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 .
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 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.
Claims 1-20 are pending. Applicant’s previous election of aluminum trihydrate and expanded perlite as species (corresponding to claims 1-4, 12-16 and 19-20) still applies and claims 5-11, 17-18 remain withdrawn.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/28/25 has been entered.
Claim Rejections - 35 USC § 103
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 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.
If 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1-4, 12-16 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Anderson et al. (U.S. 4,822,659) in view of von Bonin et al. (U.S. 4,992,481, hereinafter Bonin) in view of Annemaier et al. (U.S. 6,010,763).
Regarding claims 1-4, 12-16 and 19-20, Anderson teaches a multilayer composite having thermal insulation and fire blocking properties (see abstract) comprising a barrier layer 13 and a silicone foam layer 12, wherein the silicone foam may be platinum catalyzed (addition cured) silicone foam (see claim 8) as in claims 2 and 14, with an overall thickness overlapping the claimed ranges (col. 3, line 60-col. 4, line 5, ¼ inch corresponds to approximately 6.35 mm), and wherein the foam may include metal (aluminum) trihydrate as in the elected species and claims 3-4, 15-16, and 20, and renders obvious the amount of such filler in the present application (see below regarding result effective variable).
Anderson does not disclose expanded perlite as in the elected species but does seek thermal insulation and fire blocking properties. However, Bonin is also directed to fire retardant compositions of silicone foam (see claim 2) and teaches that perlites were a known flameproofing filler (col. 6, line 55-col. 7, line 10). Furthermore, Annemaier is also directed to fireproofing foam materials (see abstract) and teaches that expanded perlite is a preferred heat insulating material with high heat resistance and may be used at amounts overlapping the amounts in the present application (col. 3, lines 45-60). Thus, it would have been obvious to have included general perlite filler in the silicone foam layer of Anderson as suggested by Bonin to provide flameproof properties, which Anderson seeks, and it would have further been obvious to have include expanded perlite more specifically (as in the elected species and claim 12) as taught by Annemaier because it provide heat insulating properties with high heat resistance, which Anderson also seeks.
The claimed HBF and self ignition properties are not disclosed, however, modified Anderson renders obvious an overlapping type of barrier layer, type of silicone foam material, thickness, and also the elected species of foam fillers (aluminum trihydrate and expanded perlite) as compared to the present application. The prior art also provides an art-recognized result effective variable relationship for the amount of both fillers in terms of providing flame-proofing properties (via releasing water from aluminum hydrate) and heat insulation (via heat insulating properties from expanded perlite). Thus, it would have additionally been obvious to have optimized the amount of both aluminum trihydrate and expanded perlite in the silicone foam layer of modified Anderson (for the respective flame proofing and heat insulating properties discussed above), with such optimized amounts include the amounts used in the present application. Because the prior art renders obvious a composition with just silicone, aluminum trihydrate and expanded perlite, optimizing the amount of aluminum trihydrate and expanded perlite will necessarily result in a corresponding optimization of the remaining amount of silicone in the overall composition.
Accordingly, the composition of modified Anderson renders obvious an overlapping composition and structure of the composite compared to the composite of the present invention and therefore these overlapping embodiments in the prior art will inherently have the same HBF and self ignition properties as the overlapped embodiments in the present application. Furthermore, since Anderson explicitly seeks flame proofing properties generally, it would have also been obvious to have optimized the degree of flame proofing properties in general (including flammability and self ignition properties) to within the claimed ranges.
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.
Claim 1-20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 4, 6-10, 12-14, 16, 18-19 of copending Application No. 17/804,127 (reference application) in view of Anderson et al. (U.S. 4,822,659). Although the claims at issue are not identical, they are not patentably distinct from each other because the presently claimed barrier layer is obvious to use in the copending application to improve support as taught by Anderson (col. 3, lines 60-65).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s remarks are moot in light of the new grounds of rejection. Remarks which are still deemed relevant are addressed below and are not persuasive.
Applicant appears to argue that the optimization to arrive at the claimed amounts based on the teachings of the prior art is improper because the prior art only recognizes an effect for two of the three ingredients. However, as explained above, the composition may comprise only those three ingredients, such that optimization of the amount of two of the ingredients will necessarily result in a corresponding optimization of the amount of the third ingredient in terms of wt%. Furthermore, one of ordinary skill in the art would recognize that the silicone ingredient is the matrix/binder into which the other filler ingredients (i.e., aluminum trihydrate and expanded perlite) are incorporated such that there is an obvious and implied motivation for optimizing the amount of the silicone (i.e., to bind and hold the other filler ingredients and still provide sufficient mechanical properties so that the composition can form a coating, instead of merely loose filler particles).
If applicant is arguing that optimization of an ingredients amount is only prima facie obvious when the prior art already teaches an overlapping range, this is not true, and result effective variable based optimization is routinely and properly relied upon to render obvious claimed amounts when the prior art provides a motivation for including the ingredient but does not disclose an overlapping amount. It is further noted that the disclosed amount of aluminum tridhydrate in Anderson is not required and the invention is broadly described as a mixture of silicone foam and aluminum tridhydrate (see col. 1, lines 40-55 and claim 1), such that the amount later disclosed is merely a narrowed (not required) embodiment within the broader disclosed invention.
For further evidence that overlapping ranges are not required for the prior art to render obvious a claimed amount of an ingredient, see MPEP 2144.05 II A (showing that general conditions “encompassing” the claimed invention does not require overlapping ranges, see underlined portions below). “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In reHoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.). For more recent cases applying this principle, see Merck & Co. Inc.v.Biocraft Lab. Inc., 874 F.2d 804, 809, 10 USPQ2d 1843, 1848 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989)(Claimed ratios were obvious as being reached by routine procedures and producing predictable results); In reKulling, 897 F.2d 1147, 1149, 14 USPQ2d 1056, 1058 (Fed. Cir. 1990)(Claimed amount of wash solution was found to be unpatentable as a matter of routine optimization in the pertinent art, further supported by the prior art disclosure of the need to avoid undue amounts of wash solution); and In re Geisler, 116 F.3d 1465, 1470, 43 USPQ2d 1362, 1366 (Fed. Cir. 1997)(Claims were unpatentable because appellants failed to submit evidence of criticality to demonstrate that that the wear resistance of the protective layer in the claimed thickness range of 50-100 Angstroms was “unexpectedly good”); Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 82 USPQ2d 1385, 1395 (2007) (identifying “the need for caution in granting a patent based on the combination of elements found in the prior art.”).”
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights