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 05/12/2026:
claims 1-20 are currently pending;
claims 15-18 are withdrawn;
the 112(b) rejection to the respective independent claims 1 and 19 with respect to “insulative particles” are withdrawn in light of the narrowing amendment “thermal insulative particles” to the claims;
the 112(b) rejection to the respective claims 1 and 5 with respect to “micro silica… amorphous silica”, “electro-fused silica”, “fibers”, and “water” are withdrawn in light of the persuasive Applicant’s argument that MPEP 2173… confirms that breadth is not indefiniteness… under the broadest reasonable interpretation consistent with the specification, the Office must give effect to the separate recitations, in the overall composition, of “thermally insulative particles”, “amorphous silica”, “fibers”, “insulating compound,” and “water”, where the “insulating compound” separately includes “thermally insulative particles”, “micro silica”, “amorphous silica”, and “electro-fused silica” (see Applicant’s arguments at page 7 paragraph 2 to page 8 paragraph 1);
all prior art grounds of rejection are withdrawn in light of the narrowing amendment to the claims 1 and 19; however, new grounds of rejection are presented based on the same references as set forth herein with respect to claim 1, and Rezende in view of Lucini with respect to claim 19; and
the provisional rejection on the grounds of nonstatutory double patenting over the respective copending Applications 18/158737, 18/158664, 18/158682 and 18/158707 are maintained for at least the reasons as set forth herein.
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 1-14 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% thermally insulative particles (see Rezende at [0021] teaching a hybrid insulating compound that protects a substrate from extreme temperatures, see Rezende at [0058] teaching insulating nanoparticles of 2 to 60%, see Rezende at [0076] teaching the use of this insulator… with excellent thermal insulation) (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; wherein the insulating compound includes, by mass: 2 to 60% thermally insulative particles, 5 to 40% micro silica, and 15 to 50% amorphous silica (this recitation is broadly interpreted as “insulating compound comprising 0.1 to 12% (or ((5 to 20%) x (2 to 60%)) thermally insulative particles, 0.25 to 8% (or ((5 to 20%) x (t to 40%)) micro silica, and 0.75 to 10% (or ((5 to 20%) x (15 to 50%)) amorphous silica. Furthermore, the total amount of thermally insulative particles is 15.1 to 49% (or (15 to 37%) + (0.1 to 12%)), the total amount of amorphous silica is 25.75 to 60% (or (25 to 50%) + (0.75 to 10%)), see Rezende at [0058] teaching 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 nano powder 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 2, Rezende in view of Lu teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the fibers include glass (see Rezende at [0061] teaching the inorganic fibers used are those of… glass).
Regarding claim 3, Rezende in view of Lu teach the limitations as applied to claim 1 above, and Rezende further teaches wherein the thermally insulative particles of the… composition of matter… are nanoparticles (see Rezende at [0058] teaching insulating nanoparticles, see Rezende at [0076] teaching the use of this insulator… with excellent thermal insulation).
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)).
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rezende in view of Lucini et al. (US 2007/0029699 A1) (“Lucini” hereinafter).
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% thermally insulative particles (see Rezende at [0021] teaching a hybrid insulating compound that protects a substrate from extreme temperatures, see Rezende at [0058] teaching insulating nanoparticles of 2 to 60%, see Rezende at [0076] teaching the use of this insulator… with excellent thermal insulation) (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));
15 to 17% water, 5 to 20% insulating compound; wherein the insulating compound includes, by mass… 2 to 60% thermally insulative particles… 5 to 17% water (this recitation is broadly interpreted as “insulating compound comprising 2 to 16% (or ((5 to 20%) x (40 to 80%)) thermally insulative particles, and 0.25 to 2.89% (or ((5 to 20%) x (5 to 17%)) water. Furthermore, the total amount of thermally insulative particles is 42 to 96% (or (40 to 80%) + (2 to 16%)), the total amount of water is 5.25 to 19.89% (or (5 to 17%) + (0.25 to 2.89%)), see Rezende at [0058] teaching insulating nanoparticles of 2 to 60% (see MPEP 2144.05(I))… water from 20 to 60% 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 further teaches a hybrid insulating compound that protects a substrate from extreme temperatures (see Rezende at [0021]). However, Rezende does not explicitly teach that the insulating compound includes, by mass… 20 to 40% hydrated silicate (this recitation is broadly interpreted as “insulating compound comprising 1 to 8% (or ((5 to 20%) x (20 to 40%)) hydrated silicate).
Like Rezende, Lucini teaches compositions to protect a substrate from extreme temperatures (see Lucini at [0002] teaching there is ever-increasing interest in new materials and products that allow to manufacture articles that have specific properties such as… fire-retardant properties, see Lucini at [0006] teaching a resin… that has excellent thermal insulation power… and durable characteristics of particular resistance to high temperatures).
Lucini further teaches optional (i.e. that may be selected according to the requirements) component (F) is a powder of refractory clay that is based on hydrated aluminum silicate… and has surprisingly given the resin… greater resistance to thermal and mechanical stress (see Lucini at [0075])… advantageously, the resin comprises at least one of the following optional ingredients… (F) a powder that comprises refractory clay that comprises aluminum silicate, said component being present in an amount between 5 and 40%... by weight on the final weight of the mixture (see Lucini at [0056]). 5 and 40 wt% hydrated aluminum silicate is taken to meet the claimed the “insulating compound includes, by mass… 20 to 40% hydrated silicate” (this recitation is broadly interpreted as “insulating compound comprising 1 to 8% (or ((5 to 20%) x (20 to 40%)) hydrated silicate) (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 silicate hydrate is suitable to give a composition greater resistance to thermal and mechanical stress.
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 5 and 40 wt% hydrated aluminum silicate as taught by Lucini in the hybrid compound as taught by Rezende because aluminum silicate hydrate is suitable to give a composition greater resistance to thermal and mechanical stress, and there is a reasonable expectation of success that the disclosed amount would be suitable.
Regarding claim 20, Rezende in view of Lucini teaches the limitations as applied to claim 19 above, and Lucini further teaches wherein the hydrated silicate is fibrous aluminum silicate as a result of the hydrated silicate being thermally treated with aluminum and magnesium (see Lucini at [0056] teaching component (F) is a powder of refractory clay that is based on hydrated aluminum silicate). MPEP states that “the court held that the configuration… was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed… was significant” (see MPEP § 2144.04.IV.B). The claimed “hydrated silicate is fibrous aluminum silicate” is being treated as being taught by Lucini because there is no evidence indicating that the claimed “fibrous” is critical, absent new and unexpected results. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Lucini to choose an appropriate shape for the hydrated aluminum silicate. Furthermore, the claimed “as a result of the hydrated silicate being thermally treated with aluminum and magnesium” is being treated as product-by-process limitations because it is not seen to differ structurally from the applied prior art Lucini (see MPEP 2113.I). In this instance, the structure imparted by the recitations is “fibrous” (see rejection above).
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% thermally 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])… a hybrid insulating compound that protects a substrate from extreme temperature (see Rezende at [0021])… the use of this insulator… with excellent thermal insulation (see Rezende at [0076]).
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% thermally 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])… a hybrid insulating compound that protects a substrate from extreme temperature (see Rezende at [0021])… the use of this insulator… with excellent thermal insulation (see Rezende at [0076]).
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, 1 to 10% inert pigments, and thermally insulative particles”. Rezende teaches amorphous silica in mass levels of 5 to 50%... inert pigment from 1 to 10% (see Rezende at [0058])… a hybrid insulating compound that protects a substrate from extreme temperature (see Rezende at [0021])… the use of this insulator… with excellent thermal insulation (see Rezende at [0076]).
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% thermally 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])… a hybrid insulating compound that protects a substrate from extreme temperature (see Rezende at [0021])… the use of this insulator… with excellent thermal insulation (see Rezende at [0076]).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s amendments that incorporated “thermally insulative particles” has obviated the rejection based on the teachings of Rezende in view of Lu with respect to claim 1, and Rezende in view of Lu and Gasmena with respect to claim 19. However, upon further consideration, new ground of rejections are set forth for the respective amended claims 1 and 19, as outlined above utilizing Rezende as the primary reference. Thus, relevant arguments are addressed below.
Applicant discusses that claim 1 recites a nested composition: an overall composition of matter… the rejection does not identify where Rezende or Lu or Gasmena teaches or suggests this composition-within-a composition architecture (see Applicant’s arguments at page 8 paragraph 3 to page 10 paragraph 1, and page 11 paragraphs 1-4).
Examiner acknowledges the arguments and respectfully notes that Applicant’s argument is not commensurate with what is claimed. Claims 1 and 19 can be broadly interpreted as a mixture of components that make up the claimed “composition of matter”. Rezende in view of Lu and Rezende in view of Lucini have reasonably met the claimed limitations. As such, claims 1 and 19 rejections are maintained.
Applicant discusses that Zhou and Herald do not cure the deficiency of Rezende and Lu with respect to claims 2 and 7 (see Applicant’s arguments at page 10 paragraphs 2-5).
Examiner acknowledges the arguments and respectfully notes Rezende is now utilized to meet the limitations of dependent claims 2 and 7 as outlined above. As such, the rejections are maintained.
Applicant discusses that the discussion of the rejection to claimed “20 to 40% hydrated silicate” refers to Herold, not Gasmena (see Applicant’s arguments at page 12, paragraphs 1-3).
Examiner acknowledges the arguments and respectfully notes that the new rejection for independent claim 19 is now based on Rezende in view of Lucini.
Applicant acknowledges the provisional nature of the nonstatutory double-patenting rejections, but the rejections are premature while the identified reference applications remain pending and their claims remain subject to change… requests reconsideration and withdrawal or continued provisional treatment of the nonstatutory double-patenting rejections (see Applicant’s arguments at page 12 paragraph 4 to page 13 paragraph 2).
Examiner acknowledges the arguments and respectfully notes that 37 CFR 1.111(b) requires the Applicant to reply to every ground of objection and rejection in the prior Office Action and that reply must present arguments pointing out the specific distinctions believed to render the claims patentable. Additionally, MPEP states that a rejection based on a nonstatutory type of double patenting can be avoided by filing a terminal disclaimer in the application or proceeding in which the rejection is made (see MPEP 804.02.II).
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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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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