DETAILED ACTION
Claim Objections
Claim 5 is objected to because of the following informalities: This claim uses “pm” as a particle diameter measurement. This appears to be a typographical error. Page 2, line 23, teaches a range measured by microns (µm). For claim interpretation purposes this diameter range is being construed as being µm. Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear what is embraced by the phrase “adapted for uses”. Specifically it is
unclear what type of adaptation is required and how this affects the article in claim 16.
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 to 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams et al. US 2010/0280171.
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. In this manner claim 1 is anticipated.
For claims 2 to 4, please see the teachings in paragraph 20 which teach amounts of at least 60 wt% thermoplastic polymer. This corresponds to less than 40 wt% aerogel which falls within the claimed range. In addition to this see the amounts in Example 3 which have an amount of silica aerogel that fall within the claimed range.
For claim 5, see paragraph 54 which teaches a range that anticipates that claim-ed. Note that 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.
This latter rationale applies to the limitation of claim 7 as well, particularly since the aerogel has such a 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 William 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.
Conclusion
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
1/9/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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