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 1-14 and 19-20 in the reply filed on 11/17/2025 is acknowledged.
Claims 15-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
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 1-14 and 19-20 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, and claim 19 line 2 recite “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”. As such, the metes and bounds of “insulative particles” is not clear.
Specification at [0037] disclosing “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”; is an attempt 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 the limitations into the claims from the specification (see MPEP 2111 and MPEP 2173).
Examiner suggests to clarify 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) so as to remove the ambiguity as set forth above.
Claim 1 lines 3 and 9-10 recites “micro silica… amorphous silica”, which is indefinite because micro silica is an amorphous silica, as evidenced by Gharpedia (Micro Silica, submitted in the IDS) (“Gharpedia” hereinafter) (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 5 line 2, and claim 6 line 2 recite “electro-fused silica”, which is indefinite because electro-fused silica is an amorphous silica, as evidenced by HPF (Fused silica, submitted in the IDS) (“HPF” hereinafter) (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” and “electro-fused silica” in claims 1 and 5-6. As such, the metes and bounds of the claimed “amorphous silica” in claim 1 and “electro-fused silica” in claims 5-6 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 5 line 3 reciting “fibers”, and claim 8 reciting “wherein the insulating compound includes, by mass, 5 to 40% fibers” are indefinite because it is not clear if the “fibers” in claims 5 and 8 is the same or different from the “fibers” in claim 1 line 4.
Examiner will treat the recitation as the “same”, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claim 5 line 4 reciting “water”, and claim 14 reciting “wherein the insulating compound includes, by mass, 20 to 60% water” are indefinite because it is not clear if the “water” in claims 5 and 14 is the same or different from the “water” in claim 1 line 6.
Examiner will treat the recitation as the “same”, but suggests to clarify the claimed limitation so as to remove the ambiguity as set forth above.
Claims 2-4, 6-7, 9-13 and 20 are rejected due to its dependency on claims 1 and 19, respectively.
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 and 3-14 are rejected under 35 U.S.C. 103 as being unpatentable over Rezende (US 2022/0010915 A1) (“Rezende” hereinafter) in view of Lu et al. (EP 4 026 876 A1) (“Lu” 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 37% insulative particles (see Rezende at [0058] teaching insulating nanoparticles of 2 to 60%) (see MPEP 2144.05(I));
25 to 50% amorphous silica (see Rezende at [0058] teaching amorphous silica in mass levels of 5 to 50%) (see MPEP 2144.05(I));
5 to 20% fibers (see Rezende at [0058] teaching inorganic fibers 5 to 40%) (see MPEP 2144.05(I));
water (see Rezende at [0058] teaching water);
5 to 20% 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; and
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 teaches water from 20 to 60% by weight (see Rezende at [0058]). Rezende also teaches an objective of the present disclosure is to provide a hybrid insulating compound that protects a substrate from extreme temperatures (see Rezende at [0021]). Rezende further teaches when applied on an appropriate substrate, the compound forms an insulating material having a solid structure, due to water evaporation (see Rezende at [0032]). However, Rezende does not explicitly teach that the water is 5 to 17% by mass.
Like Rezende, Lu teaches a composition for high temperatures comprising fiber and silica (see Lu at [0007] teaching the present disclosure provides a high-temperature nano-composite coating, comprising the following components in mass ratio… inorganic fiber… reinforcing filler… nanopowder… water, see Lu at [0008] and [0010] teaching the nanopowder is selected from one of… nano silica… the reinforcing filler is selected from one of… acicular microsilica). Lu further teaches water accounting for 10%~50% of a total mass of all the above components (see Lu at [0007]).
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 the amount of 10%-50% by mass of water from within the range as taught by Lu in the composition as taught by Rezende because there is a reasonable expectation of success that the disclosed amount would be suitable.
Regarding claim 3, Rezende in view of Lu teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the insulative particles are nanoparticles (see Rezende at [0058] teaching insulating nanoparticles).
Regarding claim 4, Rezende in view of Lu teach the limitations as applied to claim 1 above, and Rezende teaches further comprising, by mass, greater than 0% and less than or equal to 3% bentonite (see Rezende at [0058] teaching bentonite 1 to 5%) (see MPEP 2144.05(I)).
Regarding claim 5, Rezende in view of Lu teach the limitations as applied to claim 1 above, and Rezende teaches wherein the insulating compound further includes one… in the group consisting of… additives (see Rezende at [0058] teaching additives).
Regarding claims 6-14, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 50% electro-fused silica (claim 6), wherein the insulating compound includes, by mass, 20 to 40% hydrated silicate (claim 7), wherein the insulating compound includes, by mass, 5 to 40% fibers (claim 8), wherein the insulating compound includes, by mass, 1 to 5% bentonite (claim 9), wherein the insulating compound includes, by mass, 5 to 50% semiconductors (claim 10), wherein the insulating compound includes, by mass, 1 to 10% inert pigments (claim 11), wherein the insulating compound includes, by mass, 5 to 35% carbides (claim 12), wherein the insulating compound includes, by mass, 5 to 60% resin (claim 13), and wherein the insulating compound includes, by mass, 20 to 60% water (claim 14) (see claim 5 rejection, wherein the claimed recitations in claims 6-14 are met by additives (see MPEP 2111.04.II)).
Alternative rejections for claims 6 and 8-14 are outlined below.
Regarding claim 6, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 50% electro-fused silica (see Rezende at [0058] teaching fused silica from 5 to 50%, see Rezende at [0062] teaching electro fused silica).
Regarding claim 8, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 40% fibers (see Rezende at [0058] teaching inorganic fibers 5 to 40%) (see MPEP 2144.05(I)).
Regarding claim 9, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 1 to 5% bentonite (see Rezende at [0058] teaching bentonite 1 to 5%) (see MPEP 2144.05(I)).
Regarding claim 10, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 50% semiconductors (see Rezende at inorganic semiconductors 2 to 30%) (see MPEP 2144.05(I)).
Regarding claim 11, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 1 to 10% inert pigments (see Rezende at [0058] teaching inert pigment from 1 to 10%) (see MPEP 2144.05(I)).
Regarding claim 12, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 35% carbides (see Rezende [0058] teaching carbides from 5 to 35%) (see MPEP 2144.05(I)).
Regarding claim 13, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 5 to 60% resin (see Rezende at [0058] teaching polymeric resin from 5 to 60%) (see MPEP 2144.05(I)).
Regarding claim 14, Rezende in view of Lu teach the limitations as applied to claims 1 and 5 above, and Rezende teaches wherein the insulating compound includes, by mass, 20 to 60% water (see Lu at [0007] teaching water accounting for 10%~50% of a total mass of all the above components) (see MPEP 2144.05(I)).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Rezende in view of Lu as applied to claim 1 above, and further in view of Zhou (CN 108358588 A, with reference to the machine translation) (“Zhou” hereinafter).
Regarding claim 2, Rezende in view of Lu teach the limitations as applied to claim 1 above, but Rezende in view of Lu does not explicitly teach wherein the fibers include glass.
Like Rezende, Zhou teaches a composition for insulation comprising fiber (see Zhou at [0028] teaching the thermal insulation material with low thermal conductivity… glass fiber is also added to the raw materials to improve the stability and crack resistance of the product).
As such, one of ordinary skill in the art would appreciate that glass fiber is added so as to improve the stability and crack resistance of the product, and seek those advantages by adding glass fiber in the composition 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 glass fiber as taught by Zhou in the composition as taught by Rezende so as to improve the stability and crack resistance of the product.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Rezende in view of Lu as applied to claims 1 and 5 above, and further in view of Herold et al. (US 2012/0077906 A1) (“Herold” hereinafter).
Regarding claim 7, Rezende in view of Lu teaches the limitations as applied to claims 1 and 7 above, but Rezende in view of Lu 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, 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 Lu because it is suitable for its intended use, and there is a reasonable expectation of success that the disclosed amount would be suitable.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rezende in view of Lu and Gasmena.
Regarding claim 19, 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 37% insulative particles (see Rezende at [0058] teaching insulating nanoparticles of 2 to 60%) (see MPEP 2144.05(I));
25 to 50% amorphous silica (see Rezende at [0058] teaching amorphous silica in mass levels of 5 to 50%) (see MPEP 2144.05(I));
5 to 20% fibers (see Rezende at [0058] teaching inorganic fibers 5 to 40%) (see MPEP 2144.05(I));
water (see Rezende at [0058] teaching water);
5 to 20% 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; and
wherein the insulating compound includes, by mass: 2 to 60% insulative particles (see 112 rejection above, see Rezende at [0074] teaching insulator composed of… insulating nanoparticles of 2 to 60% (see MPEP 2144.05(I))).
Rezende teaches water from 20 to 60% by weight (see Rezende at [0058]). Rezende also teaches an objective of the present disclosure is to provide a hybrid insulating compound that protects a substrate from extreme temperatures (see Rezende at [0021]). Rezende further teaches when applied on an appropriate substrate, the compound forms an insulating material having a solid structure, due to water evaporation (see Rezende at [0032]).
However, Rezende does not explicitly teach that i) the water is 5 to 17% by mass, and ii) 20 to 40% hydrated silicate.
With respect to i), like Rezende, Lu teaches a composition for high temperatures comprising fiber and silica (see Lu at [0007] teaching the present disclosure provides a high-temperature nano-composite coating, comprising the following components in mass ratio… inorganic fiber… reinforcing filler… nanopowder… water, see Lu at [0008] and [0010] teaching the nanopowder is selected from one of… nano silica… the reinforcing filler is selected from one of… acicular microsilica). Lu further teaches water accounting for 10%~50% of a total mass of all the above components (see Lu at [0007]).
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 the amount of 10%-50% by mass of water from within the range taught by Lu in the composition as taught by Rezende because there is a reasonable expectation of success that the disclosed amount would be suitable.
With respect to ii), like Rezende, 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 Lu because it is suitable for its intended use, and there is a reasonable expectation of success that the disclosed amount would be suitable.
Regarding claim 20, Rezende in view of Lu and Gasmena teaches the limitations as applied to claim 19 above, and Gasmena further teaches wherein the hydrated silicate is fibrous aluminum silicate as a result of the hydrated silicate being thermally treated with… aluminum (see Gasmena at [0033] teaching typical lightweight fillers… are substances such as… aluminum silicate hydrate… the form of the lightweight fillers is not limited and they may in particular have a… rod-shaped and/or lamellar structure). The aluminum silicate hydrate rod-shaped and lamellar structure is taken to meet the claimed hydrated silicate is fibrous aluminum silicate.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-8, and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-10 of copending Application No. 18/158737 (“737” hereinafter) in view of Rezende.
Both applications recite a composition comprising fibers, water, and insulating compound comprising insulative particles, micro silica, amorphous silica with overlapping ranges. The co-pending application ‘737 does not explicitly claim “15 to 37% insulative particles, and 25 to 50% amorphous silica”. Rezende teaches insulating nanoparticles of 2 to 60%... amorphous silica in mass levels of 5 to 50% (see Rezende at [0058]).
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4-8, and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-13 and 19-20 of copending Application No. 18/158664 (“’664” hereinafter) in view of Rezende.
Both applications recite a composition comprising fibers, water, and insulating compound comprising insulative particles, micro silica, amorphous silica with overlapping ranges. The co-pending application ‘664 does not explicitly claim “15 to 37% insulative particles, and 25 to 50% amorphous silica”. Rezende teaches insulating nanoparticles of 2 to 60%... amorphous silica in mass levels of 5 to 50% (see Rezende at [0058]).
This is a provisional nonstatutory double patenting rejection.
Claims 1, 4-8, and 10-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-11 of copending Application No. 18/158682 (“’682” hereinafter) in view of Rezende.
Both applications recite a composition comprising insulative particles, fibers, water, and insulating compound comprising insulative particles, micro silica, amorphous silica with overlapping ranges. The co-pending application ‘682 does not explicitly claim “25 to 50% amorphous silica, and 1 to 10% inert pigments”. Rezende teaches amorphous silica in mass levels of 5 to 50%... inert pigment from 1 to 10% (see Rezende at [0058]).
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 5-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-13 and 19-20 of copending Application No. 18/158707 (“’707” hereinafter) in view of Rezende.
Both applications recite a composition comprising water, and insulating compound comprising insulative particles, micro silica, amorphous silica with overlapping ranges. The co-pending application ‘707 does not explicitly claim “15 to 37% insulative particles, 25 to 50% amorphous silica, and 5 to 20% fibers”. Rezende teaches amorphous silica in mass levels of 5 to 50%... insulating nanoparticles of 2 to 60%... inorganic fibers 4 to 40% (see Rezende at [0058]).
This is a provisional nonstatutory double patenting rejection.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731