DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 13, 2025 has been entered.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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). Evidence for the particle sizes of claim 1 are provided by Kramer (Kramer Industries, Inc. "Mesh Size", 2025, p. 1-4).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 19-34 of the copending application recite a coated cellular glass insulation product meeting each limitation of instant claims 1-6, 9-13, and 20 with the exceptions of the copending claims not reciting that the product is part of an inverted roof including a waterproofing layer, deck, and ballast arranged as claimed and of the copending claims not reciting the claimed filler particle size range. However, Verheyen teaches that inverted roofs comprising a flat roof (i.e. “roof deck”), a waterproof membrane over the deck, an insulation layer over top of the membrane, and a layer of ballast over the insulation layer are known and used on low-slope roofs, and beneficially insulate a roof while protecting the waterproof membrane from thermal cycling, the effects of UV rays, weathering, and physical damage (par. 4, 17). As such, it would have been obvious to one of ordinary skill in the art to utilize the coated insulation product recited in the copending claims in an inverted roof of the construction discussed by Verheyen (i.e. which includes a roof deck, waterproofing layer, cellular glass insulation layer, and ballast arranged as claimed), because the copending claimed product is a cellular glass that is recited to be insulative and Verheyen teaches that inverted roofs of such a construction may employ cellular glass insulation layers, and in order to allow the product of the copending claims to be useful as an insulation material in/on inverted roofs, as taught by Verheyen.
The copending claims and Verheyen's teachings differ from the current invention in that neither recites/discloses the instantly claimed particle size. However, the coating of the copending claims is a silicate coating including filler particles (claims 19 and 22). Batdorf further teaches incorporating low density inorganic fillers, or aggregates, into protective silicate coatings to reduce the coatings' density and provide better insulative properties, including improving K and R values (Abstract; col. 7, ln. 41-61). Batdorf teaches that these lightweight aggregates preferably have a mesh size in the range of 100 to 4 U.S. mesh (i.e. 149 µm to 4.75 mm) and a bulk density of less than 0.4 g/cm3 (i.e. 0.4 kg/dm3) (col. 9, ln. 52-55; col. 14, ln. 66-col. 15, ln. 5). Therefore, it would have been obvious to one of ordinary skill in the art to use lightweight inorganic fillers/aggregates having a size in the range of 149 µm to 4.75 mm and a bulk density of less than 0.4 kg/dm3 as the filler in coating of the copending claims and Verheyen in order to beneficially reduce the coating's density and provide better insulative properties, including improved K and R values. It also would have been obvious to configure all or substantially all of the particles to have a single size within the taught range, which would result in the average particle size being in the taught range, because Batdorf explicitly teaches that particles in the taught ranges are preferable and achieve the desired effects. The instantly claimed particle size and bulk density ranges are overlapped or sufficiently close to and rendered obvious by those of Batdorf. See MPEP 2144.05.
In addition to the above, Batdorf discloses that, although fillers with a density of less than 0.4 g/cm3 are preferred, relatively high-density mineral fillers may be used when light weight is not an important consideration (col. 15, ln. 1-7). As such, it would have been obvious to one of ordinary skill in the art to utilize filler particles of the sizes discussed above that have a bulk density of 0.4 g/cm3 or even greater to achieve the above-discussed benefits, except for reduced weight, when light weight is not an important consideration, and because Batdorf explicitly teaches doing so to be appropriate.
The teachings of the copending claims and cited prior art might be considered to differ from the current invention in that the thermal expansion coefficient of the particulate filler material relative to that of the underlying cellular glass is not taught. However, Siebers also teaches a protective silicate coating for glass panels used in houses that includes structure-forming particles (i.e. “fillers”) (Abstract; par. 12, 46, 82). Siebers teaches that the thermal expansion of such coatings should be tailored to that of the underlying substrate, teaches that inorganic components can be used to tailor the thermal expansion coefficient, and teaches that “compatible” materials, which he teaches includes the structure-forming particles, should have a difference in thermal expansion coefficients of less than 3 x 10-6 /K (par. 48-50). Therefore, it would have been obvious to one of ordinary skill in the art to tailor the thermal expansion coefficient of the prior art protective coating to that of the substrate, including by using the filler particles to adjust/tailor the thermal expansion coefficient of the coating, and to tailor the thermal expansion properties of the coating components such that the coating, its components, including its filler particles, and the substrate all have a difference in thermal expansion coefficient of less than 3 x 10-6 /K in order to make the coating as a whole "compatible" to make the coating's components “compatible” with each other and with the underlying substrate. As the prior art thermal expansion coefficient range is expressed as “less than” the taught value, any difference including little or no difference (i.e. the thermal expansion coefficients are the same) in thermal expansion coefficients is rendered obvious by the prior art because it is encompassed by the taught range. See MPEP 2144.05. It also would have been obvious to one of ordinary skill in the art to configure the coating as a whole to have as close of an overall thermal expansion coefficient to that of the cellular glass insulation material as possible and to configure the coating components to have thermal expansion coefficients that are as close to each other as possible, thereby configuring each of the coating components (including the filler particles) to have as close of a thermal expansion coefficient as possible (i.e. including within 90 to 110 %) to the coating, as whole, and therefore, to the cellular glass insulation material (i.e. including within 90 to 110 %) in order to make all components (i.e. the coating, the coating components, and the insulation) as compatible as possible. Furthermore, it would have been obvious to select an appropriate thermal expansion coefficient for the filler, including selecting a thermal expansion coefficient that is withing 50 to 150 % or even 90 to 110 % of the substrate, in order to achieve a desired level of tailoring between the coating and the substrate.
This is a provisional nonstatutory double patenting rejection.
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.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-14 of the copending application recite a coated cellular glass insulation product meeting each limitation of instant claims 1-6, 9-13, and 20 with the exception of the copending claims not reciting that the product is part of an inverted roof including a waterproofing layer, deck, and ballast arranged as claimed and of the patented claims not reciting the claimed filler particle size range. However, Verheyen teaches that inverted roofs comprising a flat roof (i.e. “roof deck”), a waterproof membrane over the deck, a cellular insulation layer, such as cellular glass, overtop of the membrane, and a layer of ballast over the cellular layer are known and used on low-slope roofs, and beneficially insulate a roof while protecting the waterproof membrane from thermal cycling, the effects of UV rays, weathering, and physical damage (par. 4, 17). As such, it would have been obvious to one of ordinary skill in the art to utilize the coated cellular glass insulation product recited in the copending claims in an inverted roof of the construction discussed by Verheyen (i.e. which includes a roof deck, waterproofing layer, cellular glass insulation layer, and ballast arranged as claimed), because the copending claimed product is a cellular glass that is recited to be insulative and Verheyen teaches that inverted roofs of such a construction may employ cellular glass insulation layers, and in order to allow the product of the copending claims to be useful as an insulation material in/on inverted roofs, as taught by Verheyen.
The patented claims and Verheyen's teachings differ from the current invention in that neither recites/discloses the instantly claimed particle size. However, the coating of the patented claims is a silicate coating including filler particles (claims 1 and 4). Batdorf further teaches incorporating low density inorganic fillers, or aggregates, into protective silicate coatings to reduce the coatings' density and provide better insulative properties, including improving K and R values (Abstract; col. 7, ln. 41-61). Batdorf teaches that these lightweight aggregates preferably have a mesh size in the range of 100 to 4 U.S. mesh (i.e. 149 µm to 4.75 mm) and a bulk density of less than 0.4 g/cm3 (i.e. 0.4 kg/dm3) (col. 9, ln. 52-55; col. 14, ln. 66-col. 15, ln. 5). Therefore, it would have been obvious to one of ordinary skill in the art to use lightweight inorganic fillers/aggregates having a size in the range of 149 µm to 4.75 mm and a bulk density of less than 0.4 kg/dm3 as the filler in coating of the patented claims and Verheyen in order to beneficially reduce the coating's density and provide better insulative properties, including improved K and R values. It also would have been obvious to configure all or substantially all of the particles to have a single size within the taught range, which would result in the average particle size being in the taught range, because Batdorf explicitly teaches that particles in the taught ranges are preferable and achieve the desired effects. The instantly claimed particle size and bulk density ranges are overlapped or sufficiently close to and rendered obvious by those of Batdorf. See MPEP 2144.05.
In addition to the above, Batdorf discloses that, although fillers with a density of less than 0.4 g/cm3 are preferred, relatively high-density mineral fillers may be used when light weight is not an important consideration (col. 15, ln. 1-7). As such, it would have been obvious to one of ordinary skill in the art to utilize filler particles of the sizes discussed above that have a bulk density of 0.4 g/cm3 or even greater to achieve the above-discussed benefits, except for reduced weight, when light weight is not an important consideration, and because Batdorf explicitly teaches doing so to be appropriate.
The teachings of the copending claims and cited prior art might be considered to differ from the current invention in that the thermal expansion coefficient of the particulate filler material relative to that of the underlying cellular glass is not taught. However, Siebers also teaches a protective silicate coating for glass panels used in houses that includes structure-forming particles (i.e. “fillers”) (Abstract; par. 12, 46, 82). Siebers teaches that the thermal expansion of such coatings should be tailored to that of the underlying substrate, teaches that inorganic components can be used to tailor the thermal expansion coefficient, and teaches that “compatible” materials, which he teaches includes the structure-forming particles, should have a difference in thermal expansion coefficients of less than 3 x 10-6 /K (par. 48-50). Therefore, it would have been obvious to one of ordinary skill in the art to tailor the thermal expansion coefficient of the prior art protective coating to that of the substrate, including by using the filler particles to adjust/tailor the thermal expansion coefficient of the coating, and to tailor the thermal expansion properties of the coating components such that the coating, its components, including its filler particles, and the substrate all have a difference in thermal expansion coefficient of less than 3 x 10-6 /K in order to make the coating as a whole "compatible" to make the coating's components “compatible” with each other and with the underlying substrate. As the prior art thermal expansion coefficient range is expressed as “less than” the taught value, any difference including little or no difference (i.e. the thermal expansion coefficients are the same) in thermal expansion coefficients is rendered obvious by the prior art because it is encompassed by the taught range. See MPEP 2144.05. It also would have been obvious to one of ordinary skill in the art to configure the coating as a whole to have as close of an overall thermal expansion coefficient to that of the cellular glass insulation material as possible and to configure the coating components to have thermal expansion coefficients that are as close to each other as possible, thereby configuring each of the coating components (including the filler particles) to have as close of a thermal expansion coefficient as possible (i.e. including within 90 to 110 %) to the coating, as whole, and therefore, to the cellular glass insulation material (i.e. including within 90 to 110 %) in order to make all components (i.e. the coating, the coating components, and the insulation) as compatible as possible. Furthermore, it would have been obvious to select an appropriate thermal expansion coefficient for the filler, including selecting a thermal expansion coefficient that is withing 50 to 150 % or even 90 to 110 % of the substrate, in order to achieve a desired level of tailoring between the coating and the substrate.
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.
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). Evidence for the particle sizes of claim 1 is provided by Kramer (Kramer Industries, Inc. "Mesh Size", 2025, p. 1-4).
Regarding claims 1 and 9, Hyde teaches an inverted roof comprising a roof deck (11) supporting a waterproofing layer (15), an insulation layer (16), which may comprise cellular glass, on the waterproofing layer (i.e. the waterproofing layer is between the deck and insulation layer), and a protection layer (19) on the uppermost surface of the insulation layer, such that the protective layer forms an upper face of the insulation layer (Figure; col. 2, ln. 6-25; col. 3, ln. 14-17).
The teachings of Hyde differ from the current invention in that he does not disclose an inverted roof including a cellular glass insulation layer coated with a protective silicate coating of the claimed composition. However, Nakajima teaches that it is known to form fireproof protective inorganic coatings comprising an alkali metal silicate and an inorganic phosphate on inorganic substrates, and discloses a firmly-adherent composition for coating glass and other inorganic building materials that is formed from an aqueous solution that offers improved shelf life over previous silicate coatings and excellent resistance to fire, water, cracking, efflorescence, weather, chemicals, and more (col. 1, ln. 11-30; col. 5, ln. 17-23; col. 5, ln. 53-58). As such, it would have been obvious to one of ordinary skill in the art to coat the upper surface of Hyde’s cellular glass insulation with a protective, alkali silicate coating containing a inorganic particulate filler as taught by Nakajima, such that the protective coating forms an upper face of the cellular glass insulation, in order to impart excellent resistance to fire, water, cracking, efflorescence, weather, and chemicals to the cellular glass and because Nakajima teaches that such coatings are known for protecting inorganic substrates, such as glass and inorganic building materials, but teaches that his coating offers improvements over previous alkali silicate coatings.
The teachings of Nakajima differ from the current invention in that he does not disclose an average particle size for his particulate filler. However, Nakajima does disclose that the filler particles in his protective silicate coating are inorganic (col. 5, ln. 24-26). Batdorf further teaches incorporating low density inorganic fillers, or aggregates, into protective silicate coatings to reduce the coatings' density and provide better insulative properties, including improving K and R values (Abstract; col. 7, ln. 41-61). Batdorf teaches that these lightweight aggregates preferably have a mesh size in the range of 100 to 4 U.S. mesh (i.e. 149 µm to 4.75 mm) and a bulk density of less than 0.4 g/cm3 (i.e. 0.4 kg/dm3) (Batdorf, col. 9, ln. 52-55 and col. 14, ln. 66-col. 15, ln. 5; Kramer, p. 1). Therefore, it would have been obvious to one of ordinary skill in the art to use lightweight inorganic fillers/aggregates having a size in the range of 149 µm to 4.75 mm and a bulk density of less than 0.4 kg/dm3 as the inorganic filler in Nakajima's coating in order to beneficially reduce the coating's density and provide better insulative properties, including improved K and R values. It also would have been obvious to configure all or substantially all of the particles to have a single size within the taught range, which would result in the average particle size being in the taught range, because Batdorf explicitly teaches that particles in the taught ranges are preferable and achieve the desired effects. The instantly claimed particle size and bulk density ranges are overlapped or sufficiently close to and rendered obvious by those of Batdorf. See MPEP 2144.05.
In addition to the above, Batdorf discloses that, although fillers with a density of less than 0.4 g/cm3 are preferred, relatively high-density mineral fillers may be used when light weight is not an important consideration (col. 15, ln. 1-7). As such, it would have been obvious to one of ordinary skill in the art to utilize filler particles of the sizes discussed above that have a bulk density of 0.4 g/cm3 or even greater to achieve the above-discussed benefits, except for reduced weight, when light weight is not an important consideration, and because Batdorf explicitly teaches doing so to be appropriate.
The teachings of the cited prior art differ from the current invention in that the thermal expansion coefficient of the particulate filler material relative to that of the underlying cellular glass is not taught. However, Siebers also teaches a protective silicate coating for glass panels used in houses that includes structure-forming particles (i.e. “fillers”) (Abstract; par. 12, 46, 82). Siebers teaches that the thermal expansion of such coatings should be tailored to that of the underlying substrate, teaches that inorganic components can be used to tailor the thermal expansion coefficient, and teaches that “compatible” materials, which he teaches includes the structure-forming particles, should have a difference in thermal expansion coefficients of less than 3 x 10-6 /K (par. 48, 49, 50). Therefore, it would have been obvious to one of ordinary skill in the art to tailor the thermal expansion coefficient of the prior art protective coating to that of the substrate, including by using the filler particles to adjust/tailor the thermal expansion coefficient of the coating, and to tailor the thermal expansion properties of the coating components such that the coating, its components, including its filler particles, and the substrate all have a difference in thermal expansion coefficient of less than 3 x 10-6 /K in order to make the coating as a whole "compatible" to make the coating's components “compatible” with each other and with the underlying substrate. As the prior art thermal expansion coefficient range is expressed as “less than” the taught value, any difference including little or no difference (i.e. the thermal expansion coefficients are the same) in thermal expansion coefficients is rendered obvious by the prior art because it is encompassed by the taught range. See MPEP 2144.05. It also would have been obvious to one of ordinary skill in the art to configure the coating as a whole to have as close of an overall thermal expansion coefficient to that of the cellular glass insulation material as possible and to configure the coating components to have thermal expansion coefficients that are as close to each other as possible, thereby configuring each of the coating components (including the filler particles) to have as close of a thermal expansion coefficient as possible (i.e. including within 90 to 110 %) to the coating, as whole, and therefore, to the cellular glass insulation material (i.e. including within 90 to 110 %) in order to make all components (i.e. the coating, the coating components, and the insulation) as compatible as possible. Furthermore, it would have been obvious to select an appropriate thermal expansion coefficient for the filler, including selecting a thermal expansion coefficient that is withing 50 to 150 % or even 90 to 110 % of the substrate, in order to achieve a desired level of tailoring between the coating and the substrate.
Regarding claims 2-6, 11, and 13, Hyde et al. teach or render obvious the limitations of claims 2-6, 11, and 13 for the reasons discussed in 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 above, and further in view of Takeuchi (JP 05311091 A), cited according to an English language translation, for the reasons discussed in 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 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 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.
Regarding claims 1, 6, and 9, Liang teaches a building roof (i.e. “inverted roof”) comprising a roof deck (1 alone or in combination with 2 and/or 3 ) supporting a waterproofing layer (3), a cellular glass insulation layer (5) on the waterproofing layer (i.e. the waterproofing layer is between the deck and insulation layer), and a protection layer (6) on the uppermost surface of the insulation layer, such that the protective layer forms an upper face of the insulation layer (Abstract; Figs. 1-4; par. 6, 12-15 ).
The teachings of Liang differ from the current invention in that his protection layer is not disclosed to the recited composition of an alkali silicate and a particulate filler, as claimed. However, Liang does teach that the layer can be a cementitious material, like cement mortar or concrete (par. 6). Zubrod further teaches a cementitious protective coating that comprises 15 to 50 wt. % of an aggregate (i.e. “particulate filler) with diameter sizes in the range of about 0.025 to 12.5 mm and a specific gravity, and potassium silicate (Abstract, par. 34, 93). Zubrod’s coating material is beneficial because it serves as a fireproofing material that provides elevated heat resistance, compressive strength, bond strength, and corrosion protection to the surfaces it coats (par. 2). Therefore, it would have been obvious to one of ordinary skill in the art to utilize Zubrod’s protective coating as the protective layer on Liang’s product because due to the just-discussed excellent properties and fireproofing it provides. It also would have been obvious to select filler particles with any range of sizes within the taught diameter range, including with sizes in the range of 0.025 to 0.5 mm (i.e. 25 to 500 µm), thereby achieving an average filler particle size in the range of 0.025 to 0.5 mm because Zubrod explicitly teaches such sizes to be appropriate. The instantly claimed filler average particle size and quantity are obvious in view of Zubrod. See MPEP 2144.05.
Although Zubrod does not explicitly teach a bulk density for his aggregate/filler particles, which might be considered a difference from the current invention, he does disclose that the aggregate should have a specific gravity of less than 1.0 (par. 34). Zubrod also teaches other, similar coating compositions that employ aggregates or fillers, including one that includes fillers with a bulk density of less than 0.5 g/cm3 and another that includes fillers with a bulk density of 0.02 to 0.64 g/cm3 (par. 11, 14). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize an aggregate having a bulk density of less than 0.5 g/cm3 or that falls in the range of 0.02 to 0.64 g/cm3 because Zubrod demonstrates that such filler/aggregate bulk densities are appropriate and useful for protective coatings such as his and because such values are consistent with his own teaching of having a specific gravity of less than 1.0. The instantly claimed filler bulk density range is overlapped and rendered obvious by Zubrod. See MPEP 2144.05.
The teachings of the cited prior art differ from the current invention in that the thermal expansion coefficient of the particulate filler material relative to that of the underlying cellular glass is not taught. However, Siebers also teaches a protective coating for glass panels used in houses that includes structure-forming particles (i.e. “fillers”) (Abstract; par. 12, 46, 82). Siebers teaches that the thermal expansion of such coatings should be tailored to that of the underlying substrate, teaches that inorganic components can be used to tailor the thermal expansion coefficient, and teaches that “compatible” materials, which he teaches includes the structure-forming particles, should have a difference in thermal expansion coefficients of less than 3 x 10-6 /K (par. 48, 49, 50). Therefore, it would have been obvious to one of ordinary skill in the art to tailor the thermal expansion coefficient of the prior art protective coating to that of the substrate, including by using the filler particles to adjust/tailor the thermal expansion coefficient of the coating, and to tailor the thermal expansion properties of the coating components such that the coating, its components, including its filler particles, and the substrate all have a difference in thermal expansion coefficient of less than 3 x 10-6 /K in order to make the coating as a whole "compatible" to make the coating's components “compatible” with each other and with the underlying substrate. As the prior art thermal expansion coefficient range is expressed as “less than” the taught value, any difference including little or no difference (i.e. the thermal expansion coefficients are the same) in thermal expansion coefficients is rendered obvious by the prior art because it is encompassed by the taught range. See MPEP 2144.05. It also would have been obvious to one of ordinary skill in the art to configure the coating as a whole to have as close of an overall thermal expansion coefficient to that of the cellular glass insulation material as possible and to configure the coating components to have thermal expansion coefficients that are as close to each other as possible, thereby configuring each of the coating components (including the filler particles) to have as close of a thermal expansion coefficient as possible (i.e. including within 90 to 110 %) to the coating, as whole, and therefore, to the cellular glass insulation material (i.e. including within 90 to 110 %) in order to make all components (i.e. the coating, the coating components, and the insulation) as compatible as possible. Furthermore, it would have been obvious to select an appropriate thermal expansion coefficient for the filler, including selecting a thermal expansion coefficient that is withing 50 to 150 % or even 90 to 110 % of the substrate, in order to achieve a desired level of tailoring between the coating and the substrate.
Response to Arguments
Applicant's arguments filed November 13, 2025 have been fully considered but they are not persuasive.
Applicant has argued that the previously-made double patenting rejections did not address the claim requirements regarding the thermal conductivity of the filler particles and the cellular glass insulation material. However, the requirements are addressed in the rejections above.
Applicant has argued that the requirement that the filler in the claimed coating has a bulk density of at least 0.4 kg/dm3 distinguishes the claimed invention over the cited prior art because Batdorf teaches to make a coating with an overall density of 0.4 kg/cc (i.e. 0.4 kg/dm3) or lower and that a fair reading of Batdorf would require the filler to have an even lower bulk density. However, although Applicant is correct that Batdorf teaches that a low density filler can be used to reduce the coating’s density to below 0.4 kg/dm3) (Abstract), Batdorf also explicitly teaches that it is preferable to use an aggregate (i.e. which corresponds to the recited “particulate filler”) with a bulk density of less than 0.4 g/cc (i.e. 0.4 kg/dm3) (col. 14, ln. 66-col. 15, ln. 5). Batdorf further teaches that higher-density fillers may be used where light weight is not a concern. As such, Batdorf teaches a filler bulk density value, “less than 0.4 kg/dm3”, that is sufficiently close to render obvious the claimed range and suggests using higher-density materials, which clearly have or at least render obvious the claimed range, to be used when a low weight is not a priority. See MPEP 2144.05.
Applicant has also argued that there would be no reasonable expectation of success in combining Siebers’ teachings with those of Nakajima and Batdorf because Siebers teaches coatings that are heated in their preparation. However, the rejections are not based on combining his coating components or deposition methods with the prior art, but rather on selecting to make a coating from components that have a compatible thermal expansion coefficients with each other and their underlying substrate (par. 48, 49). The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). It would have been obvious to one of ordinary skill in the art utilize filler particles with a thermal expansion coefficient as close to those of the other coating components and of the cellular glass substrate as possible in order to make the coating components, including the filler particles, and substrate as compatible to each other as possible, as taught by Siebers and discussed above. There is no apparent reason that one of ordinary skill in the art would be incapable of or would not be expected to be successful at selecting coating material components (i.e. including filler particles) with minimized differences in thermal expansion coefficients from each other and the substrate the coating is intended to protect.
Applicant has also argued that the combination of Zheng’s and Hyde et al. is the result of impermissible hindsight and would not be adequately motivated because Zheng’s teaching of including a plasticizer to improve flexibility of the coating would not be relevant for a coating formed on a rigid substrate. However, as Applicant has pointed out, Zheng’s teaching of increased flexibility is the motivation for including a plasticizer. Aside from pointing out that cellular glass is rigid, Applicant has presented no evidence that a flexible coating would be undesirable. To the contrary, Anderson (US Pat. No. 6,657,001) teaches that less-flexible films are more susceptible to chipping or thermal cracking than hard films and discloses depositing protective, flexible films on virtually any substrate, including rigid substrates and including glass and ceramic substrates (col. 1, ln. 63-67; col. 41, ln. 16-32; col. 87, ln. 65-col. 88, ln. 3). Noatschk (US PG Pub. No. 2018/0187044) further teaches that flexibility is absolutely essential for substrates in a variety of industry sectors and that, on rigid substrates, that the capacity of a coating to remain intact under deformation stress is very important, and changes as a result of temperature differences necessitate commensurate flexibility on the part of the coatings (par. 2). As such, one of ordinary skill in the art would understand that there is value in providing the prior art coating with some flexibility.
Furthermore, 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784