DETAILED ACTION
Double Patenting
Claims 1-6, 9-13, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19-34 of copending Application No. 18/785199 in view of Verheyen (US PG Pub. No. 2006/0096211), Batdorf (US Pat. No. 4,347,285) and, Siebers (US PG Pub. No. 2020/0189968) as evidenced by Kramer (Kramer Industries, Inc. "Mesh Size", 2025, p. 1-4) for the reasons discussed in the previous Office Action.
Claims 1-6, 9-13, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of US Pat. No. 12,077,670 in view of Verheyen and Batdorf, as evidenced by Kramer for the reasons discussed in the previous Office Action.
Claim Rejections - 35 USC § 103
Claims 1-6, 9, 11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Hyde (US Pat. No. 3,763,614) in view of Nakajima (US Pat. No. 3,930,876), Batdorf (US Pat. No. 4,347,285), and Siebers (US PG Pub. No. 2020/0189968), as evidenced by Kramer (Kramer Industries, Inc. "Mesh Size", 2025, p. 1-4) for the reasons discussed in the previous Office Action or in the Office Action of 11/14/2025, as incorporated into the previous Office Action.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hyde, Nakajima, Batdorf, and Siebers, as evidenced by Kramer and applied to claim 1, and further in view of Takeuchi (JP 05311091 A), cited according to an English language translation, for the reasons discussed in the Office Action of 11/14/2025, as incorporated into the previous Office Action.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hyde, Nakajima, Batdorf, Siebers, and Takeuchi, as evidenced by Kramer and applied above, and further in view of Zheng (US PG Pub. No. 2009/0155603) for the reasons discussed in the Office Action of 11/14/2025, as incorporated into the previous Office Action.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hyde, Nakajima, Batdorf, and Siebers, as evidenced by Kramer and applied above, and further in view of Zheng (US PG Pub. No. 2009/0155603) for the reasons discussed in the Office Action of 11/14/2025, as incorporated into the previous Office Action.
Claims 1, 6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Liang (CN 101363265 A), the text of which is cited herein according to an English language translation, in view of Zubrod (US PG Pub. No. 2018/0037504) and Siebers for the reasons discussed in the previous Office Action.
Response to Arguments
Applicant's arguments filed April 28, 2026 have been fully considered but they are not persuasive.
Applicant has argued that claim 1 is distinguished over a combination of references including Batdorf because it requires a coating with an aggregate having a density of “at least 0.4 kg/dm3”. Applicant has argued this feature is not obvious in view because Batdorf teaches using lightweight aggregates to reduce the density of a coating and teaches making coatings that have densities of less than 0.4 g/cm3 or even less than 0.3 g/cm3 (note: kg/dm3 and g/cm3 express equivalent numerical values). However, Batdorf explicitly teaches using aggregates with a bulk density of less than about 0.4 g/cm3 in a coating (see, for example, claim 48). As the instant disclosure and original claims teach that the filler bulk density can be “at least 0.3 kg/dm3” (see, for example, Applicant’s published application, par. 99 and original claim 7) and as no data or other evidence has been presented to show any significance to a bulk density of “at least 0.4 kg/dm3”, the recited bulk density range has not been established to be critical. As such, the claimed filler bulk density range of “at least 0.4 kg/dm3” is obvious in view of Batdorf’s teaching because it is so numerically close to Batdorf’s range. See MPEP 2144.05. A coating having a filler with a bulk density of “greater than 0.4 kg/dm3”, which includes filler bulk densities of, for example, 0.40001 kg/dm3, as covered by the claimed range, would not be expected to be substantially different in structure or behavior from a coating with fillers having a bulk density of “less than 0.4 kg/dm3”, which includes filler bulk densities of, for example, 0.39999 kg/dm3, as is covered by Batdorf’s taught range.
Applicant has further argued that Batdorf’s teaching of using fillers of higher densities when weight is not important does not render obvious using fillers with a density of “greater than 0.4 kg/dm3” due to it allegedly not being clear that Batdorf considers “fillers” and “aggregates” to be the same thing because he teaches elsewhere that aggregates can be used to reduce coating densities and because he uses the words “inorganic filler” instead of “aggregate” when teaching that heavier materials may be used. However, in his original discussion of “aggregates”, Batdorf teaches that “[a] lightweight aggregate or fire-resistant inorganic filler can be introduced into the two-part system prior to spraying or can be simultaneously sprayed”(col. 4, ln. 46-51). Later, he refers to “a low density filler or aggregate” (col. 7, ln. 41-42), to a “lightweight aggregate or other inorganic insulative materials and fillers” (col. 7, ln. 68-col. 8, ln. 1), and to “a filler comprising a particulate aggregate” (claim 18). In the section Applicant has quoted, Batdorf lists expanded rock (e.g. expanded perlite, vermiculite, etc.), mineral wool, and foamed glass as “inorganic fillers”. However, Batdorf also refers to all of these same materials as “aggregates” (col. 7, ln. 54-col. 8, ln. 8; claims 41-45). Therefore, Batdorf makes clear that he considers “inorganic fillers” and “aggregates” to be the synonymous, or at least to refer to the same category of coating components, and one of ordinary skill in the art would be likely to reach this conclusion. As such, one of ordinary skill in the art would also understand Batdorf’s teaching that “[w]here light weight is not an important consideration, relatively high density mineral fillers or pigments can be used” to directly address his teachings about lightweight aggregates, or fillers, and to mean that higher-density fillers, or “aggregates”, can be used if light weight is not a priority.
Applicant has also argued that the claimed product is distinguished over Liang, Zubrod, and Siebers because Zubrod’s coating is allegedly for steel rather than cellular glass. Although Applicant has acknowledged that Zubrod actually teaches that his coating can be used on various materials, such as wood and concrete (note: Zubrod also teaches using the coating on “other construction and industrial materials” in par. 26 when discussing steel, wood, and concrete), Applicant has asserted that Zubrod only discusses the compatibility of a coating with a steel substrate and that Zubrod’s teachings of broad categories of materials do not clearly indicate compatibility with different substrates. Applicant has also argued that there can be no reasonable expectation of success in applying Zubrod’s coating to a cellular glass substrate. However, Applicant’s argument that Zubrod’s broad teaching of different substrates is not a teaching of compatibility with those substrates is not persuasive. The fact that Zubrod teaches using his coating on substrates that vary in structure and composition instead implies that the coating material is versatile. Zubrod also teaches that his coating materials have widespread application in residential and commercial structures (par. 48). Absent some teaching away from a specific substrate type, which has not been identified in Zubrod’s disclosure, one of ordinary skill in the art would be led by these broad teachings to have a high expectation of success for many types of substrates, including cellular glass, especially if motivated by Zubrod’s teachings about the benefits of his coating (par. 2). While Zubrod does measure bond strength with a steel substrate (par. 100), this does not negate the fact that Zubrod clearly encourages applying the coating to various types of materials. It also does not take into consideration that Zubrod’s experiments appear to be focused on measuring coating shrinkage, fire resistance, and density (par. 114), rather than compatibility with steel. Notably, Zubrod never uses the words “compatible” or “compatibility”, likely because he has already established that the coating is compatible with a wide variety of substrates. Furthermore, Applicant has presented no evidence to demonstrate that Zubrod’s coating would be incompatible with cellular glass.
Applicant has also argued that Liang’s teaching of applying a protective cementitious coating to cellular glass does not speak to the compatibility of Zubrod’s cementitious material with cellular glass. However, this argument is not persuasive because Liang’s teaching clearly encourages one of ordinary skill in the art to seek out protective cementitious coatings. The fact that Zubrod teaches a protective, highly versatile cementitious coating further encourages the combination. As noted above, Applicant has presented no evidence that Zubrod’s coating would be incompatible with cellular glass or that the coating would fail to protect cellular glass in the manners disclosed by Zubrod.
Applicant has also argued that the combination of Zubrod with Liang relies on hindsight reasoning. In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). It would have been obvious to apply Zubrod’s coating to Liang’s substrate in view of the prior art teachings for the reasons discussed above.
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.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights