FINAL REJECTION
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claim 1 is extremely indefinite in regards to what is actually being claimed for the following many reasons.
In independent claim 1, the metes and bounds of what is meant by “insulative particles” is very indefinite. Just what type of “insulative” is applicant trying to claim (e.g. heat insulation, sound insulation, high energy insulation (e.g. x-rays and/or gamma rays), moisture insulation etc.)? Furthermore, applicant’s specification provides no real information as to which specific chemical species actually fall within “insulative particles”. Paragraph [0037] of applicant’s specification, states in part the following: “As used herein, insulative particles are defined as inorganic, thermally treated reagent particles that demonstrate insulative properties.”. But again, what type of insulation is being referred to and what specific chemical species have said insulation properties? Furthermore, what is the metes and bounds of the temperature range used in the sub-limitation of being “thermally treated”? As an aside, it should be noted that both silicas and silicates, are notoriously well known to be found in nature such as in (minerals, sand, clay etc.) which have all undergone heat treatment (e.g. by volcanism, or heat resulting from the earth’s formation). Furthermore synthetically made silica and silicates are also made using a heating process. What all this means is that applicant’s “insulative particles” component is deemed to effectively read on both silica particles and silicate particles.
In Independent claim 1, many of the individually claimed components, namely: (micro-silica, insulating compound, insulating particles, inert pigment, and amorphous silica) overlap each other, in both their properties and function. As way of illustration only, applicant’s required “micro silica” components is known in the art to have an amorphous nature, has high heat insulation properties, and due to its white color can function as a white/opaque inert pigment, thus reading directly on claim 1’s other 3 required component namely: (insulative particles, inert pigment and amorphous silica). Likewise applicant’s required “amorphous silica” component, reads directly on applicant’s required “insulative particles”, but it also encompasses applicant’s required “micro silica” component and “inert pigment” component. Likewise, if the “inert pigment” component is selected to be calcium carbonate as disclosed in paragraph [0041] of applicant’s specification, it would read directly on applicant’s “insulative particles” component because calcium carbonate (e.g. limestone) is well known to have both thermal and sound insulation properties.
In Independent claim 1, the set forth concentration ranges in regards to: (micro-silica, insulating particles, inert pigment, and amorphous silica) are all extremely indefinite because: 1) as set forth above, all these individual components can easily overlap each other in scope, and 2) the claimed limitation of: “wherein the insulating compound is a discrete solid and includes, by mass of the insulating compound: 2 to 60% insulating particles, 5 to 40% micro silica, and 15 to 50% amorphous silica.”, is itself extremely indefinite because as set forth above, all these individual components within the discrete solid can easily overlap each other in scope.
Dependent claim 5 is itself further indefinite because it further requires “by mass, 20 to 40% hydrated silicate”, yet according to applicant’s non-elected claim 20, “hydrated silicate is fibrous aluminum silicate” [emphasis added], which reads directly on applicant’s independent claim 1 component of “3 to 20% fibers”. This has the further effect of causing the concentration range of the fiber component to be indefinite.
Dependent claim 8 is itself further indefinite because it further requires “by mass, 5 to 50% semiconductors”, yet when the semiconductor is selected to be either titanium oxide (a known inert pigment) or magnesium oxide (a known inert pigment), see paragraph [0038] of applicant’s specification, said semiconductor species read directly on applicant’s “1 to 10% inert pigments;” of independent claim 1.
Dependent claim 11 limitation of “wherein the insulating compound further includes, by mass 5 to 60% resin” further causes the actual concentration range of resin component in independent claim 1 to become indefinite, because independent claim 1 requires that the composition of matter contains “10 to 40% resin”.
Dependent claim 12 limitation of “wherein the insulating compound further includes, by mass 20 to 60% water” further causes the actual concentration range of water component in independent claim 1 to become indefinite, because independent claim 1 requires that the composition of matter contains “10 to 50% water”.
All other claims are rejected here because they are either directly or indirectly dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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 (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.
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.
Examination Note:
Due to the overwhelming indefinite nature of applicant’s independent claim 1, and the claims dependent thereof (see above), the Examiner is forced to hold in abeyance all the concentration ranges for every claimed component for the following prior-art rejections.
Claim(s) 1 and 3-11 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 Rezende U.S. Patent Application Publication No.: 2022/0010915 A1.
Rezende discloses a hybrid compound for insulating a substrate is formed by dispersing functionalized inorganic nanomaterials in a non-toxic reagent at a controlled pH using volatile bases to form an aqueous dispersion. The aqueous dispersion is then stirred to form the hybrid compound. The compound is then applied to a substrate and dried to from an insulating layer. The insulating layer protects the substrate from temperatures exceeding 1200 degrees Fahrenheit, see abstract.
Rezende’s paragraph [0058] reads as followed: “The hybrid compound has different compositions according to the application and the temperature of use, and in one example is composed of a mixture of a dispersion of amorphous silica in mass levels of 5 to 50%, insulating nanoparticles of 2 to 60%, spheres of micro silica from 5 to 40%, fused silica from 5 to 50%, bentonite 1 to 5%, inert pigment from 1 to 10%, additives 3 to 20%, inorganic semiconductors 2 to 30%, carbides from 5 to 35%, inorganic fibers 5 to 40%, polymeric resin from 5 to 60% and water from 20 to 60% by weight.”
Applicant’s attention is also drawn to Rezende’s paragraphs [0031], [0047]-[0048], [0060], [0062]-[0069], [0071]-[0074] and [0077]. Applicant’s claims are thus deemed to be anticipated over Rezende’s said disclosed hybrid compound composition of paragraph [0058], since said hybrid compound composition contains all of applicant’s claimed components for the same insulative use as disclosed by applicant.
In the alternative, due to the indefinite nature of all of applicant’s claimed concentration ranges, Applicant’s claims are deemed to be clearly obvious over Rezende’s said disclosed hybrid compound composition since said hybrid compound composition contains all of applicant’s claimed components, and Rezende’s disclosed concentration ranges of the components are deemed to all, either fully overlap or at least extensively overlap, applicant’s very indefinite component concentration ranges.
Claim(s) 2 is rejected under 35 U.S.C. 103 as being unpatentable over Rezende U.S. Patent Application Publication No.: 2022/0010915 A1 in view of either Okada et al. U.S. Patent Application Publication No.: 2016/0245451 A1 or Lally U.S. Patent Number 8,268,062.
Rezende has been described above and differs from applicant’s claimed invention in that there is not a direct disclosure to the further addition of a phosphate additive.
Okada et al. discloses fire-resistant heat-insulating coating material (3) for a pipe (2) comprises a foamed polyurethane heat-insulating layer comprising a flame-retardant urethane composition containing a polyisocyanate, a polyol, a trimerization catalyst, a foaming agent, a foam stabilizer, and additives, the additives comprising red phosphorus and at least one member selected from the group consisting of phosphoric acid esters, phosphate-containing flame retardants, bromine-containing flame retardants, boron-containing flame retardants, antimony-containing flame retardants, metal hydroxides, and needle-shaped fillers, see abstract.
Okada et al. in paragraphs [0078]-[0079], discloses the advantageous addition of inorganic phosphate flame retardants (e.g. ammonium phosphate, sodium or potassium or magnesium or barium or lithium salts of phosphoric acid etc.) to the fire-resistant and heat-insulating coating material.
Lally discloses a fire-retardant material and method. More specifically, the present invention relates to an insulating, fire-retardant coating (and method) that shields underlying substrates from thermal and other types of insult. The invented coating is especially applicable to energy transport means including oil pipelines. The invented coating and method is also useful in providing an insulating and fire-resistant coating for a variety of substrates including but not limited to: concrete, metals, foamed polymeric materials (i.e. styrofoam), gypsum, synthetics and other substrates, see abstract.
Lally directly discloses inorganic phosphate, such as calcium phosphate and potassium phosphates, as effective flame retardants to be added to the heat-insulating and fire-resistant coatings/materials, see Formulation V and claims 1 and 12.
It would have been obvious to one having ordinary skill in the art to use the disclosure of either secondary reference to Okada et al. or Lally, as strong motivation to actually further incorporate an inorganic phosphate fire retardant into Rezende’s heat insulating and fire-resistant hybrid compound composition for the benefits it would impart to both heat insulation and fire protection. It is well known in the art that it is not inventive to merely follow the direct disclosure of a prior-art reference.
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, 3, 5-6, 8-9 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 20 of copending Application No. 18/158,707 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the components within the claimed compositions are identical, but there are some minor differences in the claimed concentration ranges, yet said claimed concentration ranges massively overlap with each other. As way of illustration only, in the present application 8/158,682, the resin concentration range is 10 to 40% by mass, whereas in the copending application 18/158,707, the resin concentration is 15 to 50% by mass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 13 of copending Application No. 18/158,812 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the components within the claimed compositions are practically identical (note: pending application’s requirement for an inert pigment is fully met by the copending application’s required amorphous silica and micro silica, because these components can function as white opaque pigments). Furthermore there are only some minor differences in the claimed concentration ranges, yet said claimed concentration ranges massively overlap with each other. As way of illustration only, in the present application 18/158,682, the resin concentration range is 10 to 40% by mass, whereas in the copending application 18/158,812, the resin concentration is 5 to 60% by mass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5-6, 8 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 20 of copending Application No. 18/158,737 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the components within the claimed compositions are practically identical (note: pending application’s requirement for an inert pigment is fully met by the copending application’s required amorphous silica and micro silica, because these components can function as white opaque pigments). Furthermore there are only some minor differences in the claimed concentration ranges, yet said claimed concentration ranges overlap with each other. As way of illustration only, in the present application 18/158,682, the resin concentration range is 10 to 40% by mass, whereas in the copending application 18/158,664, the resin concentration is 40 to 70% by mass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 5-6 and 11-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 20 of copending Application No. 18/158,664 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the components within the claimed compositions are practically identical (note: pending application’s requirement for an inert pigment is fully met by the copending application’s required amorphous silica and micro silica, because these components can function as white opaque pigments). Furthermore there are only some minor differences in the claimed concentration ranges, yet said claimed concentration ranges overlap with each other. As way of illustration only, in the present application 18/158,682, the resin concentration range is 10 to 40% by mass, whereas in the copending application 18/158,664, the resin concentration is 40 to 70% by mass.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/23/25 with the amendment have been fully considered but are not persuasive to put the application in condition for allowance for the reasons set forth above. Additional Examiner comments are set forth next.
Due the remaining massive indefinite issue with applicant’s independent claim 1 and the dependent claims, applicant’s traversal argument over the examiner applied Obvious Type Double Patenting Rejections remain in effect because the metes and bounds of the actual scope of applicant’s claims is very uncertain. As such, applicant’s comparison arguments between applicant’s pending claims (components and concentration ranges) and the references (components and concentration ranges) are deemed to be moot until the indefinite issues of applicant’s claims are successfully resolved.
Likewise, due to the remaining massive indefinite issue with applicant’s independent claim 1 and the dependent claims, applicant’s traversal argument over the examiner applied prior-art rejections remain because the metes and bounds of the actual scope of applicant’s claims is very uncertain.
In regards to applicant’s traversal arguments over the Office’s outstanding rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as the claims being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor holds to be the invention, remains but has been a little modified in light of applicant’s amendment filed 12/23/25.
One of Applicant’s most frequently traversal arguments is: “("Breadth is not indefiniteness.). "A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined." MPEP § 2173.04.”.
Examiner Response. While the examiner agrees with applicant’s position that breadth is not indefiniteness, such is a totally moot traversal argument because the examiner never stated nor implied anything about the breath of the individual components when considered by themselves. Rather the examiner has clearly argued and illustrated, that most of the individual components overlap each other in scope within the composition as a whole, thus rending the metes and bounds of the claimed composition itself very indefinite.
Another main argument Applicant makes is as followed: “A person having ordinary skill in the art would have understood what each of the elements micro silica, insulating compound, insulating particles, inert pigments, and amorphous silica mean on their face. Additionally, Applicant submits that, consistent with how the components of the composition of matter are described in the specification, each element of claim 1 is its own separate element. For example, the Action contends that micro silica can function as a white/opaque inert pigment. See Action at 7. Without agreeing with the Action, Applicant submits that a hypothetical reference disclosing a composition of matter comprising 2% micro silica cannot disclose both the recited elements of 2 to 15% micro silica and 1 to 10% inert pigments of claim 1. Withdrawal of this rejection is accordingly requested.”.[Emphasis added].
Examiner’s Response: The Examiner does NOT agree at all with applicant’s traversal arguments, made in said highlighted sections, because one component can clearly met the limitations of two or more categories of the listed components at the same time, as shown above by the examiner. As way of illustration only, applicant’s required “micro silica” components is known in the art to have an amorphous nature, has high heat insulation properties, and due to its white color can function as a white/opaque inert pigment, thus reading directly on claim 1’s other 3 required component namely: (insulative particles, inert pigment and amorphous silica). Likewise applicant’s required “amorphous silica” component, reads directly on applicant’s required “insulative particles”, but it also encompasses applicant’s required “micro silica” component and “inert pigment” component. Likewise, if the “inert pigment” component is selected to be calcium carbonate as disclosed in paragraph [0041] of applicant’s specification, it would read directly on applicant’s “insulative particles” component because calcium carbonate (e.g. limestone) is well known to have both thermal and sound insulation properties.
As such, the Examiner’s Response to applicant’s traversal argument: “Applicant submits that a hypothetical reference disclosing a composition of matter comprising 2% micro silica cannot disclose both the recited elements of 2 to 15% micro silica and 1 to 10% inert pigments of claim 1.” is that said argument is factually incorrect. Nowhere in independent claim 1 or the dependent claims, is there any specific limitation that all the individual components are mutually independent of the other individual components. Applicant, by claiming many of the components by their function and form, and not by their specific chemical nature, has caused much of the indefinite issues found within applicant’s claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOSEPH DAVID ANTHONY whose telephone number is (571)272-1117. The examiner can normally be reached M-F: 10:00AM-6:30PM.
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/JOSEPH D ANTHONY/Primary Examiner, Art Unit 1764