DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. The amendment filed by Applicant on April 29, 2026 has been fully considered. The amendment to instant claims 1 and 6 is acknowledged. Specifically, claim 1 has been amended to recite the limitation of:
“wherein providing the composition includes intermixing a polymer with the plurality of the expandable graphite particles, wherein the polymer is ethylene vinyl alcohol, and wherein the polymer and the plurality of the expandable graphite particles are mixed at a 10:1 weight ratio”. This limitation was not previously presented and was taken from instant specification. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections necessitated by Applicant’s amendment are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
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.
3. Claims 1, 6, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Shimamoto et al (US 2017/0253716) in view of Kuroda et al (JPH 11257575, based on machine translation) and Kani et al (JP 2004-331823).
4. Shimamoto et al discloses a method for making a long molded product comprising:
i) forming a resin composition, followed by
ii) melt extruding the resin composition using an extruder to form said molded article ([0079]),
wherein the resin composition comprises 100 pbw of a resin component, 3-300 pbw of a thermally expandable graphite and 2-200 pbw an inorganic filler (Abstract); and
wherein the expansion starting temperature of the expandable graphite is 15⁰C or more lower than the decomposition starting temperature of the resin component ([0014]), or
less than 200⁰C ([0015]);
wherein the inorganic filler comprises clay and bentonite ([0060], as to instant claims 4-5, 8-9) and
wherein the resin component is ethylene-vinyl acetate copolymer, polyacrylonitrile or polyvinyl chloride ([0016], [0026]), and
wherein upon heating during melt extruding, the thermally expandable graphite starts to expand prior to decomposition of the resin; the resin composition attains high expansion; and the heat-insulating layer is formed ([0057]).
The exemplified thermally expandable graphite is ADT501, which has expansion starting temperature of 160⁰C ([0083]).
5. Specifically, Shimamoto et al teaches the extrusion for making molded articles taking place at a temperature of 130-170⁰C ([0079]), which extrusion temperature includes the value of about 160⁰C cited in instant specification as being “the second temperature” of extrusion that forms the evacuated voids, forming vacuum in the board of instant invention ([0021] of instant specification).
6. It is noted that instant specification recites ([0021] of instant specification):
…The method further comprises combining the polymer matrix and the graphite particle 12 to form the vacuum insulation material. The method further comprises exposing the vacuum insulation material to a second temperature greater than the first temperature. ….The step of exposing the vacuum insulation material to the second temperature may comprise the step of extruding the vacuum insulation material at the second temperature greater than the first temperature to form the void 14 within the graphite particle 12. It is to be appreciated that as the graphite particles 12 expand due to exposure to the second temperature, the resulting voids 14 in the exterior of the graphite particles 12 remain evacuated, thereby forming a vacuum therein.
Instant specification further recites ([0018] of instant specification):
In the embodiment of Figure 2, the void 14 is defined within the graphite particles resulting from expansion of the graphite particle. As used herein, a "void" means a cell or open region in the polymer matrix or in the particle that is formed by expansion of a fluid and/or by expansion of a particle.
Thus, instant specification recites that the “vacuum” or “evacuated voids” in the insulation material are formed during extruding and heating the composition comprising the polymer matrix and the expandable graphite.
7. Since the method of Shimamoto et al comprises substantially the same steps as those claimed in instant invention, including forming the composition of the resin matrix and the expandable graphite, followed by extrusion molding and heating said composition to form the molded article, wherein upon heating, the thermally expandable graphite starts to expand and said the resin composition is specified as having high expansion ([0057]), therefore, the produced extrusion molded article of Shimamoto et al will intrinsically and necessarily have, or would be reasonably expected to have, at least partially, expanded graphite having evacuated voids, i.e. “vacuum” as well (as to instant claims 1, 6). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
8. It would have been further obvious to a one of ordinary skill in the art to prepare the resin composition A) in the step 1) by thoroughly mixing the components a)-c) to ensure formation of a uniform dispersion of said components as well (as to instant claim 10).
9. Though Shimamoto et al discloses the resin used for making the molded articles being ethylene-vinyl acetate copolymer, acrylonitrile-based polymers or polyvinyl chloride, Shimamoto et al does not recite said resin being ethylene-vinyl alcohol copolymer, that is a saponified ethylene-vinyl acetate copolymer, and does not recite said expanded molded article as being vacuum insulation board.
10. However,
1) Kani et al discloses heat insulating material comprising saponified ethylene-vinyl acetate, i.e. ethylene-vinyl alcohol copolymer, foam, wherein said foam was produced by extrusion foaming process and formed into a sheet by molding, wherein said sheet has a favorable insulation property (Equivalent Abstract).
Thus, Kani et al explicitly teaches the use of ethylene-vinyl alcohol copolymer foam providing favorable thermal insulating property to extrusion molded articles.
2) Kuroda et al discloses a vacuum insulation material that has excellent thermal insulation properties ([0006]), comprising an ethylene-vinyl alcohol copolymer layer and a gas barrier resin layer comprising a resin and an inorganic layered compound ([0007] of the translation),
wherein the inorganic layered compound includes graphite ([0010] of the translation) and the resin of the gas barrier resin composition layer is ethylene-vinyl alcohol copolymer or polyacrylonitrile ([0024] of the translation).
Thus, based on the teachings of Kuroda et al, it would have been obvious to a one of ordinary skill in the art to choose and use ethylene-vinyl alcohol copolymer as the only resin used for forming the gas barrier resin composition layer of the vacuum insulation material as well, since it would be obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Thus, Kuroda et al explicitly teaches the use of ethylene-vinyl alcohol copolymer resin as the only resin used for making laminated vacuum insulation material ([0007]).
11. Since i) the ethylene-vinyl alcohol copolymer is having excellent insulation property and is taught in the art to be molded into a sheet for making insulation material, as shown by Kani et al, and ii) the saponified ethylene-vinyl acetate copolymer, i.e. ethylene-vinyl alcohol copolymer, is having gas barrier properties and is used for making vacuum insulation material, as taught by Kuroda et al, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Kani et al, Kuroda et al and Shimamoto et al, and to use, or obvious to try to use the ethylene-vinyl alcohol copolymer, i.e. the saponified ethylene-vinyl acetate copolymer, as the only resin for forming the expanded molded product of Shimamoto et al, and to use, or obvious to try to use the such produced expanded molded product as the vacuum insulation expanded molded article/board, since such resin a) is explicitly taught in the art as being formed into sheets by molding, i.e. for forming molded articles, b) is having excellent insulation properties and c) is being used for making vacuum insulation material, as taught by Kuroda et al and Kani et al, and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
12. Further, based on the teachings of Shimamoto et al in view of Kuroda et al and Kani et al that the weight ratio of the resin to the thermally expandable graphite is 100:(3-300) or 10:(0.3-30) (Abstract of Shimamoto et al) and 95/5 (19:1) to 50/50 (1:1) ([0030] of Kuroda et al), which ranges include the claimed weight ratio of the resin to the expandable graphite of 10:1, therefore, it would have been obvious to a one of ordinary skill in the art to choose and use the ethylene-vinyl alcohol copolymer and the expandable graphite of Shimamoto et al in view of Kuroda et al and Kani et al at a weight ratio of 10:1 as well, since it would have been obvious to choose such ratio based on its suitability, thereby arriving at the present invention.
It is noted that instant specification does not provide any evidence of criticality in choosing the claimed weight ratio of the ethylene-vinyl alcohol copolymer and the expandable graphite of 10:1; neither inventive, nor comparative examples showing various weight ranges and thus providing evidence of criticality/desired properties, were presented in instant specification.
It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
13. Claims 1, 4-6, 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Shimamoto et al (US 2017/0253716) in view of Kuroda et al (JPH-11257575, based on machine translation) and Kani et al (JP 2004-331823), in further view of Peng (US 2014/0072808).
14. The discussion with respect to Shimamoto et al (US 2017/0253716) in view of Kuroda et al (JPH-11257575, based on machine translation) and Kani et al (JP 2004-331823), set forth in paragraphs 3-12 above, is incorporated here by reference.
15. Though Shimamoto et al recites the composition comprising bentonite ([0060]), Shimamoto et al does not explicitly recite the bentonite as being as nanoclay.
16. However, Peng teaches polymer compositions for forming films, i.e. extrusion molded articles, comprising nanoparticle fillers, specifically nanoclay/bentonite, wherein inclusion of such nanoparticles significantly reduces oxygen permeability of the polymer composite films ([0003], [0027]), i.e. said films are acting, at least partially, as insulating films.
17. Since bentonite in the form of nanoparticles significantly reduces oxygen permeability of the polymer composite films, as taught by Peng, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Peng and Shimamoto et al, and to choose and use, or obvious to try to choose and use the bentonite in the composition of Shimamoto et al in the form of nanoparticles/nanoclay, so to further reduce oxygen permeability of the vacuum insulation board of Shimamoto et al in view of Kuroda et al and Kani et al, as taught by Peng, and since it would be obvious to choose material based on its suitability, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Response to Arguments
18. Applicant's arguments filed on April 29, 2026 have been fully considered but they are moot in light of new grounds of rejections and discussion set forth above.
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 IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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