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 .
Election/Restrictions
Newly submitted claims 17-22 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, 8-11, 13 drawn to a structure comprising a plurality of nanoparticles.
Group II, claim(s) 17-22 drawn to a structure comprising a plurality of nanofibers.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of a structure comprising a structure comprising: a plurality of nano components surface-coated with an amphipathic molecule or an organic silane molecule; and a cross-linking part that couples the plurality of nano components to each other, this technical feature is not a special technical feature as it does not make a contribution over the prior art Ikoma et al. (JP 2014-035045).
Ikoma discloses heat insulating material is formed by containing aerogel particles A, a hydrophilic adhesive 4, and an amphiphilic compound 5 having hydrophilic and hydrophobic functional groups (English abstract). Ikoma discloses alkoxysilane used as the raw material of the aerogel particle A, Bifunctional, trifunctional, or tetrafunctional alkoxysilane can be used (page 3-4). The amphiphilic compound 5 preferably further has a functional group that is reactive with the hydrophilic adhesive 4. By such a functional group, the hydrophilic adhesive 4 and the amphiphilic compound 5 can be more firmly bonded (last 2 pages).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 17-22 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1, 3-5, 8-9, 13 are rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045).
Regarding claim 1, 4-5, 8 Ikoma discloses heat insulating material is formed by containing aerogel particles A, a hydrophilic adhesive 4, and an amphiphilic compound 5 having hydrophilic and hydrophobic functional groups (English abstract). Ikoma discloses in figure 1A, amphiphilic compound 5 can be strongly bonded to the hydrophilic adhesive 4 by the hydrophilic functional group and can be firmly bonded to the aerogel particle A by the hydrophobic functional group. In this way, the amphiphilic compound 5 becomes an intermediate, and the bonding force between the aerogel particles A and the hydrophilic adhesive 4 (cross-linking part of the present invention) is increased, and the strength of the heat insulating material can be increased (page 5). Ikoma discloses the amphiphilic compound 5, for example, an anionic surfactant, a cationic surfactant, or a nonionic surfactant can be used (page 6). Ikoma discloses the size of the aerogel particle A may be, for example, in a range where the longest length of the particle is 50 nm or more and 10 mm or less (page 5), where the aerogel particle size would meet the limitation of plurality of nanoparticles.
As Ikoma discloses structure comprising heat insulating material as presently claimed, therefore the structure would intrinsically have heat insulating properties and transmittance of 70% or more.
Ikoma discloses in figure 1A, amphiphilic compound 5 can be strongly bonded to the hydrophilic adhesive 4 by the hydrophilic functional group and can be firmly bonded to the aerogel particle A by the hydrophobic functional group. In this way, the amphiphilic compound 5 becomes an intermediate, and the bonding force between the aerogel particles A and the hydrophilic adhesive 4 (cross-linking part of the present invention) is increased, and the strength of the heat insulating material can be increased (page 5), where the average value of the numbers of nanoparticles closest to one of the nanoparticles is one.
The only deficiency of Ikoma is that Ikoma disclose the use of number of nanoparticles closest to one of the nanoparticles is one, while the present claims require number of nanoparticles is 1 and greater i.e. 4
It is apparent, however, that the instantly claimed amount of spacing of nanoparticles and that taught by Ikoma are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of nanoparticle spacing disclosed by Ikoma and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of nanoparticle spacing, it therefore would have been obvious to one of ordinary skill in the art that the amount of *nanoparticle spacing disclosed in the present claims is but an obvious variant of the amounts disclosed in Ikoma, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 3, Ikoma discloses the shape of the airgel particles A is not particularly limited, and may be various shapes. When the airgel particles A are obtained by the method described above, since the particles are pulverized to form particles, the shape of the airgel particles A is usually an irregular shape. In other words, it becomes rocky particles with a rough surface. Of course, spherical or rugby ball-like particles may be used. Moreover, panel shape, flake shape, and fiber shape may be sufficient. The airgel particles A may be a mixture of materials having various particle sizes as raw materials used for molding. The size of the airgel particle A may be, for example, in a range where the longest length of the particle is 50 nm or more and 10 mm or less. However, from the viewpoint of strength, handleability, and moldability (page 5), it would be obvious to one of ordinary skill in the art based on the teaching of Ikoma to form heat insulating material comprising aerogel particles having a plurality of nanoparticles and plurality of nanofibers.
Regarding claims 13, Ikoma discloses in FIGS. 2A and 2B, the airgel particle A is a silica airgel particle, and is a silica (SiO .sub.2 ) structure having pores on the order of several tens of nanometers (for example, 20 to 40 nm). The size of one silica fine particle is, for example, about 1 to 2 nm (page 2).
Regarding claim 9, which recites “macromolecule” is an optional component in claim 8, thus the claim limitation is met when macromolecule is absent.
Claim(s) 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045) as applied to claim 1, further in view of Yang et al. (CN 112694769).
Regarding claims 2, 10 Ikoma discloses in figure 1A, amphiphilic compound 5 can be strongly bonded to the hydrophilic adhesive 4 by the hydrophilic functional group and can be firmly bonded to the aerogel particle A by the hydrophobic functional group. In this way, the amphiphilic compound 5 becomes an intermediate, and the bonding force between the aerogel particles A and the hydrophilic adhesive 4 (cross-linking part of the present invention) is increased, and the strength of the heat insulating material can be increased (page 5). Ikoma discloses the amphiphilic compound 5, for example, an anionic surfactant, a cationic surfactant, or a nonionic surfactant can be used (page 6).
However, Ikoma fails to disclose that the nanoparticles and the cross-linking part form a covalent bond.
Whereas, Yang discloses a coating composition and preparation method thereof and self-cleaning nano-coating and preparation method thereof. the coating composition is prepared by mixing the inorganic amphoteric oxide nano-particle sol with the hydrophilic surfactant modified by isocyanate functional organic siloxane (abstract). Yang discloses the hydrophilic surfactant can be effectively combined with the nano silica sol through covalent bond, so as to improve the durability (page 11).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to bond the aerogel particles A and the hydrophilic adhesive 4 of Ikoma with a covalent bond as taught by Yang motivated by the desire to have improved durability (page 11).
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045) as applied to claim 1, further in view of Mizutani et al. (KR 2002-0039634).
Regarding claim 6, Ikoma does not explicitly disclose length of the cross-linking part is smaller than ½ of an average particle diameter of the plurality of nanoparticles, but does disclose the size of the airgel particle A may be, for example, in a range where the longest length of the particle is 50 nm or more and 10 mm or less. However, from the viewpoint of strength, handleability, and moldability (page 5). Ikoma discloses in FIGS. 2A and 2B, the airgel particle A is a silica airgel particle, and is a silica (SiO .sub.2 ) structure having pores on the order of several tens of nanometers (for example, 20 to 40 nm). The size of one silica fine particle is, for example, about 1 to 2 nm (page 2).
Whereas, Mizutani discloses the fiber length of hydrophilic fiber is 1/2 or less of the fiber length of hydrophobic fiber. If the fiber length of the hydrophilic fibers is shorter than the fiber length of the hydrophobic fibers, the hydrophilic fibers become aggregates (page 3-4).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to form hydrophilic adhesive having a length ½ of diameter of aerogel particles of Ikoma as taught by Mizutani motivated by the desire to have improved aggregation.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Ikoma et al. (JP 2014-035045) as applied to claim 1, further in view of Chiba et al. (JP 2018/178029).
Regarding claim 11, Ikoma fails to disclose crosslinking part comprises an organic or inorganic matter covalently bonded to the nanoparticles via a silyl group.
Whereas, Chiba discloses the inorganic filler used for the silane crosslinkable resin composition is not particularly limited as long as it is usually used, but a hydrolyzable silyl group of the silane coupling agent and a hydrogen bond or covalent bond, etc. or an intermolecular bond is used on the surface. It is preferably one having a site capable of chemically bonding. Examples of the site that can be chemically bonded to the hydrolyzable silyl group include an OH group (hydroxy group, water molecule of water or water of crystallization, OH group such as carboxy group), an amino group, an SH group and the like. When such an inorganic filler is used at the time of a silane grafting reaction, a silane grafting resin in which a silane coupling agent weakly bonded with the inorganic filler grafts and a silane grafting resin in which a silane coupling agent strongly bonded with the inorganic filler grafts Can be formed. By cross-linking reaction of such two types of silane graft resins, it is possible to form a silane cross-linked resin molded product having both heat resistance and strength (page 9).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to bond the aerogel particles A and the hydrophilic adhesive 4 of Ikoma with a covalent bond via a silyl group as taught by Chiba motivated by the desire to have heat resistance and strength.
Response to Arguments
Applicants arguments filed on 03/31/2026 have been fully considered, but they are moot in view of new grounds of rejections as stated 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.
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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