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 04/28/2026:
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claims 14-17 are withdrawn;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all prior art grounds of rejection are withdrawn in light of the amendments to the claims; however, new grounds of rejection are presented based on the same references as set forth herein.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 1-7, 9-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (KR 10-2019-00143300, provided in the IDS, with reference to the machine translation) (“Lee” hereinafter).
Regarding claim 1, Lee teaches an aerogel composition (see Lee at [0018] teaching aerogel insulation composition),
for a battery insulation sheet (see Lee at [0002] teaching insulation material is a material that blocks the flow of heat and is used in various industries including… electronic components, see Lee at [0052] teaching the insulating material of the present disclosure is not particularly limited in its application, and includes all areas requiring insulation, such as… ESS battery cell packs),
the aerogel composition comprising:
a solvent (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting of… alcohol). Alcohol is taken to meet the claimed solvent based on specification at [0042]-[0043] disclosing the solvent may include at least one selected from the group consisting of… a polar solvent… the polar solvent may include… an alcohol-based solvent;
a fibrous support (see Lee at [0018] teaching fibrous insulation material), which is taken to meet the claimed recitation;
an aerogel (see Lee at [0018] teaching aerogel powder); and
a functional material including a binder (see Lee at [0018] teaching organic-inorganic composite binder), and
a dispersant (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting to… surfactant). Surfactant is taken to meet the claimed “dispersant” based on specification at [0016] disclosing dispersant may include at least one selected from the group consisting of… a surfactant),
wherein, with respect to a total solid content of the aerogel composition,
the fibrous support is present in a content range of 5 wt% to 70 wt% (see Lee at [0018] teaching 5 to 40 wt% fibrous insulation material) (see MPEP 2144.05(I)),
the aerogel is present in a content range of 10 wt% to 90 wt% (see Lee at [0018] teaching 40 to 90 wt% aerogel powder) (see MPEP 2144.05(I)), and
the functional material is present in a content range of 0.5 wt% to 20 wt% (see Lee at [0018] teaching 1 to 20 wt% of organic-inorganic composite binder) (see MPEP 2144.05(I)), and
wherein the binder and the dispersant are present in a weight ratio range of 1:0.001 to 1:0.67 (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting to… surfactant… additives are included in an amount of 0.01 to 1 part by weight based on 100 parts by weight of the aerogel powder). The amount of surfactant (or dispersant) is 0.04 wt% to 0.9 wt% (or ((40 to 90) x (0.1% to 1%)). The weight ratio of binder and surfactant (or dispersant) is 1:0.04 to 20:0.9 (or (1 to 20 wt%):(0.04 to 0.9 wt%)) (see MPEP 2144.05(I)).
Regarding claim 2, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the solvent comprises at least one selected from the group consisting of… a polar solvent (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting of… alcohol). Alcohol is taken to meet the claimed polar solvent based on specification at [0042]-[0043] disclosing the solvent may include at least one selected from the group consisting of… a polar solvent… the polar solvent may include… an alcohol-based solvent.
Regarding claim 3, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein a weight ratio of the content of the solvent to the total solid content of the aerogel composition is in a range of 1:1 to 1:90 (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting of… alcohol… included in an amount of 0.01 to 1 part weight based on 100 parts by weight of the aerogel powder, see Lee at [0018] teaching 40 to 90 wt% if aerogel powder). The weight ratio of aerogel to solvent of (40 to 90) to (0.1 to 1) or 1:90 is taken to meet the claimed recitation (see MPEP 2144.05(I)).
Regarding claim 4, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the fibrous support comprises at least one selected from the group consisting of… a silica fiber (see Lee at [0030] teaching the fibrous insulating material… at least one selected from… silica fiber).
Regarding claim 5, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the aerogel has a Brunauer- Emmett-Teller (BET) specific surface area in a range of 500 m2/g to 1,000 m2/g (see Lee at [0004] teaching aerogel is a nano-structured, transparent or semi-transparent advanced material made of silicon oxide… with a specific surface area of several hundred to 1500 m2/g), which is taken to meet the claimed recitation (see MPEP 2144.05(I)).
Regarding claim 6, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the binder comprises an aqueous polymer binder, and wherein the aqueous polymer binder comprises at least one selected from the group consisting of… aqueous polymer (see Lee at [0033] teaching the organic binder selected from the group of… polyvinyl alcohol). Polyvinyl alcohol is taken to meet the claimed recitation based on the specification at [0062] disclosing the aqueous polymer may include, for example, at least one selected from the group consisting of… polyvinyl alcohol).
Regarding claim 7, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the binder is present in a content range of 0.5 wt% to 20 wt% with respect to the total solid content of the aerogel composition (see Lee at [0018] teaching 1 to 20 wt% of organic-inorganic composite binder) (see MPEP 2144.05(I)).
Regarding claim 9, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the dispersant comprises at least one selected from the group consisting of… a surfactant (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting to… surfactant).
Regarding claim 10, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein the dispersant is present in a content range of 0.1 wt% to 6 wt% with respect to the total solid content of the aerogel composition (see Lee at [0025] teaching the aerogel insulation composition… may additionally include at least one other additive selected from the group consisting to… surfactant… additives are included in an amount of 0.01 to 1 part by weight based on 100 parts by weight of the aerogel powder). The amount of surfactant (or dispersant) is 0.04 wt% to 0.9 wt% (or ((40 to 90) x (0.1% to 1%)) (see MPEP 2144.05(I)).
Regarding claims 12-13, Lee teaches the limitations as applied to claim 1 above, and Lee further teaches wherein, with respect to the total solid content of the aerogel composition, the fibrous support is present in a content range of 25 wt% to 60 wt% (claims 12-13) (see Lee at [0018] teaching 5 to 40 wt% fibrous insulation material) (see MPEP 2144.05(I)),
the aerogel is present in a content range of 30 wt% to 70 wt% (claims 12-13) (see Lee at [0018] teaching 40 to 90 wt% if aerogel powder) (see MPEP 2144.05(I)), and
the binder is present in a content range of 2 wt% to 15 wt% (claims 12-13) (see Lee at [0018] teaching 1 to 20 wt% of organic-inorganic composite binder) (see MPEP 2144.05(I)), and
the dispersant is present in a content range of 0.1 wt% to 5 wt% (claim 13) (see claim 1 rejection meeting the claimed “functional material including… a dispersant”. This recitation are being treated as being taught by Lee (see MPEP 2111.04.II)).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lee as applied to claim 1 above, and further in view of Yoon et al. (KR 10-2013-0039028 A, provided in the IDS, with reference to the machine translation) (“Yoon” hereinafter); as evidenced by Kunduru et al. (Renewable polyol-based biodegradable polyesters as greener plastics for industrial applications, Chemical Engineering Journal) (“Kunduru” hereinafter).
Regarding claim 8, Lee teaches the limitations as applied to claim 1 above, and as mentioned, Lee teaches organic-inorganic composite binder… the organic binder… is preferably an organic binder selected from the group consisting of epoxy, acrylic, polyvinyl alcohol, and silicone binders (see Lee at [0018] and [0033]). However, Lee does not explicitly teach wherein the binder comprises an aqueous polymer and a water-dispersible polymer, and wherein the aqueous polymer and the water-dispersible polymer are present in a weight ratio in a range of 1:1 to 1:5.
Like Lee, Yoon teaches an insulation composition comprising aerogel and binder (see Yoon at [0001] teaching a paint composition using porous silica aerogel… to a paint composition using porous silica aerogel which, when applied to paint, has excellent… insulation, see Yoon [0009] teaching a paint composition using porous silica aerogel, characterized in that it comprises… aerogel… 15 to 45 wt% of aqueous binder resin… 1 to 5 wt% hardener).
Yoon further teaches the aqueous binder resin… is not particularly limited in its components… at least one selected from among polyurethane dispersion resin, aqueous polyester resin, silicone-based urethane dispersion resin, water-soluble acrylic resin, and water-soluble epoxy resin is used… among these, use of polyurethane dispersion resin is more effective in terms of excellent elongation, adhesion, and compatibility, and is also inexpensive, resulting in excellent productivity… the content of the aqueous binder resin is 15 to 45 wt% (see Yoon at [0013]). Yoon also teaches hardener… the curing agent… uses at least one selected from among water-soluble urea resin, water-soluble melamine resin, a water-soluble alkyd resin, and the content of the curing agent is 1 to 5 wt%... within this range, the added binder is advantageous in that it provides cross-linking performance to the aerogel particles, thereby improving the overall cross-linking ability (see Yoon at [0016]-[0017]). The water-soluble alkyd resin is taken to meet the claimed aqueous polymer as evidenced by Kunduru (see Kunduru at page 16, left column, paragraph 1 evidencing alkyd resins is one kind of a polyester resin), and aqueous polyurethane binder resin is taken to meet the claimed water-dispersible polymer. The weight ratio of the water-soluble alkyd resin (or aqueous polymer) and the polyurethane resin (or water-dispersible polymer) is (1 to 5 wt%) to (15 to 45 wt%), or 1:3 to 1:45, which is taken to meet the claimed wherein the aqueous polymer and the water-dispersible polymer are present in a weight ratio in a range of 1:1 to 1:5 (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 water-soluble alkyd resin and polyurethane resin are known materials based on their suitability for their intended use. 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).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use water-soluble alkyd resin and polyurethane resin as taught by Yoon in the aerogel insulation composition as taught by Lee because water-soluble alkyd resin provides cross-linking performance to the aerogel particles, thereby improving the overall cross-linking ability, and polyurethane resin is effective in terms of excellent elongation, adhesion, and compatibility, and is also inexpensive, resulting in excellent productivity. Furthermore, it would have been obvious to one of ordinary skill in the art have selected amounts from within the range taught by Yoon because there is a reasonable expectation of success that the disclosed amounts would be suitable.
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.
Both the pending application and the copending application ‘662 recite a composition comprising: a solvent; 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 agent 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 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, Lee. Thus, 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.
Applicant submits that Lee does not disclose any binder-to-dispersant ratio such that amended claim 1 is not obvious in view of Lee (see Applicant’s arguments at pages 6-8, section II).
Examiner acknowledges the arguments and respectfully notes that Lee teaches the claimed “binder-to-dispersant ratio”, as outlined above. As such, the rejection is 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
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