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 .
Response to Amendment
In response to the amendment received on 01/28/2026:
claims 1-20 are currently pending;
claims 11-20 are withdrawn;
the 112(b) rejection to claims 1-10 withdrawn in light of the amendments to the claims, and Applicant’s persuasive arguments that i) the plain language of amorphous silica encompasses silica that is amorphous, which could have different characteristics than microsilica (or silica fume) despite microsilica also being amorphous, and ii) the plain language of amorphous silica encompasses silica that is amorphous, which could have different characteristics than electro-fused silica despite electro-fused silica also being amorphous (see Applicant’s arguments at page 9 paragraph 3 to page 10 paragraph 2); however new 112(a) and 112(b) rejections are outlined below;
all prior art grounds of rejection are withdrawn in light of the amendments to the claims; however, new grounds of rejection are presented based on the same references as set forth herein; and
the nan-statutory double patenting rejections over US Application Nos. 18/158707, 18/158664, 18/158682, 18/158812 are withdrawn in light of the approved terminal disclaimers submitted on 01/28/2026.
Terminal Disclaimer
The terminal disclaimer filed on 01/28/206 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/158,737 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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 or joint inventor of carrying out the invention.
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.
Claims 1-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendment in claim 1 line 9, specifically “discrete solid” is not supported by the specification and drawings or described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention at the time the application was filed because the specification does not indicate the insulation compound to be “discrete”.
Applicant points to specification at [0058], which discloses that “in some aspects, the insulating compound may be applied directly onto the surface of a suitable object… the insulating compound may be crushed and used as an insulating filler in other materials… the insulating compound may be isolated or dispersed… the insulating compound may be included in each of the compositions of matter”, which does not explicitly disclose that the claimed “insulation compound” to be “discrete”.
Examiner will treat the recitation as “written”, but suggests amending the claim or respond where in the specification the recitation are supported.
Claims 2-10 is rejected due to its dependency on claim 1.
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 reciting “2 to 60% insulative particles… 15 to 50% amorphous silica” is indefinite because the metes and bounds of the limitations are not well defined, as evidenced by Noma (see Noma at Title and Abstract evidencing amorphous silica-coated graphite particles for thermally conductive and electrically insulating resins… amorphous silica-coated graphite… showed the best enhancement of the insulating coating). In this instance, if the interpretation of “insulative particles” as “particles that have insulative properties” (see Applicant’s arguments at page 9 paragraph 3), then the claimed “amorphous silica” is also an “insulative particle”. As such, the metes and bounds of the limitations are not well defined.
Examiner will treat the recitation as “2 to 60% insulative particles… 15 to 50% amorphous silica” or “17 to 110% insulative particles/amorphous silica”, as the broadest interpretation since breadth is not indefiniteness (see Applicant’s arguments at page 9 paragraph
3).
Examiner suggests clarifying the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the
patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claims 2-10 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 15% semiconductors (see Rezende at [0058] teaching… in mass levels… inorganic semiconductors 2 to 30%)... by weight) (see MPEP 2144.05(I));
10 to 50% water (see Rezende at [0058] teaching… in mass levels… water from 20 to 60%... by weight) (see MPEP 2144.05(I)); and
1 to 20% insulating compound (and wherein the insulating compound is a discrete solid and includes, by mass: 2 to 60% insulative particles, 5 to 40% micro silica, and 15 to 50% amorphous silica (see 112 rejections. This recitation is broadly interpreted as “insulating compound comprising 0.2 to 6% (or ((2 to 60%) x (1 to 10%)) insulative particles, 0.5 to 4% (or ((5 to 40%) x (1 to 10%)) micro silica, and 0.15 to 5% (or ((15 to 50%) x (1 x 10%)) amorphous silica”, see Rezende at [0058] teaching… in mass levels… insulating nanoparticles of 2 to 60%...
by weight (see MPEP 2144.05(I))… spheres of micro silica from 5 to 40%... by weight (A prima
facie case of obviousness exists where the claimed ranges or amounts do not overlap with the
prior art but are merely close enough that one skilled in the art would have expected them to
have the same properties (see MPEP § 2144.05). In this instance, there are no expected
differences in properties between hybrid compound as taught by Rezende and the claimed
composition of matter)… Rezende at [0058] teaching… amorphous silica in mass levels of 5 to
50%... by weight (see MPEP 2144.05(I)).
Rezende does not explicitly teach that the composition further comprises i) 5 to 40% carbonate. 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 10 to 50% carbonate (see MPEP 2144.05(I)).
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 seek those advantages by adding 10 to 35 percent by weight calcium carbonate filler 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 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.
Regarding claim 2, Rezende in view of Gasmena teach the limitations as applied to claim 1 above, and Rezende further teaches further comprising, by mass, greater than 0% and less than or equal to 10% microsilica (see Rezende at [0058] teaching… in mass levels… spheres of micro silica from 5 to 40%... by weight) (see MPEP 2144.05(I)).
Regarding claim 3, Rezende in view of Gasmena teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass of the insulating compound, 5 to 50% electro-fused silica (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.5 to 5% (or ((5 to 50%) x (1 to 10%)) electro-fused silica, see Rezende at [0058] teaching fused silica from 5to 50%... by weight (see MPEP 2144.05(I)).
Regarding claim 5, Rezende in view of Gasmena teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass of the insulating compound, 5 to 40% fibers (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.5 to 4% (or ((5 to 40%) x (1 to 10%)) fibers, see Rezende at [0058] teaching inorganic fibers 5 to 40%... by weight (A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close enough that one skilled in the art would have expected them to have the same properties (see MPEP § 2144.05). In this instance, there are no expected differences in properties between hybrid compound as taught by Rezende in view of Gasmena and the claimed composition of matter).
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 of the insulating compound, 1 to 5% bentonite (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.1 to 0.5% (or ((1 to 5%) x (1 to 10%)) bentonite, see Rezende at [0058] bentonite 1 to 5%... by weight) (A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close enough that one skilled in the art would have expected them to have the same properties (see MPEP § 2144.05). In this instance, there are no expected differences in properties between hybrid compound as taught by Rezende in view of Gasmena and the claimed composition of matter).
Regarding claim 7, Rezende in view of Gasmena teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass of the insulating compound, 5 to 50% semiconductors (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.5 to 5% (or ((5 to 50%) x (1 to 10%)) semiconductors, see Rezende at [0058] teaching inorganic semiconductors 2 to 30%... by weight) (see MPEP 2144.05(I)).
Regarding claim 8, Rezende in view of Gasmena teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulating compound further includes, by mass of the insulating compound, 1 to 10% inert pigments (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.1 to 1% (or ((1 to 10%) x (1 to 10%)) inert pigments, see Rezende at [0058] teaching inert pigments from 1 to 10%... by weight) (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 of the insulating compound, 5 to 35% carbides (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.5 to 3.5% (or ((5 to 35%) x (1 to 10%)) carbides, see Rezende at [0058] teaching carbides from 5 to 35%... by weight) (A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close enough that one skilled in the art would have expected them to have the same properties (see MPEP § 2144.05). In this instance, there are no expected differences in properties between hybrid compound as taught by Rezende in view of Gasmena and the claimed composition of matter).
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 of the insulating compound, 5 to 60% resin (claim 1 recites “1 to 10% insulating compound”. This recitation is broadly interpreted as “insulating compound further comprising 0.5 to 6% (or ((5 to 60%) x (1 to 10%)) resin, see Rezende at [0058] teaching polymeric resin from 5 to 60%... by weight) (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 teach 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… preferably 5% to 80% 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). 5% to 80% by weight of aluminum silicate hydrate and/or calcium silicate hydrate fillers is taken to meet the claimed “2 to 4% (or ((20 to 40%) x (1 to 10%)) hydrated silicate”. (A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close enough that one skilled in the art would have expected them to have the same properties (see MPEP § 2144.05). In this instance, there are no expected differences in properties between hybrid compound as taught by Rezende in view of Gasmena and Herold and the claimed composition of matter).
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.
Response to Arguments
Applicant’s amendments that narrows the claim limitations have obviated the previous rejection. However, upon further consideration, a new ground of rejection is set forth using the same reference Rezende. Thus, relevant arguments are addressed below.
Applicant discusses that Rezende does not teach the claimed “insulating compound” because the “insulator” at [0074] is the same hybrid insulating compound… Gasmena fails to remedy the deficiencies of Rezende (see Applicant’s arguments at page 11 paragraphs 2-4).
Examiner acknowledges the arguments and respectfully notes that due to the claim amendments, Rezende at [0058] is now used to meet the claimed “insulating compound” (see claim 1 rejection. As such, claim 1 rejection is maintained.
With respect to claim 4, Herold fails to remedy the deficiencies of Rezende (see Applicant’s arguments at page 12 paragraph 1).
Examiner acknowledges the arguments and respectfully notes that there is a new rejection to independent claim 1 as outlined above. As such, the rejection to dependent claim 4 is also maintained.
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 MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731
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