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 of Group I, claims 1-14 in the reply filed on 5/26/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicants are reminded of their right to request rejoinder of method claims with the product claims upon indication of the product claims as being allowable. The method claims must be commensurate with the allowed article claims such that they will be amended to recite all the limitations set out in the allowed article claims. See In re Ochiai 37 USPQ2d 1127.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP 1 770118 to Matsuo (hereinafter “Matsuo”).
Matsuo discloses a composite material comprising a polyisocyanurate foam layer and a metal layer on one side of the foam and a resin layer on the other side of the foam layer (paragraph 58; table 1). The polyisocyanurate foam layer comprises a flame-retardant agent such as tris(chloropropyl)phosphate (table 1). The polyisocyanurate foam layer comprises a density of 25 to 60 kg/m3 or 1.56 to 3.75 pcf; and a thermal conductivity of 22 to 36 mW/mK (paragraph 54). The metal layer is an aluminum layer having a thickness of 3 to 40 microns (paragraph 60). The composite material has a total heat release of 2 MJ/m2 (table 3).
Matsuo does not explicitly disclose the composite material having a thermal conductivity of 0.050 W/mK or less.
However, it appears that the composite material of Matsuo meets all structural limitations and chemistry required by the claims. The composite material comprises a polyisocyanurate foam and a metal layer on one side of the foam and a resin layer on the other side of the foam core (paragraph 58; table 1). The polyisocyanurate foam comprises a flame-retardant agent such as tris(chloropropyl)phosphate therein (table 1). The polyisocyanurate comprises a density of 25 to 60 kg/m3 or 1.56 to 3.75 pcf; and a thermal conductivity of 22 to 36 mW/mK (paragraph 54). The metal layer is an aluminum layer having a thickness of 3 to 40 microns (paragraph 60). The composite material has a total heat release of 2 MJ/m2 (table 3).
Therefore, the examiner takes the position that the thermal conductivity of 0.050 W/mK or less would inherently be present as like material has like property. 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 5, and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuo as applied to claim 1 above, further in view of US 2022/0372205 to Schuette et al. (hereinafter “Schuette”).
As to claims 5, and 8-14, Matsuo does not explicitly disclose the foam layer comprising 25-75 wt% of filler; 10 to 16 wt% of the fire retardant; and a foam density of 4 pcf to 10 pcf; nor does the composite material comprise a compressive strength of 20-200 psi, a flexural strength of 20 to 100 psi, and a moisture permeance per 25 mm thickness of 146 ng/m2.s.Pa or less.
Schuette, however, discloses a composite comprising a polyisocyanurate foam layer and a metal layer on both surfaces of the foam layer (abstract; and paragraph 87). The polyisocyanurate foam layer has a density of 20 to 750 kg/m3 or 1.2 to 47 pcf (paragraph 88) and a compressive strength of greater than 180 Kpa or 26 psi (paragraph 20). The polyisocyanurate foam layer comprises 20-50 wt% of flame retardants (paragraph 64) and 0.5 to 50 wt% of filler including silicate minerals, glass, kaolin, aluminum oxide, titanium oxide (paragraphs 81, 82).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a polyisocyanurate foam layer disclosed in Schuette for the foam layer of Matsuo, motivated by the desire to provide a composite material that complies with insulation specifications including minimum compressive strength of 26 psi without compromising the thermal conductivity, flame retardant and low heat release properties of the composite laminate.
It appears that the composite material of Matsuo as modified by Schutte meets all structural limitations and chemistry required by the claims. The resulting composite material comprises a polyisocyanurate foam layer and a metal layer on one side of the foam and a resin layer on the other side of the foam layer. The resulting polyisocyanurate foam layer has a thermal conductivity of 22 to 36 mW/mK. The polyisocyanurate foam layer has a density of 20 to 750 kg/m3 or 1.2 to 47 pcf, and a compressive strength of greater than 180 Kpa or 26 psi. The resulting polyisocyanurate foam layer comprises 20-50 wt% of flame retardants, and 0.5 to 50 wt% of filler including silicate minerals, glass, kaolin, aluminum oxide, titanium oxide. The metal layer is an aluminum layer having a thickness of 3 to 40 microns (paragraph 60). The composite material has a total heat release of 2 MJ/m2 (table 3).
Therefore, the examiner takes the position that the flexural strength of 20 to 100 psi, and the moisture permeance per 25 mm thickness of 146 ng/m2.s.Pa or less would inherently be present as like material has liker property. 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 1-4, and 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0032573 to Dodworth (hereinafter “Dodworth”) in view of WO 2020/005270 or US 2021/0269612 to Cassidy et al. (hereinafter “Cassidy”).
As to claims 1-4, and 8-14, Dodworth discloses a composite laminate having a heat release below 60 kW.min/m2 or 3.6 MJ/ m2, and comprising a foam core 220 disposed between two thermoset layers 130 and 140, and a thermoplastic layer 110 provided in the thermoset layer 130 (figure 2; and paragraph 67). The thermoset layer has a thickness of 0.6 to 1.0 mm (paragraph 53). The thermoset layers read on the claimed first and second controlled combustion layers.
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Dodworth does not explicitly disclose (i) the foam layer comprising a polymer and a fire-retardant component disposed in the polymer; and (ii) a thermal conductivity of the composite laminate of 0.05 W/mK or less.
Cassidy, however, discloses a foam composite including a polymer and 25-75% by weight of a particular filler (paragraph 32) wherein the foam composite has a compressive strength or a flexural strength of 20 psi to 200 psi (paragraph 44), a density of 2 to 10 pcf (paragraph 43), a thermal conductivity of 0.02 to 0.05 W/mK (paragraph 46), and a moisture permeance per 25 mm thickness of less than 146 ng/m2.s.Pa (paragraph 4). The polymer comprises polyurethane, polyisocyanurate or a combination thereof (paragraph 14).
The particular filler comprises fly ash, amorphous carbon, silica, glass, calcium carbonate and a combination thereof (paragraph 28).
The foam composite further includes a fire-retardant component comprising an organohalogen compound and/or organophosphorous compound (paragraph 36). Under fire exposure, the flame-retardant component in the foam composite forms a protective char that insulates the foam, blocks heat and oxygen transfer, thereby slowing fire growth and reducing heat release rate.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a foam composite disclosed in Casssidy for the foam core of Dodworth, motivated by the desire to provide excellent flame-retardant properties and improved mechanical strength without compromising the low heat release properties.
As to claims 6 and 7, Dodworth discloses a composite laminate having a heat release below 60 kW.min/m2 or 3.6 MJ/ m2, and comprising a foam core 220 disposed between two thermoset layers 130 and 140, and a thermoplastic layer 110 provided in the thermoset layer 130 (figure 2; and paragraph 67). Each thermoset layer has a thickness of 0.6 to 1.0 mm (paragraph 53).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dodworth in view of Cassidy, as applied to claim 1 above, further in view of Schuette.
Neither Dodworth nor Cassidy discloses the flame-retardant component present in an amount of 10 to 16 wt% based on the total weight of the foam composite.
Schuette, however, discloses a composite comprising a polyisocyanurate foam layer and a metal layer on both surfaces of the foam layer (abstract; and paragraph 87). The polyisocyanurate foam layer has a density of 20 to 750 kg/m3 or 1.2 to 47 pcf (paragraph 88) and a compressive strength of greater than 180 Kpa or 26 psi (paragraph 20). The polyisocyanurate foam layer comprises 20-50 wt% of flame retardants (paragraph 64), and 0.5 to 50 wt% of filler including silicate minerals, glass, kaolin, aluminum oxide, and titanium oxide (paragraphs 81, 82). The flame retardant comprises an organohalogen compound and/or an organophosphorous compound (paragraphs 61 and 62).
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 a flame-retardant component of Dodworth/Cassidy in an amount disclosed in Schuetter, motivated by the desire to impart excellent flame-retardant properties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DeFord et al. (US 2002/0139082) discloses a composite building comprising a lightweight core 12a with a thin fiber cement facing 10 on one side of the core and a second facing material 14 on the other side (figure 2).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached at 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights