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 Claims 46-58 have been withdrawn from consideration as being directed to a non-elected invention.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.
All of the rejections have been maintained.
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 60 to 95 vol % of the aerogel particles, each having a mean particle size of 0.3 to 3.0 mm (paragraphs 34, and 42). In view of the high volume proportion of the aerogel particles, the aerogel particles are expected to touch, form bridges and build clusters during dry mixing process because the aerogel particles are highly porous with large surface area and strong particle-particle interactions. The dry cohesive agglomeration is necessarily present because there is little free volume to keep aerogel particles separated. The agglomeration is further enhanced due to the presence of the binder.
Bauer does not explicitly disclose (i) the content of the surfactant and (ii) an agglomeration of the aerogel particles wherein the agglomerate has 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 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 in contact with water for further use.
The combined disclosures of Bauer and Yrieix result in a dry composition comprising 60 to 95 vol % of the aerogel particles, each having 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. As the amount of the surfactant in the dry composition is relatively small compared to the aerogel particles, the surfactant struggles to form a complete coating around the aerogel particles. As a result, the surfactant is ineffective in separating the aerogel particles, leading to failure in preventing agglomeration.
Therefore, the examiner takes the position that the aerogel particles would inherently be present in an agglomerated state with the agglomerate of the aerogel particles having a size of at least 0.6 mm when at least two 0.3 mm aerogel particles are bonded together by weak force during mixing.
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 agglomerate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the size of the agglomerate 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 agglomerate 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 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 60 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 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 in contact with water for further use.
The combined disclosures of Bauer and Yrieix result in a dry composition comprising 60 to 95 vol % of the aerogel particles, each having 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.
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 be 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. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
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
Applicant alleges that the rejection over Bauer in view of Yrieix is improper because the Office does not provide any evidence that:
(i) Bauer’s dry composition necessarily forms dry cohesive agglomerates,
(ii) applying Yrieix’s surfactant amount to a mixture of Bauer inevitably leads to agglomerates,
(iii) the agglomerates have the claimed particle diameter, or
(iv) the agglomerates exhibit the claimed confined compressive strength of 0.3 MPa or greater.
The examiner respectfully disagrees.
Regarding issue (i): Bauer teaches a composition in the form of a dry mixture or blend, including 60-95 vol% of hydrophobic silica aerogel particles, a surfactant and a binder in the absence of water (paragraphs 34, 42 and 76). In view of the high volume proportion of the aerogel particles, the aerogel particles are expected to touch, form bridges and build clusters during dry mixing process because the aerogel particles are highly porous with large surface area and strong particle-particle interactions. The dry cohesive agglomeration is necessarily present because there is little free volume to keep aerogel particles separated. The agglomeration is further enhanced due to the presence of the binder.
Regarding issue (ii): Addition of Yrieix’s surfactant amount of 0.1 to 4.0 vol% of the surfactant to the dry mixture of Bauer does not eliminate the aerogel agglomerates. As the amount of the surfactant in the dry composition is relatively small compared to the aerogel particles, the surfactant struggles to form a complete coating around the aerogel particles. As a result, the surfactant is ineffective in separating the aerogel particles, leading to failure in preventing agglomeration.
Regarding issue (iii): Bauer discloses that the composition comprises 60 to 95 vol % of the aerogel particles with a mean particle size of 0.3 to 3.0 mm (paragraphs 34, and 42). As previously discussed, the dry cohesive agglomeration is necessarily present during mixing in view of the great volume proportion of the aerogel because the aerogel particles are highly porous with large surface area and strong particle-particle interactions. The agglomerated aerogel particle has a size of at least 0.6 mm when at least two 0.3 mm aerogel particles are bonded together by weak force during mixing.
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 agglomerate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating that the size of the agglomerate 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 agglomerate 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.
Regarding issue (iv): the combined disclosures of Bauer and Yrieix result in a dry composition obtained by mixing 60 to 95 vol % of the aerogel particles, each having a mean particle size of 0.3 to 3.0 mm, 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 be 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. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Applicant further states that Yrieix’s composition is related to an aqueous solution, that is different than a dry cohesive-agglomerate system. Therefore, addition of Yriex’s surfactant amount in the Bauer’s dry composition does not support the dry agglomeration.
The examiner respectfully disagrees.
Bauer discloses that the composition can exist in the form of a dry mixture, a solution, a dispersion or a paste (paragraphs 76 and 78). The dry mixture or blend comprises 60-95 vol% of hydrophobic silica aerogel particles, a surfactant and a binder in the absence of water (paragraphs 34, 42 and 76). In view of the high volume proportion of the aerogel particles, the aerogel particles are expected to touch, form bridges and build clusters during dry mixing process because the aerogel particles are highly porous with large surface area and strong particle-particle interactions. The dry cohesive agglomeration is necessarily present because there is little free volume to keep aerogel particles separated. The cohesive agglomeration is further enhanced due to the presence of the binder.
Addition of Yrieix’s amount of the surfactant in the dry mixture of Bauer does not eliminate the aerogel agglomerates. As the amount of the surfactant in the dry composition (0.1 to 4 vol%) is relatively small compared to the aerogel particles (60-95 vol%), the surfactant struggles to form a complete coating around the aerogel particles. As a result, the surfactant is ineffective in separating the aerogel particles, leading to failure in preventing agglomeration of the aerogel particles in the dry blend. However, when the dry composition is in contact with the water for further use, that small amount of the surfactant is sufficient to break the aerogel agglomerates and promote the dispersion of the aerogel particles in the solution. That is a motivation to modify the references.
Applicant also asserts that the confined compressive strength of the claimed agglomerates is 102% greater than that of the non-agglomerated aerogel particles. Applicant’s assertions are considered moot because the combined teachings of Bauer and Yrieix result in the agglomerates of aerogel particles. Therefore, it is not seen that the compressive strength of the claimed agglomerates could not be 102% greater than that of the non-agglomerated aerogel particles.
Applicant has reiterated positions taken with respect to the rejection over Bauer in view of Yrieix and KR’133, the examiner’s comments set forth above are equally pertinent in support of the rejection as well.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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
Prosecution Insights