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
Claims 9-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/25/2025.
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.
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) 1-2, 5-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikkawa et al. (WO2017038646A1), hereinafter ‘Kikkawa’.
All references made herein to the above foreign language document are made according to the attached machine translation.
Regarding Claim 1, Kikkawa discloses a hybrid aerogel in which nano-size hollow particles are mixed into an aerogel having a network structure created by bonded secondary particles of a metal oxide with pores formed among the secondary particles ([0008]-[0010]: Kikkawa discloses an aerogel composite, considered a ‘hybrid’ aerogel in that it is a composite of more than one material, comprising aerogel having a three-dimensional network skeleton formed by the aerogel components, hollow silica particles, and pores – this three-dimensional network is considered a network structure created by bonded secondary particles with pores formed among the secondary particles according to [0036] (“The aerogel particles 1 are considered to be in the form of secondary particles composed of multiple primary particles…”). Further, a particular embodiment of the invention ([0185]) discloses the synthesis of such an aerogel utilizing silicate precursors, which would thereby result in a silica aerogel having a three-dimensional network skeleton formed by silica aerogel components, which are considered bonded secondary particles of a metal oxide, said metal oxide being silicon dioxide, or silica; [0180]: Kikkawa discloses the use of hollow silica particles having a diameter of 50 nm, and therefore these particles are considered nano-size hollow particles), wherein
the nano-size hollow particles each includes a shell of 30 nm or more and 360 nm or less in outer diameter and a cavity inside (it is noted that the outer diameter as claimed refers to the outer diameter of the hollow particles themselves and not the thickness of the shell, as shown by Fig. 2 of the instant disclosure; [0180]: Kikkawa discloses the use of hollow silica particles having a diameter of 50 nm – further, the fact that these particles are disclosed as hollow means that these particles have a cavity inside them).
Further regarding Claim 1, while Kikkawa does not disclose embodiments in which both nano-size hollow particles and micro-size hollow particles are mixed into an aerogel as claimed, Kikkawa does disclose that “[t]he hollow silica particles may have an average primary particle size of 1 nm to 100 µm…”, which makes it easier to further improve the thermal insulation and flexibility of the produced aerogel ([0014]). Further, Kikkawa discloses the shape of the hollow silica particles is not particularly limited: “[s]ince it becomes easier to impart appropriate strength to the aerogel composite and to obtain an aerogel composite with excellent shrinkage resistance during drying, the average primary particle diameter of the hollow silica particles can be 1 nm or more, may be 5 nm or more, or may be 10 nm or more. Since the solid thermal conductivity of the hollow silica particles is easily suppressed and an aerogel composite with excellent heat insulation is easily obtained, the average primary particle diameter of the hollow silica particles can be 100 µm or less, maybe 70 µm or less, or may be 50 µm or less. In other words, the average primary particle diameter of the hollow silica particles 2 can be 1 nm to 100 um, may be 5 nm to 70 µm, or may be 10 nm to 50 µm” ([0041]). From this, it is clear that both nano-sized hollow silica particles and micro-sized hollow silica particles are both considered suitable by the invention of Kikkawa, such that both size fractions of particles may be used within the disclosed aerogel.
In light of this, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to combine both nano-sized hollow silica particles and micro-sized hollow silica particles within the invention of Kikkawa in order to form a silica aerogel. Since both nano-size and micro-size particles are suitable for the same purpose, the combination of these size fractions would be obvious to one of ordinary skill in the art. It is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose…[T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding Claim 2, Kikkawa discloses the nano-size hollow particles are 0.01% by weight or more and 30% by weight or less, and the balance consists of the aerogel ([0046]: “…the content of the hollow silica particles contained in the aerogel composite can be 1 to 25 parts by mass, or may be 3 to 15 parts by mass, relative to 100 parts by mass of the total aerogel composite” – the ‘balance’ of this composition is considered to represent the aerogel in the absence of other optional additives as discussed in [0047]. In the aerogel of Kikkawa as modified above, in which both nano-size and micron-size particles are utilized to form an aerogel, one of skill in the art would maintain such guidance and maintain such a ratio, and would find it obvious to maintain the amount of hollow particles relative to the amount of aerogel – this implies a weight range for both hollow particle size fractions of between 3 and 15 parts by mass, which falls within the claimed ranges).
Regarding Claim 5, Kikkawa discloses the nano-size hollow particles are 0.01% by weight or more and 30% by weight or less, and the balance consists of the aerogel ([0046]: “…the content of the hollow silica particles contained in the aerogel composite can be 1 to 25 parts by mass, or may be 3 to 15 parts by mass, relative to 100 parts by mass of the total aerogel composite” – the ‘balance’ of this composition is considered to represent the aerogel in the absence of other optional additives as discussed in [0047]. In the aerogel of Kikkawa as modified above, in which both nano-size and micron-size particles are utilized to form an aerogel, one of skill in the art would maintain such guidance and maintain such a ratio, and would find it obvious to maintain the amount of hollow particles relative to the amount of aerogel – this implies a weight range for both hollow particle size fractions of between 3 and 15 parts by mass, which falls within the claimed ranges).
Regarding Claim 6, Kikkawa is silent regarding the volume ratio of hollow silica particles such that the volume ratio of nano-size and micro-size particles in the aerogel composite may be compared to that instantly claimed (“…when the nano-size hollow particles are included, the composition ratio thereof is 0.00003% by volume or more and 17.6% by volume or less, and the balance consists of the aerogel…”). However, both the nano-size hollow particles as utilized by Kikkawa and those claimed by the instant invention have substantially similar particle sizes and are included in the same weight ratio within the composition, as shown in the rejections of Claims 1 and 2 above. Importantly, the volume of said hollow particles is a function of the diameter of said particles (4/3π(d/2)3), and the volume occupied by the particles with respect to the total aerogel composite is a function of the amount of said particles, otherwise measured by the weight composition of said particles in the composite. Given that Kikkawa discloses the use of nano-size hollow silica particles having both the same diameter and weight composition in the aerogel composite as instantly claimed, there is a reasonable prima facie basis to conclude that, while not disclosed, the aerogel composite of Kikkawa would also comprise a volume ratio of nano-size and micro-size hollow particles in the disclosed aerogel composite within the instantly claimed range, as nano-size particles that are present in the same size and amount within a composition must necessarily occupy the same volume. The burden of proof now shifts to the Applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product - see MPEP 2112(V).
Regarding Claim 7, Kikkawa discloses the use of nano-size silica particles, as discussed above – such particles comprise silicon.
Regarding Claim 8, Kikkawa discloses a thermal insulation material wherein the hybrid aerogel according to claim 1 ([0177]: “The thermal insulation material of the present embodiment comprises the aerogel composite described above…”).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kikkawa et al. (WO2017038646A1), hereinafter ‘Kikkawa’, in view of Suzler (FR2340289A1), hereinafter ‘Suzler’.
All references made herein to the above foreign language document are made according to the attached machine translation.
Regarding Claim 4, it is noted that Kikkawa discloses a composite aerogel for use as a thermal insulation material ([0177]), and further emphasizes the importance of properties in such a material including strength and heat insulation properties ([0035]). Further, Kikkawa discloses that the form of the hollow silica particles used in producing the aerogel composite is not particularly limited, and may be from the group that comprises fused silica particles ([0037]), where fused silica particles are considered to encompass glass.
However, Kikkawa does not disclose that cavities in the nano-size hollow particles and/or cavities in the micro-size hollow particles are filled with gas having thermal conductivity lower than that of air.
Suzler discloses a heat insulating material comprising a liquid binder in which hollow, insulating bodies are disposed ([0003]). A person of ordinary skill in the art would have recognized Suzler as analogous to Kikkawa, as both references are drawn to the same field of endeavor as the claimed invention, insulation materials comprising hollow insulating members - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Namely, Suzler discloses the use of spherical glass hollow bodies ([0004]-[0005]), which are analogous to the silica hollow spheres of Kikkawa, as glass is considered fused silica, which is expressly disclosed as a suitable source of the hollow silica particles in Kikkawa. Further, while Suzler does not explicitly disclose the size of said spheres, they are referred to as ‘small spheres’ ([0030]) and are considered to reasonably encompass the size of particles permitted for use within Kikkawa, which is 1 nm or more and 100 µm or less ([0041]). Further still, while Suzler discusses applications of said spheres in materials such as concrete ([0030]), the advantages disclosed by Suzler would reasonably be expected to apply to materials other than concrete, such as the aerogel composite of Kikkawa, as the advantages disclosed by Suzler pertain to physical properties fundamental to all insulation materials, including the amount of convective and radiative heat transfer through said material, and also the compressive strength of said material.
Further, Suzler discloses that the insulating bodies utilized by the instant invention are characterized in that said insulating bodies are hollow, have a hermetic envelope, and are filled with a gas whose thermal conductivity is lower than that of air ([0003]). Advantageously, Suzler discloses that the use of such gas-filled insulating members may comprise gases such as krypton or xenon, which have thermal conductivities three to four times lower than that of air, that by the use of such spheres, both convective and radiative heat transfer through the spheres is virtually non-existent, and further that, by the use of such gas-filled spheres, the resulting material exhibits improved compressive strength ([0033]-[0034]).
Accordingly, given that Kikkawa discloses a composite aerogel for use as a thermal insulation material and further emphasizes the importance of properties in such a material including strength and heat insulation properties, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to utilize fused silica (glass) nanospheres filled with xenon or krypton in the aerogel composite insulation material of Kikkawa, thereby utilizing nano-size hollow particles filled with gas having thermal conductivity lower than that of air, as the use of such glass spheres as disclosed by Suzler has been shown to predictably result in virtually non-existent convective and radiative heat transfer though said spheres in a thermal insulation material, which would thereby result in a net reduction of the overall thermal conductivity of said insulation material, and further would result in increased compressive strength of the produced material.
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, 4, and 8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17 and 18 of copending Application No. 18028543 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the claims of the reference application are drawn to the following:
In the case of Claim 1, both the instant claim and Claim 17 of the reference application require an aerogel in which nano-size hollow particles and/or micro-size hollow particles are mixed into an aerogel having a network structure created by bonded secondary particles of a metal oxide with pores formed among the secondary particles, wherein the nano-size hollow particles each includes a shell of 30 nm or more and 360 nm or less in outer diameter and a cavity inside, and the micro-size hollow particles each includes a shell of 1 μm or more and 23 μm or less in outer diameter and a cavity inside. The use of the phrase “at least one of” to describe the particle size fractions permits the inclusion of both particle size fractions, and therefore the claims of the patent encompass the claimed subject matter of Claim 1 of the instant application.
In the case of Claim 4, both the instant claim and Claims 17-18 of the reference application require cavities in the nano-size hollow particles and/or cavities in the micro-size hollow particles that are filled with gas having thermal conductivity lower than that of air.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOGAN LACLAIR whose telephone number is (571)272-1815. The examiner can normally be reached M-F, 7:30-5:30.
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LOGAN LACLAIR
Examiner
Art Unit 1738
/L.E.L./Examiner, Art Unit 1738 /SALLY A MERKLING/SPE, Art Unit 1738