DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Group II, claims 6-7 and 11-15 in the reply filed on 5/23/2025 is acknowledged. The traversal is on the ground(s) that original claim 6 depended upon claim 1, and therefore necessarily included all of the limitations recited therein; and that previously presented claims 8 and 1 which were drawn, respectively to a coating liquid and a method of manufacturing a coating liquid, therefore also had unity of invention for this reason.
This is not found persuasive because the lack of unity of invention is based on the fact that the shared technical feature does not make contribution over the prior art as stated in the 3/24/2025 office action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-5 and 9 are canceled by the applicant. Claims 8 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/23/2025.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 6 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rentei et al (JP 2018043927 A, machine translation is referenced herein).
Regarding claims 6 and 14, Rentei teaches a heat insulating material prepared by mixing an aqueous dispersion of silica aerogel particles, a cellulose nanofiber such as carboxymethyl cellulose (CMC), and a water-soluble resin such as polyvinyl alcohol and polyvinyl pyrrolidone; aggregating the silica aerogel particles; casting onto a polypropylene case; and drying the coating to form a sheet [0012, 0033, 0035, 0045, 0068].
The examiner submits that the silica aerogel particles read on the claimed aerogel particles; the water-soluble resin such as polyvinyl alcohol and polyvinyl pyrrolidone reads on the claimed water-soluble polymer having a hydrophobic group, as evidenced by the applicant [0126 spec.]; the CMC reads on the claimed water-soluble polymer having a hydrophobic group and the claimed cellulosic resin in claim 14, as evidenced by the applicant [0127 spec.]; the aqueous medium reads on the claimed liquid medium; casting onto the polypropylene case reads on the claimed applying the coating liquid onto a support to obtain a coated film; drying the coating to form a sheet reads on the claimed removing at least a part of the liquid medium from the coated film to obtain a thermal insulating material.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentei et al (JP 2018043927 A, machine translation is referenced herein).
Regarding claim 11, Rentei teaches the method in claim 6 as stated in the 102 rejection above. Rentei further teaches that the shape and size of aggregates of silica aerogel particles depend on the content of organic nanofibers and surfactant, the dispersion process and conditions [0033]. In other words, Rentei recognizes the claimed average diameter of the aggregates being affected by factors such as the content of organic nanofibers and surfactant, the dispersion process and conditions. It would have been obvious to one of ordinary skill in the art at the time of filing to optimize the average diameter of the aggregates based on the aforementioned factors by routine experimentation, thereby arriving at the claimed 2 to 40 times an average diameter of the aerogel particles prepared in the preparing step. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Regarding claim 12, the recited “when a diluted solution of the coating liquid is subjected to observation with an optical microscope, an area occupied by the aggregates having a diameter of 20 µm or more relative to an area occupied by the aerogel particles and the aggregates within an observation visual field is 50% or more” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Claim(s) 7, 11 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentei as applied to claim 6 above, further in view of Yu et al (US 20200048100 A1).
Rentei teaches the method in claim 6.
Regarding claim 7, Rentei is silent about the pore volume of the thermal insulating material.
In the same field of endeavor, Yu teaches an insulating blanket comprising silica aerogel; and two or more single silica aerogel particles (first particulate) are aggregated to form second particulate [abstract, 0029-0030]. The blanket has a pore volume of 3.70 cm3/g for Example 1 [0148, Table 3].
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a thermal insulating material according to Rentei having a pore volume of about 3.70 cm3/g, as Yu demonstrates this pore volume to be suitable for similar thermal insulating material. This represents the use of a suitable pore volume in a thermal insulating material which is compositionally similar to those of Yu and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
The pore volume of 3.70 cm3/g meets the claimed 0.15 cm3/g or more.
Regarding claim 11, Yu teaches that two or more single silica aerogel particles (first particulate) are aggregated to form second particulate as stated above; and the first particulate has average diameter of 100 nm to 300 nm; and the second particulate has average diameter of 300 nm to 600 nm [claim 21]. Therefore, the average diameter of the aggregates (the second particulate) is 2 to 3 times an average diameter of the aerogel particles prepared in the preparing step (first particulate).
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a thermal insulating material according to Rentei having the aforementioned particle size, as Yu demonstrates those particle size to be suitable for similar thermal insulating material. This represents the use of a suitable particle size in a thermal insulating material which is compositionally similar to those of Yu and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 13, Yu teaches that the silica aerogel may be included in 20% by weight to 80% by weight with respect to the total weight of the blanket including a silica aerogel [0063]. The aerogel has tap density of 0.04-0.5 g/cm3 [0056]. Therefore, the silica aerogel may be included in 40 volume% or more with respect to the total volume of the blanket including a silica aerogel, which overlaps the claimed 70 volume% or more.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a thermal insulating material according to Rentei having a total content of the aerogel particles and the aggregates in the coating liquid being 40 volume% or more on the basis of a total volume of solid contents, as Yu demonstrates this range to be suitable for similar thermal insulating material. This represents the use of a suitable range of total content of the aerogel particles and the aggregates in the coating liquid in a thermal insulating material which is compositionally similar to those of Yu and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rentei as applied to claim 6 above, further in view of Leipold (US 4485089 A).
Regarding claim 15, Rentei teaches the method in claim 6. Rentei teaches that the composition comprises a cellulose nanofiber, including carboxymethyl cellulose (CMC), which contributes to high viscosity [0012]. An agent contributing to high viscosity is art recognized as a thickener.
Leipold teaches a composition comprising silica aerogel and a thickener. The thickener can be CMC [col. 1, line 19-20]; alternatively the thickener is a modified hydroxyethyl cellulose further substituted with a hydrocarbon radical having from 8 to 25 carbon atoms [col. 1, line 66 to col. 2, line 1; col. 2, line 55].
Thus, Leipold discloses the modified hydroxyethyl cellulose substituted with a hydrocarbon radical having from 8 to 25 carbon atoms to be equivalent to CMC equally useful as a thickener. Therefore, it would have been obvious to one of ordinary skill at the time of filing to utilize the modified hydroxyethyl cellulose substituted with a hydrocarbon radical having from 8 to 25 carbon atoms instead of CMC as the thickener as the cellulosic resin in Rentei’s composition because it is obvious to substitute art-recognized equivalents for the same purpose. See MPEP 2144.06.
Alternatively, based on Rentei’s teaching of “organic nanofibers” [0012], more than one such organic nanofibers can be added to the composition. It would have been obvious to one of ordinary skill in the art at the time of filing to add the modified hydroxyethyl cellulose substituted with a hydrocarbon radical having from 8 to 25 carbon atoms as the organic nanofiber in Rentei’s composition, as it is expressly disclosed by Leipold as being useful in this capacity (as a thickener). It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
The modified hydroxyethyl cellulose substituted with a hydrocarbon radical having from 8 to 25 carbon atoms reads on the claimed cellulosic resin having a long-chain alkyl group having 6 to 26 carbon atoms.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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/JIANGTIAN XU/Examiner, Art Unit 1762