite are claimed in instant invention as the thermally-conductive/electrically-conductive particles.
12. Thus, the microporous material/composite of Schwarz et al comprises UHMWPE matrix having both silicious particles and carbon black/graphite particles distributed thought the matrix (col. 21, lines 60-65), wherein the composite is in the form of continuous fibers, i.e. fibrils. Since the silicious particles and carbon black/graphite are specified as particles distributed within the matrix, and the composite is in the form of continuous fibrils, therefore, it would have been obvious to a one of ordinary skill in the art that the UHMWPE matrix should be present in the form of continuous fibrils.
Further, since i) the matrix of the composite of Schwarz et al is the same UHMWPE in the form of fibrils as that claimed in instant invention, ii) the filler particles present in the composite of Schwarz et al are the same as those claimed in instant invention, i.e. a combination of silicious particles and carbon black/graphite particles and iii) said particles are distributed within the fiber matrix forming the microporous composite, therefore, in the microporous composite of Schwarz et al the UHMWPE fibers will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, as well (as to instant claims 1, 22-23). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
It is noted that instant claims 1, 23, 24 recite “the porous phase-separated (co)polymeric network structure” as comprising an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles,
without specifying how said structure is formed.
13. As to instant claim 5, the filler particles components B) and C) are present in a single layer sheet (claim 1).
14. Though Schwarz et al does not explicitly recite the microporous material comprising intercalated graphite and ammonium polyphosphate particles as the intumescent/flame retardant agents component D),
1) Pullinger et al discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects ([0029], [0033], [0034], [0036], [0037]).
Given the ammonium polyphosphate particles and the expandable graphite particles are providing fireproofing and flame inhibition effects, those particles will intrinsically and necessarily be flame retardants as well.
2) Further, Lenzi teaches a composite structure wherein thermally expandable particles are added as intumescent material in intermingled, randomly arranged fibers, which intumescent material expands upon exposure to high temperatures, with expansion onset temperature being 20-100⁰C ([Abstract, [0037], [0040]), and where the thermally expandable particles comprise ammonium polyphosphate and expandable intercalated graphite ([0041], [0042]).
Thus, Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand.
Lenzi further teaches that such expandable layer maybe used as a top layer on a composite structure ([0070], [0082], Figure 1).
15. Since Schwarz et al discloses the porous composite comprising about 15%wt of flame retardants, but do not specify the type of said flame retardants, Pullinger et al discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects, i.e. being flame retardants, and Lenzi teaches the use of thermally expandable particles comprising ammonium polyphosphate and expandable intercalated graphite as the intumescent material in the fibrous structures, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Pullinger et al, Lenzi and Schwarz et al, and to include, or obvious to try to include ammonium polyphosphate particles and/or expandable intercalated graphite particles as the flame retardants/intumescent component D) of the composite of Schwarz et al as well, so to further provide fireproofing and flame inhibition effects to the composite of Schwarz et al as well, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
16. Thus, the microporous material/composite of Schwarz et al in view of Pullinger et al and Lenzi comprises UHMWPE matrix having all of silicious particles, carbon black/graphite particles and ammonium polyphosphate particles and/or expandable intercalated graphite particles distributed thought the matrix (col. 21, lines 60-65), wherein the composite is in the form of continuous fibers, i.e. fibrils. Since the silicious and carbon black/graphite are specified as particles distributed within the matrix, and the composite is in the form of continuous fibrils, therefore, it would have been obvious to a one of ordinary skill in the art that the UHMWPE matrix should be present in the form of continuous fibrils.
Further, since i) the matrix of the composite of Schwarz et al in view of Pullinger et al and Lenzi is the same UHMWPE in the form of fibrils as that claimed in instant invention, ii) the filler particles present in the composite of Schwarz et al in view of Pullinger et al and Lenzi are the same as those claimed in instant invention, i.e. a combination of silicious particles, carbon black/graphite particles and ammonium polyphosphate particles and/or expandable intercalated graphite particles; iii) said particles are distributed within the fiber matrix forming the microporous composite, and iv) Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand, i.e. are acting as a blowing/expanding agents, therefore, in the microporous composite of Schwarz et al in view of Pullinger et al and Lenzi the UHMWPE fibers will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, and the microporous composite of Schwarz et al in view of Pullinger et al and Lenzi will intrinsically and necessarily expand when exposed to higher temperatures, such as by at least 50% over its initial volume when exposed to temperatures greater than 135⁰C, as claimed in instant invention as well (as to instant claims 1, 22-24). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
17. It is noted that instant claims 1 and 23 recite “the porous phase-separated (co)polymeric network structure” as comprising an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles, without specifying how said structure is formed.
18. Further, based on the teachings of Lenzi that such thermally expandable layer comprising ammonium polyphosphate and expandable graphite maybe used as a top or outermost layer on a composite structure ([0070], [0082], Figure 1), it would have been obvious to a one of ordinary skill in the art to prepare a composite of Schwarz et al in view of Pullinger et al and Lenzi comprising a two-layer or a three-layered laminates, wherein the ammonium polyphosphate and/or expandable intercalated graphite-containing layers are additionally applied as a top outermost layer on one side of the microporous composite (as to instant claim 6), or as the outermost layers on both sides of the microporous composite (as to instant claim 7), depending on the desired level of fire protection and desired level of porosity of the outer layers, so thereby further improve flame retarding effect and better thermal insulation effect of the overall composite/porous material as well, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
19. Claims 1-2, 4-7, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Schwarz et al (US 4,833,172) in view of Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552), as evidenced by Sodium Silicate, Wikipedia flyer and Sodium Aluminosilicate, Wikipedia flyer, in further view of Ogawa et al (US 2007/0190876).
It is noted that while the rejection is made over GB 2562254 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0042301 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0042301.
In certain circumstances, references cited to show a universal fact need not be available as prior art before applicant’s filing date. In re Wilson, 311 F.2d 266, 135 USPQ 442 (CCPA 1962). Such facts include the characteristics and properties of a material or a scientific truism. See MPEP § 2124.
20. The discussion with respect to Schwarz et al (US 4,833,172) in view of Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552), as evidenced by Sodium Silicate, Wikipedia flyer and Sodium Aluminosilicate, Wikipedia flyer, set forth in paragraphs 6-18 above, is incorporated here by reference.
21. Though Schwarz et al in view of Pullinger et al and Lenzi do not teach the composite further comprising endothermic particles,
Ogawa et al discloses a fire-resistant porous material comprising polyethylene fibers ([0015]) and further inorganic fillers including aluminum hydroxide, fire-retardant ammonium polyphosphate capsules ([0022]), wherein said fillers further include sodium bicarbonate as a blowing agent ([0065]).
22. Since the fire-retardant porous fiber-based composites are taught in the art as further comprising sodium bicarbonate as blowing agent to increase porosity, along with ammonium polyphosphate as a fire retardant filler, as shown by Ogawa et al, wherein the ammonium polyphosphate is taught by Lenzi as intumescent filler that expands, i.e. acts as blowing agent, at increased temperatures, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ogawa et al and Schwarz et al in view of Pullinger et al and Lenzi, and to include, or obvious to try to include sodium bicarbonate (i.e. endothermic particles) as additional filler and as an additional blowing agent in the composite of Schwarz et al in view of Pullinger et al and Lenzi, as taught by Ogawa et al, so to further adjust/increase porosity of the porous composite of Schwarz et al in view of Pullinger et al and Lenzi, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
23. Since i) the matrix of the composite of Schwarz et al in view of Pullinger et al, Lenzi and Ogawa et al is the same UHMWPE in the form of fibrils as that claimed in instant invention, ii) the filler particles present in the composite of Schwarz et al in view of Pullinger et al and Lenzi are the same as those claimed in instant invention, i.e. a combination of silicious particles, carbon black/graphite particles, ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles and a sodium bicarbonate particles, wherein all of ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles and a sodium bicarbonate particles are acting as blowing agents; iii) said particles are distributed within the fiber matrix forming the microporous composite, therefore, in the microporous composite of Schwarz et al in view of Pullinger et al, Lenzi and Ogawa et al the UHMWPE fibers will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, and the microporous composite of Schwarz et al in view of Pullinger et al, Lenzi and Ogawa et al will intrinsically and necessarily expand when exposed to higher temperatures, such as by at least 50% over its initial volume when exposed to temperatures greater than 135C, as claimed in instant invention as well (as to instant claims 1, 21-24). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
24. Claims 1-2, 4-7, 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Acharya et al (WO 2018/231687) in view of Lee et al (WO2019/079695), Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552).
It is noted that while the rejection is made over WO 2018/231687 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,643,517 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,643,517.
It is noted that while the rejection is made over WO2019/079695 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,033,607 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,033,607.
It is noted that while the rejection is made over GB 2562254 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0042301 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0042301.
25. Acharya et al discloses a polymer matrix composite comprising:
A) a porous polymeric network structure and
B) a plurality of acoustically active particles distributed in the polymeric network structure (Abstract),
Wherein the weight fraction of said particles is 0.80-0.99 based on the weight of the composite (Abstract),
Wherein the acoustically active materials are held together via the porous polymer network fibrils (col. 2, lines 53-60; col. 5, lines 35-37, as to instant claims 1 and 23),
Wherein the acoustically active materials include aluminum hydroxide, i.e. aluminum trihydrate (col. 3, lines 60-64, corresponding to thermally-conductive particles cited in instant claims 1, 22).
It is noted that instant claims 1 and 23 recite “the porous phase-separated (co)polymeric network structure” as comprising an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles,
without specifying how said structure is formed.
26. Since Acharya et al recites that the particles may comprises more than one of the particles (col. 3, lines 62-63), it would have been obvious to a one of ordinary skill in the art to choose and use the combination of particles including aluminum hydroxide (aluminum trihydrate) as the particles distributed within and held together by the porous polymeric network as well, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
27. As to instant claims 4 and 22, the porous polymeric network comprises ultra-high molecular weight polyethylene (UHMWPE) (col. 6, lines 25-46).
28. As to instant claim 2, the composite comprises density of 0.1-3 g/10 min (col. 8, lines 48-55) and porosity of 50-95% (col. 7, lines 50-55).
29. As to instant claim 5, the composite takes form of a sheet of material (col. 9, lines 6-8).
30. Acharya et al does not teach the acoustical particles including intercalated graphite, and further the composite being a two-layer or three-layered as required by instant claims 5-7.
31. However,
1) Lee et al discloses acoustic articles having porous fibrous layers, such as three-layers, in contact with heterogeneous fillers (col. 2, lines 15-17, 45-52, Fig. 1-3), wherein the plurality of semi-continuous fibers in the fibrous layers are physically bonded to the heterogeneous filler (col. 6, lines 22-25; col. 5, lines 35-35); the heterogeneous filler is capable of improving acoustic performance (col. 12, lines 15-17) and includes porous carbon such as intercalated expandable graphite (corresponding to intumescent particles of instant claims 1, 22, 24) (col. 13, lines 12-20), carbon black (col. 25, lines 40-42) and vermiculite (col. 24, lines 60-64, as to instant claim 24).
Lee et al further teaches that two or more different types of heterogeneous fillers can be effective in modifying the acoustic response of the composite; wherein the two or more of different fillers are blended within the porous layer (as to instant claim 5), or different types of the fillers are present and disposed in discrete layers, each independently within porous layer (col. 14, lines 35-45).
Thus, based on the teachings of Lee et al, it would have been obvious to a one of ordinary skill in the art to choose and use carbon black (also corresponding to the thermally-conductive particles of instant claims 1 and 22) and intercalated graphite or vermiculite (also corresponding to intumescent particles of instant claims 1, 22, 24) as the heterogeneous filler providing acoustic effect in the composite of Lee et al, and further either i) deposit the carbon black as the heterogeneous filler in one layer and the expanadble intercalated graphite as the heterogeneous filler in adjacent layer (as to instant claim 6), or ii) deposit the carbon black in a middle layer and deposit expandable intercalated graphite in the two outer layers overlaying the middle layer (as to instant claim 7) as well, since it would have been obvious to choose and use material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
2) Pullinger et al discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects ([0029], [0033], [0034], [0036], [0037]).
Given the ammonium polyphosphate particles and expandable graphite particles are providing fireproofing and flame inhibition effects, those particles will intrinsically and necessarily be flame retardants as well.
3) Further, Lenzi teaches a composite structure wherein thermally expandable particles are added as intumescent material in intermingled, randomly arranged fibers, which intumescent material expands upon exposure to high temperatures, with expansion onset temperature being 20-100⁰C ([Abstract, [0037], [0040]), and where the thermally expandable particles comprise ammonium polyphosphate and expandable intercalated graphite ([0041], [0042]).
Thus, Lenzi explicitly teaches that when ammonium polyphosphate or expandable intercalated graphite are exposed to high temperatures, they expand.
Lenzi further teaches that such expandable layer maybe used as a top layer on a composite structure ([0070], [0082], Figure 1).
32. Since Acharya et al and Lee et al are related to porous fibrous acoustic articles comprising inorganic fillers providing acoustic effect, wherein the fibers are adhered to said fillers, and thereby belong to the same field of endeavor, wherein i) Lee et al further discloses the use of carbon black and intercalated graphite as said fillers, and wherein said fillers can be disposed in the same or adjacent layers, ii) Pullinger et al further discloses a porous material comprising polymeric fibers ([0025]) comprising ammonium polyphosphate particles and expandable graphite particles as intumescent agents providing sufficient fireproofing and flame inhibition effects, i.e. being flame retardants, and iii) Lenzi teaches the use of thermally expandable particles comprising ammonium polyphosphate and expandable intercalated graphite as the intumescent material in the fibrous structures, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Pullinger et al, Lenzi and Acharya et al and Lee et al, and to include, or obvious to try to include ammonium polyphosphate particles and/or expandable intercalated graphite particles as the additional acoustic material/flame retardants/intumescent component in the composite of Acharya et al as well, so to improve acoustic properties and further provide fireproofing and flame inhibition effects to the composite of Acharya et al as well, and since it would have been obvious to choose material based on its suitability, and further deposit said fillers either as a blend together in the same layer (as to instant claim 5), or form a two- or three-layered composite wherein each layer comprises different filler, such as the carbon black and aluminum hydroxide - in a middle layer and intercalated graphite and ammonium polyphosphate in another layer (as to instant claim 6), or as a three-layer laminate comprising intercalated graphite and ammonium polyphosphate-based layers as the outermost layers on both sides of the microporous composite (as to instant claim 7), depending on the desired level of fire protection and desired level of porosity of the outer layers, and since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
33. Since i) the matrix of the composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi is the same UHMWPE in the form of fibrils as that claimed in instant invention, ii) the filler particles present in the composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi are the same as those claimed in instant invention, i.e. a combination of aluminum trihydrate, carbon black, ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles, wherein the ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles are acting as blowing agents; iii) said particles are distributed within the fiber matrix forming the microporous composite, iv) the definition of the porous phase-separated polymeric network as cited in instant claims 1, 22, 24 is “an interconnected network of polymeric fibrils adhered directly to the thermally-conductive and the intumescent particles”, therefore, in the porous composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi the UHMWPE fibers will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, and the porous composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi will intrinsically and necessarily expand when exposed to higher temperatures, such as by at least 50% over its initial volume when exposed to temperatures greater than 135⁰C, as claimed in instant invention as well (as to instant claims 1, 21-24). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
34. Claims 1-2, 4-7, 21-24 are rejected under 35 U.S.C. 103 as being unpatentable over Acharya et al (WO 2018/231687) in view of Lee et al (WO2019/079695), Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552), in further view of Ogawa et al (US 2007/0190876).
It is noted that while the rejection is made over WO 2018/231687 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 11,643,517 is relied upon. All citations to paragraph numbers, etc., below refer to US 11,643,517.
It is noted that while the rejection is made over WO2019/079695 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 12,033,607 is relied upon. All citations to paragraph numbers, etc., below refer to US 12,033,607.
It is noted that while the rejection is made over GB 2562254 for date purposes, in order to elucidate the examiner's position the corresponding US equivalent viz. US 2022/0042301 is relied upon. All citations to paragraph numbers, etc., below refer to US 2022/0042301.
35. The discussion with respect to Acharya et al (WO 2018/231687) in view of Lee et al (WO2019/079695), Pullinger et al (GB 2562254) and Lenzi (US 2017/0043552), set forth in paragraphs 24-33 above, is incorporated here by reference.
36. Though Acharya et al in view of Lee et al, Pullinger et al and Lenzi do not teach the composite further comprising endothermic particles,
Ogawa et al discloses a fire-resistant porous material comprising polyethylene fibers ([0015]) and further inorganic fillers including aluminum hydroxide, fire-retardant ammonium polyphosphate capsules ([0022]), wherein said fillers further include sodium bicarbonate as a blowing agent ([0065]).
37. Since the fire-retardant porous fiber-based composites are taught in the art as further comprising sodium bicarbonate as blowing agent to increase porosity, along with ammonium polyphosphate as a fire retardant filler, as shown by Ogawa et al, wherein the ammonium polyphosphate is taught by Lenzi as intumescent filler that expands, i.e. acts as blowing agent, at increased temperatures, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Ogawa et al and Acharya et al in view of Lee et al, Pullinger et al and Lenzi, and to include, or obvious to try to include, at least partially, sodium bicarbonate (i.e. endothermic particles) as additional filler and as an additional blowing agent in the composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi, as taught by Ogawa et al, so to further adjust/increase porosity of the porous composite of Acharya et al in view of Lee et al, Pullinger et al and Lenzi, and since it would have been obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
38. Since i) the matrix of the composite of Acharya et al in view of Lee et al, Pullinger et al, Lenzi and Ogawa et al is the same UHMWPE in the form of fibrils as that claimed in instant invention, ii) the filler particles present in the composite of Acharya et al in view of Lee et al, Pullinger et al, Lenzi and Ogawa et al are the same as those claimed in instant invention, i.e. a combination of aluminum hydroxide, carbon black/graphite particles, ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles and a sodium bicarbonate particles, wherein all of ammonium polyphosphate intumescent particles and/or expandable intercalated graphite particles and a sodium bicarbonate particles are acting as blowing agents; iii) said particles are distributed within the fiber matrix forming the microporous composite, therefore, in the porous composite of Acharya et al in view of Lee et al, Pullinger et al, Lenzi and Ogawa et al the UHMWPE fibers will intrinsically and necessarily, at least partially, adhere directly to said filler particles, as well, thereby corresponding to the “porous phase-separated polymeric network structure” as claimed in instant invention, and the porous composite of Acharya et al in view of Lee et al, Pullinger et al, Lenzi and Ogawa et al will intrinsically and necessarily expand when exposed to higher temperatures, such as by at least 50% over its initial volume when exposed to temperatures greater than 135⁰C, as claimed in instant invention as well (as to instant claims 1, 21-24). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
39. Claims 1-2, 4-7, 21-24 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,866,565 in view of Ahn et al (WO 2018/164454, based on US equivalent US 11,502,372), Nagao (US 2018/0233726) and Kim et al (US 2018/0114967).
40. The rejection is adequately set forth on pages 25-32 of an Office action mailed on May 1, 2025 and is incorporated here by reference.
Since no Terminal Disclaimer has been filed, the rejection is maintained.
41. As to amended claims 1 and 22, 24, US 11,866,565 claims the particles being at least one (i.e. maybe used in combination) of aluminum hydroxide (i.e. aluminum trihydrate corresponding to thermally-conductive particles) and further sodium silicate, intercalated graphite (corresponding to intumescent particles).
Response to Arguments
42. Applicant's arguments filed on December 16, 2025 have been fully considered but they are moot in light of the new grounds of rejections and the discussion set forth above.
43. In addition, in response to Applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
44. With respect to Applicant’s arguments regarding the unexpected results of instant invention, it is noted that:
1) Instant claim 1 is as follows:
A (co)polymer matrix composite comprising:
a porous phase-separated (co)polymeric network structure (i.e. any kind of polymer used); and a plurality of thermally-conductive particles and a plurality of intumescent particles distributed within the (co)polymeric network structure,
the thermally-conductive particles having a different composition from that of the intumescent particles, wherein the thermally-conductive particles comprise at least one of:
i) electrically non- conductive particles or electrically-conductive particles, further wherein the electrically non- conductive particles are ceramic particles selected from the group consisting of boron nitride, aluminum trihydrate, silicon carbide, and combinations thereof, and
ii) the electrically-conductive particles are either carbon particles selected from the group consisting of
carbon black, graphite and graphene, OR
metal particles selected from the group consisting of
aluminum, copper, nickel, silver, platinum, gold, and combinations thereof, additionally
wherein the intumescent particles comprise at least one of sodium silicate, intercalated graphite, or ammonium polyphosphate; wherein the thermally-conductive particles and intumescent particles are present in a range from 15 to 99 weight percent of the (co)polymer matrix composite, wherein the (co)polymer matrix composite volumetrically expands by at least 50% over its initial volume when exposed to at least one temperature greater than 135°C,
wherein the porous phase-separated (co)polymeric network structure comprises an interconnected network of (co)polymeric fibrils adhered directly to the thermally-conductive particles and the intumescent particles.
Thus, instant claim 1 is significantly broad and includes enormous combination of very different thermally conductive particles with various intumescent particles, using any kind of polymer network.
2) Instant claim 22 is even broader than instant claim 1, since does not cite any amounts of the enormous combination of very different thermally conductive particles with various intumescent particles.
3) Further, no properties of the composite, except the level of expansion at temperature greater than 135⁰C, has been cited in instant claims 1, 22, 24. However, as taught in the prior art applied in the rejections set forth above, intumescent particles, including ammonium polyphosphate and intercalated graphite, are known in the art to expand at increased temperature, i.e. acting as blowing agents at increased temperatures to expand the composite.
4) On the other hand, no substantial evidence of unexpected results of instant invention has been provided by instant specification.
Thus, the specific examples 1-4 presented in instant specification are based on the very specific combinations of the specific UHMWPE as the matrix with:
1) Example 1A-1C: boron nitride, particulate carbon and calcium sulfate dihydrate (as endothermic particles claimed in instant claim 24 only); no citation of ammonium polyphosphate, sodium silicate or intercalated graphite as intumescent particles.
2) Examples 2A-2C: copper, expandable graphite and particulate carbon;
3) Examples 3A-3C: boron nitride, particulate carbon, expandable graphite;
4) Examples 4A-4B: boron nitride, expandable graphite,
Wherein the cited components were used in the very specific amounts.
No level of expansion has been cited for the above examples.
No comparative examples are provided.
5) Therefore, the scope of instant claims is significantly broader than the evidence of unexpected results as presented by the above examples of instant specification.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP 716.02(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764