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
Applicant’s election without traverse of Group I, Claims 1-10 in the reply filed on 10/17/2025 is acknowledged.
Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/17/2025.
Claim Rejections - 35 USC § 112
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 1-10 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.
Claim 1 line 2 recites “insulative particles”, which is indefinite because it is not clear what is meant by insulative. In addition, specification does not provide information i) on what the particle is insulative with is (e.g., heat, light, fire/combustion, etc.) and ii) which specific chemical species fall within “insulative particles”.
Specification at [0037] discloses “as used herein, insulative particles are defined as inorganic, thermally treated reagent particles that demonstrate insulative properties… in various embodiments, the insulative particles can react chemically with micro silica and amorphous silica to form a new phase denominated insulative compound… in some embodiments, the insulative particles can react chemically with hydrated silicate to form a new phase denominated insulative compound… in at least some aspects, the insulative particles may be nanoparticles… including insulative nanoparticles in the insulating compound may provide the insulating compound with a porosity ranging from nano to mesopore when cured… this pore size distribution enables the insulating compound to reflect a range of wavelengths of radiation, such as ultraviolet to infrared length radiation… the wide range of reflectivity lowers the temperature of the composition of matter including the insulating compound under extreme heat conditions… the nanoparticles have a high surface area with a low thermal conductivity, and forms stable dispersions in aqueous solutions… the nanoparticles may be highly reactive based on the large surface area per mass of the nanoparticles… in various examples, the nanoparticles have a diameter within a range of 10 nm to 1000 nm, or in some instances within a range of 10 nm to 12 nm… the nanoparticles may be inorganic material that have high heat resistance, good mechanical resistance, and low electrical and thermal conductivity”; which attempts to define “insulative particles” by their function and reactivity in relation to other chemical components. Additionally, the specification does not include the metes and bounds of “high heat resistance, good mechanical resistance, and low electrical and thermal conductivity”.
Examiner will give claimed “insulative particles” its broadest reasonable interpretation in view of the specification; however, the examiner will not read limitations into the claims from the specification (see MPEP 2111 and MPEP 2173).
Examiner suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 1 lines 11-12 recites “micro silica… amorphous silica”, which is indefinite because micro silica is an amorphous silica, as evidenced by Gharpedia (see Gharpedia at page 2 paragraph 1 evidencing micro silica is an amorphous polymorph of silica). Specification does not include the metes and bounds of “micro silica… amorphous silica”. As such, the metes and bounds of the claimed “micro silica… amorphous silica” are not clearly defined.
Examiner will treat the recitation as written, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 3 line 2 recites “electro-fused silica”, which is indefinite because electro-fused silica is an amorphous silica, as evidenced by HPF (see HPF at page 1 paragraph 1 evidencing fused silica is the amorphous modification of high purity silica… it is synthesized using an electric arc). Specification does not include the metes and bounds of “amorphous silica” in claim 1 and “electro-fused silica” in claim 3. As such, the metes and bounds of the claimed “amorphous silica” in claim 1 and “electro-fused silica” in claim 3 are not clearly defined.
Examiner will treat the recitation as written, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 7 line 2 recite “further includes, by mass, 5 to 50% semiconductors”, which is indefinite because it is not clear if the “semiconductors” in claim 7 is the same or different from the “semiconductors” in claim 1 line 4.
Examiner will treat the recitation as “different”, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 8 line 2 recite “further includes, by mass, 1 to 10% inert pigments”, which is indefinite because it is not clear if the “inert pigments” in claim 8 is the same or different from the “inert pigments” in claim 1 line 3.
Examiner will treat the recitation as “different”, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 10 line 2 recite “further includes, by mass, 5 to 60% resin”, which is indefinite because it is not clear if the “resin” in claim 10 is the same or different from the “resin” in claim 1 line 2.
Examiner will treat the recitation as “different”, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claims 2, 4-6 and 9 are rejected due to their dependency on claim 1.
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 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.
Claims 1-3 and 5-10 are rejected under 35 U.S.C. 103 as being unpatentable over Rezende (US 2022/0010915 A1) (“Rezende” hereinafter) in view of Gasmena (US 5,703,178) (“Gasmena” hereinafter).
Regarding claim 1, Rezende teaches a composition of matter (see Rezende at [0058] teaching the hybrid compound has different compositions according to the application and temperature of use, and in one example is composed of a mixture). The hybrid compound is taken to meet the claimed composition of matter based on the structure as outlined below, comprising, by mass:
15 to 50% resin (see Rezende at [0058] teaching… in mass levels… polymeric resin from 5 to 60%... by weight) (see MPEP 2144.05(I));
5 to 30% inert pigments (see Rezende at [0058] teaching… in mass levels… inert pigment from 1 to 10%)... by weight) (see MPEP 2144.05(I));
2 to 20% semiconductors (see Rezende at [0058] teaching… in mass levels… inorganic semiconductors 2 to 30%)... by weight) (see MPEP 2144.05(I));
10 to 40% water (see Rezende at [0058] teaching… in mass levels… water from 20 to 60%... by weight) (see MPEP 2144.05(I)); and
1 to 10% insulating compound (see Rezende at [0074] teaching production and use of an insulator… for the formulation of a hybrid compound with insulation characteristics and high thermal performance, see Rezende at [0076] teaching the use of this insulator in a formulation involving polymeric materials, be it 100% solid or diluted and/or in aqueous dispersions for use in the fire and insulation systems, see Rezende at [0064] teaching the prepared material can be used directly on the substrate or incorporated into a media vehicle, as in the example below the vehicle is a polymer… the Nano Shield will be incorporated into the polymer in the content of 2 to 80% by mass) (see MPEP 2144.05(I)). Additionally, MPEP states that "[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", and “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” (see MPEP § 2144.05.II.A). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to have selected 2 to 80% by mass of an insulator (or insulating compound) from within the range taught by Rezende because there is a reasonable expectation of success that the disclosed amount would be suitable when diluted and/or in aqueous dispersions for use in the fire and insulation systems,
wherein the insulating compound includes, by mass: 2 to 60% insulative particles, 5 to 40% micro silica, and 15 to 50% amorphous silica (see 112 rejection above, see Rezende at [0074] teaching insulator composed of a mixture of a dispersion of amorphous silica in mass levels of 5 to 50% (see MPEP 2144.05(I))… insulating nanoparticles of 2 to 60% (see MPEP 2144.05(I))… spheres of micro silica from 5 to 40% (see MPEP 2144.05(I)).
Rezende does not explicitly teach that the composition further comprises i) 10 to 50% carbonate, and ii) 5 to 20% alumina. However, as mentioned, Rezende teaches that the hybrid compound has different compositions according to the application and temperature of use (see Rezende at [0058]). Rezende further teaches a hybrid compound for insulating a substrate is formed… the compound is then applied to the substrate and then dried to form an insulating layer (see Rezende at [0024]). Rezende also teaches… in mass levels… additives 3 to 20% (see Rezende at [0058]).
Like Rezende, Gasmena teaches an insulative coating composition (see Gasmena at C2 L44-50 teaching a heat ablative coating composition that is prepared by combining… an epoxy resin… water, at least one filler… optional pigments and thixotropic agents). Gasmena further teaches with respect to fillers, suitable fillers… include… calcium carbonate (see Gasmena at C8 L53-57)… fillers are useful for producing structural support for the film to facilitate high film build (see Gasmena at C8 L63-64)… a preferred heat ablative coating composition comprises in the range of from 10 to 35 percent by weight fillers (see Gasmena at C9 L15-16). 10 to 35 percent by weight calcium carbonate filler is taken to meet the claimed i) 10 to 50% carbonate (see MPEP 2144.05(I)).
Additionally, Gasmena teaches pigments such as… aluminum oxide… may also be used (see Gasmena at C9 L27-28)… a preferred heat ablative coating composition may comprise up to about 15 percent by weight pigment(s) (see Gasmena at C9 L36-38). Up to about 15 percent by weight aluminum oxide pigment is taken to meet the claimed ii) 5 to 20% alumina (see MPEP 2144.05(I)).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum oxide is suitable for an insulative coating composition.
As such, one of ordinary skill in the art would appreciate that Gasmena teaches that 10 to 35 percent by weight calcium carbonate filler are useful for producing structural support for the coating to facilitate high film/coating build, and up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use, and seek those advantages by adding 10 to 35 percent by weight calcium carbonate filler and up to about 15 percent by weight aluminum oxide pigment in the hybrid compound as taught by Rezende.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 10 to 35 percent by weight calcium carbonate filler and up to about 15 percent by weight aluminum oxide pigment as taught by Gasmena in the hybrid compound as taught by Rezende because the hybrid compound has different compositions according to the application and temperature of use, 10 to 35 percent by weight calcium carbonate filler are useful for producing structural support for the coating to facilitate high film/coating build, and up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use.
Regarding claim 2, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, but Rezende does not explicitly teach further comprising, by mass, greater than 0% and less than or equal to 2% defoamer.
However, Gasmena teaches coating compositions… can also include additives such as… defoamers… may comprise up to about two percent by weight additives (see Gasmena at C9 L41-47), which is taken to meet the claimed limitations (see MPEP 2144.05(I)).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that defoamer is suitable for an insulative coating composition.
As such, one of ordinary skill in the art would appreciate that Gasmena teaches up to two percent by weight defoamer suitable for its intended use, and seek those advantages by adding up to two percent by weight defoamer in the hybrid compound as taught by Rezende.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add up to two percent by weight defoamer as taught by Gasmena in the hybrid compound as taught by Rezende because it is suitable for its intended use.
Regarding claim 3, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 5 to 50% electro-fused silica (see 112 rejection, see Rezende at [0074] teaching… in mass levels… fused silica from 5 to 50% (see MPEP 2144.05(I)), see Rezende at [0062] teaching electro fused silica).
Regarding claim 5, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 5 to 40% fibers (see Rezende at [0074] teaching… in mass levels… inorganic fibers 5 to 40% (see MPEP 2144.05(I)).
Regarding claim 6, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 1 to 5% bentonite (see Rezende at [0074] teaching… in mass levels… bentonite 1 to 5%) (see MPEP 2144.05(I)).
Regarding claim 7, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 5 to 50% semiconductors (see 112 rejection, see Rezende at [0074] teaching… in mass levels… inorganic semiconductors 2 to 30%) (see MPEP 2144.05(I)).
Regarding claim 8, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 1 to 10% inert pigments (see 112 rejection, see Rezende at [0074] teaching… in mass levels… inert pigments from 1 to 10%) (see MPEP 2144.05(I)).
Regarding claim 9, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 5 to 35% carbide (see Rezende at [0074] teaching… in mass levels… carbides from 5 to 60%) (see MPEP 2144.05(I)).
Regarding claim 10, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass, 5 to 60% resin (see 112 rejection, see Rezende at [0074] teaching… in mass levels… polymeric resin from 5 to 60%) (see MPEP 2144.05(I)).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Rezende in view of Gasmena as applied to claim 1 above, and further in view of Herold et al. (US 2012/0077906 A1) (“Herold” hereinafter).
Regarding claim 4, Rezende in view of Gasmena teaches the limitations as applied to claim 1 above, but Rezende in view of Gasmena do not explicitly teach wherein the insulating compound further includes, by mass, 20 to 40% hydrated silicate. However, Rezende teaches that the insulator composed of a mixture of… additives 3 to 20% (see Rezende at [0074]).
Like Rezende and Gasmena, Herold teaches coating compositions (see Herold at [0007] teaching coating compositions based on mineral binders, fillers, polymers, and if desired, additives are well established and are used in the construction segment for a multiplicity of other applications, see Herold at [0033] teaching preferred is the use of lightweight fillers… typical lightweight fillers… are substances such as… aluminum silicate hydrate… calcium silicate hydrate, see Herold at [0024] it is also possible to use any desired mixtures of the stated fillers, see Herold at [0037] teaching typical formulas for the coating compositions comprise… most preferably 20% to 40% by weight of fillers; where the amounts in % are based on the dry weight of the coating compositions and add up in total to 100% by weight). 20% to 40% by weight of aluminum silicate hydrate and/or calcium silicate hydrate fillers is taken to meet the claimed “wherein the insulating compound further includes, by mass, 20 to 40% hydrated silicate”.
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum silicate hydrate and/or calcium silicate hydrate fillers are suitable fillers for coating compositions.
Furthermore, MPEP states that "[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", and “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” (see MPEP § 2144.05.II.A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 20% to 40% by weight of aluminum silicate hydrate and/or calcium silicate hydrate fillers as taught by Herold in the insulator for the formulation of a hybrid compound as taught by Rezende in view of Gasmena because it is suitable for its intended use, and there is a reasonable expectation of success that the disclosed amount would be suitable.
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 and 3-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-10 and 19 of copending Application No. 18/158737 in view of Gasmena.
The copending application claims the materials of the instant application in ranges which meet and/or overlap. However, the copending application does not claim that the composition of matter comprises 5-20% alumina.
Gasmena teaches pigments such as… aluminum oxide… may also be used (see Gasmena at C9 L27-28)… a preferred heat ablative coating composition may comprise up to about 15 percent by weight pigment(s) (see Gasmena at C9 L36-38). Up to about 15 percent by weight aluminum oxide is taken to meet the claimed ii) 5 to 20% alumina (see MPEP 2144.05(I)). Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum oxide is suitable for an insulative coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add up to about 15 percent by weight aluminum oxide pigment as taught by Gasmena in the composition of matter as claimed by the instant application because up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use.
This is a provisional nonstatutory double patenting rejection.
Claims 1-6 and 8-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-13 and 19 of copending Application No. 18/158664 in view of Gasmena.
The copending application claims the materials of the instant application in ranges which meet and/or overlap. However, the copending application does not claim that the composition of matter comprises 10 to 50% carbonate and 5 to 20% alumina.
Gasmena teaches an insulative coating composition (see Gasmena at C2 L44-50 teaching a heat ablative coating composition that is prepared by combining… an epoxy resin… water, at least one filler… optional pigments and thixotropic agents). Gasmena further teaches with respect to fillers, suitable fillers… include… calcium carbonate (see Gasmena at C8 L53-57)… fillers are useful for producing structural support for the film to facilitate high film build (see Gasmena at C8 L63-64)… a preferred heat ablative coating composition comprises in the range of from 10 to 35 percent by weight fillers (see Gasmena at C9 L15-16). 10 to 35 percent by weight calcium carbonate filler is taken to meet the claimed i) 10 to 50% carbonate (see MPEP 2144.05(I)).
Additionally, Gasmena teaches pigments such as… aluminum oxide… may also be used (see Gasmena at C9 L27-28)… a preferred heat ablative coating composition may comprise up to about 15 percent by weight pigment(s) (see Gasmena at C9 L36-38). Up to about 15 percent by weight aluminum oxide is taken to meet the claimed ii) 5 to 20% alumina (see MPEP 2144.05(I)).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum oxide is suitable for an insulative coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 10 to 35 percent by weight calcium carbonate filler and up to about 15 percent by weight aluminum oxide pigment as taught by Gasmena in the composition of matter as claimed by the instant application because 10 to 35 percent by weight calcium carbonate filler are useful for producing structural support for the coating to facilitate high film/coating build, and up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-11 and 19 of copending Application No. 18/158682 in view of Rezende and Gasmena.
The copending application claims the materials of the instant application in ranges which meet and/or overlap. However, the copending application does not claim that the composition of matter comprises i) 2 to 20% semiconductors, ii) 10 to 50% carbonate.
With respect to i), Rezende teaches the hybrid compound has different compositions according to the application and temperature of use, and in one example is composed of a mixture… in mass levels… inorganic semiconductors 2 to 30%... by weight) (see Rezende at [0058]) (see MPEP 2144.05(I)). Rezende also teaches it is possible to achieve a reduction in the surface temperature of the insulator using a specific compound, for example; titanium oxide, which is a semiconductor, which reflects more light, improving the reflectivity of the surface (see Rezende at [0047]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add inorganic semiconductors 2 to 30% by weight as taught by Rezende in the composition of matter as claimed by the instant application because it is possible to achieve a reduction in the surface temperature of the insulator using a specific compound, for example; titanium oxide, which is a semiconductor, which reflects more light, improving the reflectivity of the surface.
With respect to ii), Gasmena teaches an insulative coating composition (see Gasmena at C2 L44-50 teaching a heat ablative coating composition that is prepared by combining… an epoxy resin… water, at least one filler… optional pigments and thixotropic agents). Gasmena further teaches with respect to fillers, suitable fillers… include… calcium carbonate (see Gasmena at C8 L53-57)… fillers are useful for producing structural support for the film to facilitate high film build (see Gasmena at C8 L63-64)… a preferred heat ablative coating composition comprises in the range of from 10 to 35 percent by weight fillers (see Gasmena at C9 L15-16). 10 to 35 percent by weight calcium carbonate filler is taken to meet the claimed i) 10 to 50% carbonate (see MPEP 2144.05(I)).
Additionally, Gasmena teaches pigments such as… aluminum oxide… may also be used (see Gasmena at C9 L27-28)… a preferred heat ablative coating composition may comprise up to about 15 percent by weight pigment(s) (see Gasmena at C9 L36-38). Up to about 15 percent by weight aluminum oxide is taken to meet the claimed ii) 5 to 20% alumina (see MPEP 2144.05(I)).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum oxide is suitable for an insulative coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 10 to 35 percent by weight calcium carbonate filler and up to about 15 percent by weight aluminum oxide pigment as taught by Gasmena in the composition of matter as claimed by the instant application because 10 to 35 percent by weight calcium carbonate filler are useful for producing structural support for the coating to facilitate high film/coating build, and up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use.
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 3-10 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-13 and 19 of copending Application No. 18/158812 in view of Rezende and Gasmena.
The copending application claims the materials of the instant application in ranges which meet and/or overlap. However, the copending application does not claim that the composition of matter comprises i) 15 to 50% resin; ii) 5 to 30% inert pigments; iii) 2 to 20% semiconductors; iv) 10 to 50% carbonate; and v) 5 to 20% alumina.
With respect to i)-iii), Rezende teaches the hybrid compound has different compositions according to the application and temperature of use, and in one example is composed of a mixture… in mass levels… inert pigment from 1 to 10%... inorganic semiconductors 2 to 30%... polymeric resin from 5 to 60%... by weight) (see Rezende at [0058]) (see MPEP 2144.05(I)). Rezende also teaches it is possible to achieve a reduction in the surface temperature of the insulator using a specific compound, for example; titanium oxide, which is a semiconductor, which reflects more light, improving the reflectivity of the surface (see Rezende at [0047]). Rezende further teaches polymeric resins are used as an agent of plasticity, tackiness and binder (see Rezende at [0062]).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that inert pigments is suitable for an insulative coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add inert pigment from 1 to 10%, inorganic semiconductors 2 to 30%, and polymeric resin from 5 to 60% as taught by Rezende in the composition of matter as claimed by the instant application because i) inert pigments is suitable for its intended use, ii) it is possible to achieve a reduction in the surface temperature of the insulator using a specific compound, for example; titanium oxide, which is a semiconductor, which reflects more light, improving the reflectivity of the surface, and iii) polymeric resins are used as an agent of plasticity, tackiness and binder.
With respect to iv)-v), Gasmena teaches an insulative coating composition (see Gasmena at C2 L44-50 teaching a heat ablative coating composition that is prepared by combining… an epoxy resin… water, at least one filler… optional pigments and thixotropic agents). Gasmena further teaches with respect to fillers, suitable fillers… include… calcium carbonate (see Gasmena at C8 L53-57)… fillers are useful for producing structural support for the film to facilitate high film build (see Gasmena at C8 L63-64)… a preferred heat ablative coating composition comprises in the range of from 10 to 35 percent by weight fillers (see Gasmena at C9 L15-16). 10 to 35 percent by weight calcium carbonate filler is taken to meet the claimed i) 10 to 50% carbonate (see MPEP 2144.05(I)).
Additionally, Gasmena teaches pigments such as… aluminum oxide… may also be used (see Gasmena at C9 L27-28)… a preferred heat ablative coating composition may comprise up to about 15 percent by weight pigment(s) (see Gasmena at C9 L36-38). Up to about 15 percent by weight aluminum oxide is taken to meet the claimed ii) 5 to 20% alumina (see MPEP 2144.05(I)).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that aluminum oxide is suitable for an insulative coating composition.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 10 to 35 percent by weight calcium carbonate filler and up to about 15 percent by weight aluminum oxide pigment as taught by Gasmena in the composition of matter as claimed by the instant application because 10 to 35 percent by weight calcium carbonate filler are useful for producing structural support for the coating to facilitate high film/coating build, and up to about 15 percent by weight aluminum oxide pigment is suitable for its intended use.
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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