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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/20/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/20/2026 was filed after the mailing date of the Final Rejection on 06/24/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
In response to the amendment received on 08/20/2026:
claims 1-10 and 12-17 are currently pending;
claims 14-17 are withdrawn;
the nonstatutory double patenting rejection to claims 1-13 is maintained for at least
the reasons as set forth herein; and
all prior art grounds of rejection are withdrawn in light of the narrowing amendment to the claimed “solvent”.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 reciting “wherein the solvent comprises at least one selected from the group consisting of a polar solvent and a non-polar solvent”, which fail to further limit and include all the limitations of the claimed “solvent comprising water” in independent claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-10 and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-14 of copending Application No. 18/454662 (“’662 hereinafter) in view of Yoon et al. (KR 10-2013-0039028 A, provided in the IDS, with reference to the machine translation) (“Yoon” hereinafter).
Both the pending application and the copending application ‘662 recite a composition comprising: a fibrous support; an aerogel; and a functional material including a binder, a dispersant, or a combination thereof, wherein, with respect to a total solid content of the aerogel composition with overlapping ranges. However, the pending application does not explicitly teach “the antifoaming agent is 0.05 wt% to 2 wt%”. Yoon teaches the content of the antifoaming agent is 0.5 to 3 wt%... within this range, it helps to improve the adhesive strength of the coating film by reducing the generation of bubbles during and after the pre-mixing process (see Yoon at [0009]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to add 0.5 to 3 wt% antifoaming agents in the aerogel composition so as to help improve the adhesive strength of a coating film.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s narrowing amendment to the claimed “solvent” has obviated the rejection based on the teachings of Lee. However, upon further consideration, the nonstatutory double patenting rejection to claims 1-10 and 12-13 is maintained. Relevant arguments are addressed below.
Applicant discusses that the final scope of the claims in the application have not yet been determined, Applicant reserves the right to file a future terminal disclaimer or to further argue that the present claims are patentably distinguishable over the referenced documents (see Applicant’s arguments at page 6, section I).
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). As such, the nonstatutory
double patenting rejection to claims 1-10 and 12-13 is maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bauer et al. (US 2012/0037838 A1) (“Bauer” hereinafter) teaches a composition that include an aerogel component (see Bauer at [0004])… the composition… comprises… (i) an aerogel, (ii) a surfactant and (iii) binder (see Bauer at [0046])… surface active agent, also referred to herein as surfactant, dispersant or wetting agent (see Bauer at [0026])… the aerogel-based composite materials can include fibers (see Bauer at [0034])… in terms of weight percentages, the aerogel component can be within the range of from about 5% to about 95% by weight (see MPEP 2144.05(I)) (see Bauer at [0042])… fibers are present in an amount of at least 25% by weight (see MPEP 2144.05(I)) (see Bauer at [0072])… the composition includes a fluid… such as… water (see Bauer at [0078]). However, Bauer does not explicitly teach the claimed i) “the functional material is present in a content range of 0.5 wt% to 20 wt%”, and ii) “wherein the binder and the dispersant are present in a weight ratio range of 1.0:001 to 1:0.67” in independent claim 1. And, there are no prior art references of record that provide adequate teachings or apparent reason that would lead the person of ordinary skill to modify Bauer as claimed.
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
