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 .
Allowable Subject Matter
Claims 1 and 4-9 are allowed.
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.
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 10, 12 and 14-17 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 Korklan et al. (US Pat. 4,332,852).
Regarding claims 10, 12 and 14-16, Korklan et al. teach an aerogel composite comprising a fiber mat and an aerogel disposed on an inside and on a surface of the fiber mat. Korklan et al. are silent regarding the claimed sound absorption properties and thermal conductivity. However, given Korklan et al. teach such similar method comprising such similar materials with such similar volume ratio of catalyzed silica:fiber mat, the claimed sound absorption properties and thermal conductivity are necessarily inherent to the aerogel composite of Korklan et al. Although Korklan does not disclose the claimed process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Korklan meets the requirements of the claimed composite, Korklan clearly meet the requirements of present claims composite.
It is also noted that in the instant specification the comparative example has an overall sound absorption coefficient that is just about in the claimed range and a high frequency average sound absorption coefficient in the claimed range with the comparative example just being an unimpregnated glass fiber mat. Korklan teaches an impregnated glass fiber mat which is believed to have the claimed properties. It is apparent, however, that the instantly claimed overall sound absorption coefficient and that taught by Korklan are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the overall sound absorption coefficient disclosed by Korklan and the overall sound absorption coefficient disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the overall sound absorption coefficient, it therefore would have been obvious to one of ordinary skill in the art that the overall sound absorption coefficient disclosed in the present claims is but an obvious variant of the overall sound absorption coefficient disclosed in Korklan and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Korklan teaches the aerogel composite is manufactured by a process that comprises the fiber mat with a catalyzed silica sol in the claimed volume ratio of catalyzed silica sol :fiber mat (Korklan states “The article is preferably impregnated with from about 10% to about 80% volume percent of the conditioned colloidal silica composition.”).
Regarding claim 17, Given Korklan et al. teach such a similar method comprising such similar materials with the claimed volume ratio of catalyzed silica:fiber mat, the claimed pore diameter is inherent to the mat of Korklan et al.
Claims 10, 12 and 14-16 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 Qian et al. (WO 2013/136034).
Regarding claims 10, 12 and 14-16, Qian et al. teach an aerogel composite comprising a fiber mat and an aerogel disposed on an inside and on a surface of the fiber mat. Qian et al. are silent regarding the claimed sound absorption properties and thermal conductivity. However, given Qian et al. teach such similar method comprising such similar materials with such similar volume ratio of catalyzed silica:fiber mat, the claimed sound absorption properties and thermal conductivity are necessarily inherent to the aerogel composite of Qian et al.
Although Qian et al. does not disclose the claimed process, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Qian et al. meets the requirements of the claimed composite, Qian et al. clearly meet the requirements of present claims composite.
It is also noted that in the instant specification the comparative example has an overall sound absorption coefficient that is just about in the claimed range and a high frequency average sound absorption coefficient in the claimed range with the comparative example just being an unimpregnated glass fiber mat. Qian et al. teaches an impregnated glass fiber mat which is believed to have the claimed properties. It is apparent, however, that the instantly claimed overall sound absorption coefficient and that taught by Qian et al. are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the overall sound absorption coefficient disclosed by Qian et al. and the overall sound absorption coefficient disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the overall sound absorption coefficient, it therefore would have been obvious to one of ordinary skill in the art that the overall sound absorption coefficient disclosed in the present claims is but an obvious variant of the overall sound absorption coefficient disclosed in Qian et al. and thereby one of ordinary skill in the art would have arrived at the claimed invention. Qian et al. teaches the aerogel composite is manufactured by a process that comprises the fiber mat with a catalyzed silica sol in the claimed volume ratio of catalyzed silica sol :fiber mat (Qian et al. states “In order to utilise the excellent mechanical properties of carbon fibres in a composite structure, it is desirable to obtain a high weight loading of carbon fibres embedded within an aerogel. Optionally, the primary fibre volume loadings is 30-90%, such as 50-70%, for example 60%. In a further embodiment, an infusion technique is utilised.”).
Regarding claim 17, Given Qian et al. teach such a similar method comprising such similar materials with the claimed volume ratio of catalyzed silica:fiber mat, the claimed pore diameter is inherent to the mat of Qian et al.
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered but they are not persuasive. It is noted that claims 1 and 4-9 have been indicated as allowable per the amendment made by Applicant. However, claims 10,12 and 14-16 remain rejected and are not found to be in condition for allowance after further consideration. Applicant argues the cited art teaches a different method and therefore does not possess the claimed properties. However, it is also noted that in the instant specification the comparative example has an overall sound absorption coefficient that is just about in the claimed range and a high frequency average sound absorption coefficient in the claimed range with the comparative example just being an unimpregnated glass fiber mat. The cited art teaches an impregnated glass fiber mat which is believed to have the claimed properties. Further, absent evidence of criticality regarding the presently claimed process and given that the cited art meets the requirements of the claimed composite, the cited art clearly meet the requirements of present claims composite. Applicant argues examples 2, 5 and 8 of the present specification possesses the claimed properties and the cited art does not teach the claimed amount of volume ratio of catalyzed silica sol :fiber mat. The cited art teaches the aerogel composite is manufactured by a process that comprises the fiber mat with a catalyzed silica sol in the claimed volume ratio of catalyzed silica sol :fiber mat. Korklan states “The article is preferably impregnated with from about 10% to about 80% volume percent of the conditioned colloidal silica composition.” and Qian et al. states “In order to utilise the excellent mechanical properties of carbon fibres in a composite structure, it is desirable to obtain a high weight loading of carbon fibres embedded within an aerogel. Optionally, the primary fibre volume loadings is 30-90%, such as 50-70%, for example 60%. In a further embodiment, an infusion technique is utilised.”. Therefore, the cited art teaches the claimed volume ratio of catalyzed silica sol :fiber mat.
It is also noted that in the instant specification the comparative example has an overall sound absorption coefficient that is just about in the claimed range and a high frequency average sound absorption coefficient in the claimed range with the comparative example just being an unimpregnated glass fiber mat. Korklan teaches an impregnated glass fiber mat which is believed to have the claimed properties. It is apparent, however, that the instantly claimed overall sound absorption coefficient and that taught by Korklan are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the overall sound absorption coefficient disclosed by Korklan and the overall sound absorption coefficient disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the overall sound absorption coefficient, it therefore would have been obvious to one of ordinary skill in the art that the overall sound absorption coefficient disclosed in the present claims is but an obvious variant of the overall sound absorption coefficient disclosed in Korklan and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Applicant is invited to amend the claims over the cited art.
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 SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
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