Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/10/2025 has been entered.
Claims 37, 38, 40-42, and 44-60 are currently pending with claims 1-36, 39 and 43 being cancelled. Claims 46-58 have been withdrawn from consideration as being directed to a non-elected invention. Claims 37, 38, 40-42, 44, 45, 59 and 60 are rejected.
The 112 rejection has been withdrawn in view of the present amendment and response.
The rejections over Yrieix in view of Bauer and further in view of KR’133 have been withdrawn in view of the present response. Yrieix discloses a paste comprising silica aerogel particles, an organic binder, a surfactant, and 1.5 to 3 parts by weight of water, relative to 1 part by weight of the silica aerogel particles, the organic binder and the surfactant (paragraph 91). Yriex fails to disclose a dry composition wherein the silica aerogel particles are in an agglomerated state and wherein the agglomerates of the silica aerogel particles have a size in the range of 0.1 to 50 mm, or a confined compressive strength of at least 0.3 MPa.
New ground of rejection is made in light of Bauer in view of Yrieix.
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.
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.
Claims 37, 38, 42, 44, 45, 59 and 60 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0037838 to Bauer et al. (hereinafter “Bauer”) in view of US 2014/0361209 to Yrieix et al. (hereinafter “Yrieix).
As to claim 37, Bauer teaches a composition in the form of a dry mixture or blend, including hydrophobic silica aerogel particles, a surfactant and a binder (paragraph 76). That is to say, water is absent or present in a limited amount that is sufficient to cause the blend dry. The aerogel particles are modified to be at least partially hydrophilic by the surfactant during mixing of the aerogel particles and the surfactant. The composition can be made available in a kit (paragraph 76). The composition comprises 40 to 95 vol % of the aerogel particles with a mean particle size of 0.3 to 3.0 mm (paragraphs 34, and 42).
Bauer does not explicitly disclose (i) the content of the surfactant and (ii) an agglomeration of the aerogel particles wherein the agglomerates have a size in a range from 0.1 to 50 mm.
Yrieix, however, discloses a thermally insulating material obtained from a composition comprising (a) 70 to 98 vol% of hydrophobic silica aerogel particles, and (b) 0.3 to 12 vol% of an organic binder comprising at least one organic polymer (b1) and at least one surfactant (b2), or an amphiphilic organic polymer (b3) (abstract). In particular, the thermally insulating material contains 0.2 to 8 vol% of the organic binder and 0.1 to 4 vol% of the surfactant (paragraph 66). The hydrophobic aerogel particles comprise a first aerogel particle having a first particle size of 33.5 microns and a second aerogel particle having a second particle size of 1210 microns (paragraph 106).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form use the surfactant of Bauer in a volume proportion disclosed in Yrieix, motivated by the desire to promote uniform dispersion of the aerogel particles in the aqueous solution when the dry composition of Bauer is brought into contact with the water for further use.
The combined disclosures of Bauer and Yrieix result in a dry composition comprising 40 to 95 vol % of the aerogel particles with a mean particle size of 0.3 to 3.0 mm; and 0.1 to 4 vol% of the surfactant in the absence of water.
Therefore, the examiner takes the position that the aerogel particles would inherently present in an agglomerated state with the agglomerates of the aerogel particles having a size of at least 0.6 mm (at least two 0.3 mm aerogel particles bonded together by weak force during mixing the components together).
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the size of the agglomerates will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the size of the agglomerates is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the size of the agglomerates in the range instantly claimed, motivated by the desire to promote effective packing. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claims 38 and 45, Bauer discloses that the binder is combined with the aerogel particles with an aerogel to binder volume ratio ranging from 90:1 to 30:1 (paragraph 52). Given that the content of the aerogel particles is in the range from 40 to 95 vol%, the dry composition will contain 0.4 to 3.2 vol% binder (paragraphs 34, and 42). The binder includes cement, lime, gypsum, and silicate, corresponding to the claimed mineral binder (paragraph 47). The content of the mineral binder is within the claimed range.
40:30 = 1.1%; 40:90= 0.4%; 95:30= 3.2%; 95:90 = 1.1%
As to claim 42, Bauer discloses that the composition further includes fibers in an amount of 2 to 10 wt% (paragraph 72). The fibers read on the claimed fillers.
Bauer does not explicitly disclose the fiber being present in a volume proportion of 0.001 to 16 vol%.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the volume content of the fibers will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such the volume content of the fibers is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the fibers in a volume proportion instantly claimed, motivated by the desire to enhance mechanical properties of the finished product.
As to claim 44, it appears that the dry composition of Bauer as modified by Yriex and the claimed dry composition are identical. The resulting dry composition is obtained by mixing 40 to 95 vol % of the aerogel particles with 0.1 to 4 vol% of the surfactant in the absence of water. Therefore, the examiner takes the position that the surfactant would inherently be in an agglomerated state as like material has like property.
As to claims 59 and 60, Bauer teaches a composition in the form of a dry mixture or blend, including hydrophobic silica aerogel particles, a surfactant and a binder (paragraph 76). That is to say, water is absent or present in a limited amount that is sufficient to cause the blend dry. The aerogel particles are modified to be at least partially hydrophilic by the surfactant during mixing of the aerogel particles and the surfactant. The composition can be made available in a kit (paragraph 76). The composition comprises 40 to 95 vol % of the aerogel particles with a mean particle size of 0.3 to 3.0 mm (paragraphs 34, and 42).
Bauer does not explicitly disclose (i) a content of the surfactant and (ii) an agglomeration of the aerogel particles wherein the agglomerates have a confined compressive strength of at least 0.3 MPa.
Yrieix, however, discloses a thermally insulating material obtained from a composition comprising (a) 70 to 98 vol% of hydrophobic silica aerogel particles, and (b) 0.3 to 12 vol% of an organic binder comprising at least one organic polymer (b1) and at least one surfactant (b2), or an amphiphilic organic polymer (b3) (abstract). In particular, the thermally insulating material contains 0.2 to 8 vol% of the organic binder and 0.1 to 4 vol% of the surfactant (paragraph 66). The hydrophobic aerogel particles comprise a first aerogel particle having a first particle size of 33.5 microns and a second aerogel particle having a second particle size of 1210 microns (paragraph 106).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form use the surfactant of Bauer in a volume proportion disclosed in Yrieix, motivated by the desire to promote uniform dispersion of the aerogel particles in the aqueous solution when the dry composition of Bauer is brought into contact with the water for further use.
The combined disclosures of Bauer and Yrieix result in a dry composition obtained by mixing 40 to 95 vol % of the aerogel particles having a mean particle size of 0.3 to 3.0 mm, with 0.1 to 4 vol% of the surfactant in the absence of water. The dry composition of Bauer in view of Yrieix is identical to the printable and/or extrudable mass of the claimed invention.
Therefore, the examiner takes the position that the aerogel particles would inherently present in an agglomerated state with the agglomerates of the aerogel particles having a confined compressive strength of at least 0.3 MPa and said confined compressive strength being at least 25% greater than the confined compressive strength of the aerogel particles in non-agglomerated state.
Claims 40 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Bauer in view of Yrieix as applied to claim 37 above, further in view of KR 101083133 (hereinafter “KR’133”).
As to claims 40 and 41, neither Bauer nor Yrieix discloses the composition comprising: (i) 0.00028-7.0 vol% of an expansive agent wherein the expansive is a compound capable of reacting with silica aerogel to generate an expansive product; (ii) 0.00028-7.0 vol% of a curing agent which a water retaining additive.
KR’133, however, discloses a coating material comprises 45-85 vol% of a silica aerogel microparticles, 0.3-7 vol% of microcement, 0.5-4 vol% of reinforcing material, 0.3-1.5 vol% of calcium sulfoaluminate (CSA) expander, 0.1-0.8 vol% of an inorganic antibacterial agent, 0.2-3 vol% of acrylic ester copolymer re-emulsifying powder, 0.02-1 vol% of an absorbent polymer, and 0.3-1.5 vol% of magnesium oxide (advantageous effects and claims).
The magnesium oxide reads on the claimed expansive agent which is capable of reacting with silica aerogel particles to form an expansive product as like material has like property.
The absorbent polymer reads on the claimed curing agent.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include magnesium oxide disclosed in KR’133 to the composition disclosed in Yrieix, motivated by the desire to reduce shrinkage cracking.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include an absorbent polymer disclosed in KR’133 to the composition disclosed in Yrieix, motivated by the desire to impart water absorption properties, thereby promoting adhesion of the aerogel particles to other materials.
Response to Arguments
The rejections over Yrieix in view of Bauer and further in view of KR’133 have been withdrawn in view of the present response. Yrieix discloses a paste material comprising silica aerogel particles, an organic binder, a surfactant and 1.5 to 3 parts by weight of water, relative to 1 part by weight of the silica aerogel particles, the organic binder and the surfactant (paragraph 91). Yriex fails to disclose a dry composition wherein the silica aerogel particles are in an agglomerated state, and wherein the agglomerates of the silica aerogel particles have a size in the range of 0.1 to 50 mm, or a confined compressive strength of at least 0.3 MPa.
New ground of rejection is made in light of Bauer in view of Yrieix (see rejections above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788