DETAILED ACTION
Response to Amendment
Applicants’ response dated 6/16/26 has been entered. In light of this amendment the rejection and objection found in paragraphs 1 and 2 of the previous office action have been overcome.
The Examiner notes that claim 18 contains an obvious typographical error in that claim 15 should read claim 1. This issue must be corrected prior to any allowance that may occur.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4 to 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams et al. US 2010/0280171.
This rejection relies on the rationale of record. Applicants’ traversal has been considered but is not deemed persuasive.
Williams et al. teach an aerogel/polymer composite. This contains a silica aerogel
blended with a thermoplastic polymer. See for instance paragraph 12. Such blending will result in the silica aerogel being disposed within the polymer.
For the newly claimed range in claim 1, and the amended range in claim 4, note the following.
While the body of the specification teaches ranges that embrace the claimed range and specific amount, the best anticipatory teaching can be found in the working examples. See Examples 3 and 8, among others, that show 10 and 15 wt% aerogel compositions.
For claim 5, see paragraph 54 which teaches a range that anticipates that claim-ed. The entire claimed range is embraced by the range in Williams et al. to such an extent that the skilled artisan would have immediately envisioned an aerogel having a particle size within the claimed range.
For claim 6, see paragraph 81 which teaches ranges greater than 200o C. This embraces the claimed range of at least 300o C such that the skilled artisan would have anticipated this claim limitation. In addition note that products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If applicants are of the position that the prior art does not, in fact, possess the same properties as the claimed composition, the claimed composition should be amended to distinguish itself from the prior art.
Additionally Figure 1 shows a consistent weight percentage, indicating stability, up to at least 300oC.
The rationale regarding products of identical chemical composition applies to the limitation of claims 7 and 18 as well, particularly since the aerogel has low density (paragraph 23) compared to the polymers found in paragraph 45.
For claim 8 see paragraphs 45 to 48 which teach many of the thermoplastic poly-mers found in this claim.
For claim 9 see paragraph 31 which teaches surface treating the silica aerogel such that it will be rendered hydrophobic.
For claim 10, see paragraph 45 which specifically teaches, and thus anticipates, polymers including silicones and polyurethanes.
For claim 11 note that this is a product by process limitation. While such claims are limited by and defined by the process, determination of patentability is based on the product itself. Patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
In the instant case it does not appear that the general and quite broad step of in situ polymerization results in a patentable distinct product.
For claims 12 and 18 see the results in Table 1 which show thermal conductivity reduction that meets this requirement.
For claim 13, note that the composition in Williams et al. is not required to be fibrous, nor does it require any fibers therein. See for instance paragraph 20, which teaches that fibers are optional and paragraph 55 which teaches that the composition can be in various forms, including but not limited to fibers.
For claim 14, see paragraph 55 which teaches such forms.
For claims 15 and 16, note paragraph 82 which teaches seals and gaskets.
For claim 17, note that supra for claim 6 as it presently applies.
Response to Arguments
Applicant's arguments filed 6/16/26 have been fully considered but they are not persuasive.
Applicants argue the meaning of the ranges found in paragraph 20, combined
with the teachings in paragraphs 21 and 23. While the Examiner does not necessarily agree with applicants’ rationale, a clearer teaching and showing of anticipation can be found in the working examples.
As noted in the previous office action and again above, Example 3 prepares mix-tures of aerogel and a polymer in amounts as claimed. In addition, Examples 5 to 8 also prepare such mixtures.
Applicants’ refer to these teachings starting on page 7 of their response. They refer to Example 8 stating that the material described by Williams is 7.27 and 7.902 wt% aerogel. This interpretation is not persuasive.
First, note that this excerpt refers only to Example 8 and not to Example 3 or any of the other anticipatory working examples.
Second, Figure 1 in Example 8 is a chart showing thermogravimetric analysis and the results referred to are after treatment at 500oC. This is completely different from the initial mixture. In fact, this is a reflection of the stability of the composition at high temperatures (and supports the rejection of claims 6 and 17) as Figure 1 shows a stable weight percentage up to at least 400oC.
Applicants refer to improved data. This too is not persuasive. One cannot rely on “unexpected” or “improved” results to overcome an anticipation rejection. Further-more Williams et al. refer to improvements over unmodified polymers such that it is not clear that these results are, in fact, unexpected, even IF they were considered.
For the specific traversal of claim 4, note that the working examples in Williams et al. show amounts of aerogel at 15 wt%.
Reliance of claim 1 for the novelty and unobviousness of claims 5-18 does not carry weight, as claim 1 remains rejected.
Conclusion
THIS ACTION IS MADE FINAL. 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 MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
7/3/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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