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 .
Claim Rejections - 35 USC § 102
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 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, 3 – 5, and 7 – 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0118478 to Ekanayake et al. (hereinafter Ekanayake)
Regarding Claims 1 and 4. Ekanayake teaches a macroporous ceramic body prepared from ceramic-forming components and a three-dimensional polymer network structure [0024]. As the macroporous ceramic body is prepared from multiple components, it is reasonably considered a composite material.
The composite material of Ekanayake is prepared by extruding a slurry on a polystyrene network structure comprised of polystyrene beads coated with polyurethane [0042], corresponding to charging a fluid (the ceramic slurry) in a gap in a particle aggregate including a plurality of resin particles (the polystyrene beads). The slurry includes inorganic particles such as feldspar and quartz [0036]. The slurry may further include a polyvinyl alcohol or polyethylene glycol resin [0041], i.e. the fluid may contain a resin. The intermediate matrix is then dried to remove the polystyrene network structure and form a porous network within the ceramic body [0042], corresponding to forming a plurality of pores/voids by heating the resin particles.
As the above described method is substantially the same method described in the instant application and set forth in instant Claim 10, it is the Office’s position that the composite material of Ekanayake is thus be reasonably considered to comprise a frame material including the first resin, i.e. the polyvinyl alcohol or polyethylene glycol resin; a plurality of voids, i.e. the microporous structure; and a first layer and a second layer each placed along each periphery of each of the plurality of voids. Said second layer comprises the at least one second resin which is different from the first resin, i.e. the polyurethane. The second layer will cover the first layer from a farther side of the first layer, i.e., the side of the first layer which is farther from the frame portion, and face each void.
Regarding Claim 3. Ekanayake teaches the composite material according to Claim 1 wherein the second layer, i.e. the polyurethane coating, contains no inorganic particles [0042] and therefore includes a smaller amount of inorganic particles than the first layer.
Regarding Claims 5 and 8. Ekanayake teaches the composite material according to Claim 1. While Ekanayake does not expressly teach the frame portion contains a smaller amount of particles than the first layer or that a heat transmission path is formed of the plurality of inorganic particles, Ekanayake teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a composite material in which the frame portion contains a smaller amount of particles than the first layer and a heat transmission path is formed of the plurality of inorganic particles, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 7. Ekanayake teaches the composite material according to Claim 1 wherein the pore network is described as open and interconnected [0001], corresponding to a porous structure in which voids overlap and thus the first layers surrounding these voids are connected to each other.
Regarding Claim 9. Ekanayake teaches the composite material according to Claim 1 wherein the plurality of voids may be made from polystyrene beads ([0025] and [0042], thereby providing voids of a similar, spherical outer shape.
Claims 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0118478 to Ekanayake et al. (hereinafter Ekanayake)
Regarding Claim 10. Ekanayake teaches a method for manufacturing a macroporous ceramic body from ceramic-forming components and a three-dimensional polymer network structure [0024]. As the macroporous ceramic body is prepared from multiple components, it is reasonably considered a composite material.
The composite material of Ekanayake is prepared by extruding a slurry on a polystyrene network structure comprised of polystyrene beads coated with polyurethane [0042], corresponding to charging a fluid (the ceramic slurry) in a gap in a particle aggregate including a plurality of resin particles (the polystyrene beads). The slurry includes inorganic particles such as feldspar and quartz [0036]. The slurry may further include a polyvinyl alcohol or polyethylene glycol resin [0041], i.e. the fluid may contain a first resin. The intermediate matrix is then dried to remove the polystyrene network structure and form a porous network within the ceramic body [0042], corresponding to forming a plurality of pores/voids by heating the resin particles to remove said particles.
A first layer and a second layer will then be present on each surface of the plurality of resin particles, with the second layer being between the surface of the resin particles and the first layer and the surface and the second layer are in contact with each other. The first layer will include a plurality of inorganic particles, namely particles such as feldspar and quartz. The second layer will include polyurethane, corresponding to a second resin which is different from the first resin which is included in the frame and first layer.
Regarding Claim 12. Ekanayake teaches the method according to Claim 10. As Ekanayake teaches removing the polystyrene, i.e. the resin forming the resin particles, from the composite materials by heating [0042]. Thus, it would be reasonably expected that the flow temperature of the first and second resins, i.e. the polyethylene glycol/polyvinyl alcohol resins and polyurethane resin, would be higher than the resin forming the resin particles, such that these resins are not also removed during heating.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0118478 to Ekanayake et al. (hereinafter Ekanayake), as applied to Claim 1 above, and further in view of US 2008/0135245 to Smith et al. (hereinafter Smith).
Regarding Claim 2. Ekanayake teaches the composite material according to Claim 1 but does not expressly teach either the first or second resin corresponds to a crosslinked polymer. However, Smith also teaches the concept of crosslinking a polymeric coating material for particles [0081]. Ekanayake and Smith are analogous art as they are from the same field of endeavor, namely composite materials based upon coating template particles with resins. Before the effective filing date of the instantly claimed invention, it would have been obvious to crosslink the polyurethane, which corresponds to the instantly claimed second resin, in the coating of Ekanayake. The motivation would have been that crosslinking the polyurethane would be expected to provide advantages, such as enhancing the strength and dimensional stability of the coating layer.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0118478 to Ekanayake et al. (hereinafter Ekanayake), as applied to Claim 1 above.
Regarding Claim 6. Ekanayake teaches the composite material according to Claim 1 but is silent with respect to the thickness of second layer, corresponding to the polyurethane coating. However, recitation of the relative dimensions of 0.01 to 100 microns does not appear to constitute a patentable distinction over the prior. See, for example, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0118478 to Ekanayake et al. (hereinafter Ekanayake), as applied to Claim 10 above, and further in view of US 2008/0135245 to Smith et al. (hereinafter Smith).
Regarding Claim 11. Ekanayake teaches the method according to Claim 10 but does not expressly teach either the first or second resin corresponds to a crosslinked polymer. However, Smith also teaches the concept of crosslinking a polymeric coating material for particles [0081]. Before the effective filing date of the instantly claimed invention, it would have been obvious to crosslink the polyurethane, which corresponds to the instantly claimed second resin, in the coating of Ekanayake. The motivation would have been that crosslinking the polyurethane would be expected to provide advantages, such as enhancing the strength and dimensional stability of the coating layer.
Response to Arguments
Applicant's arguments filed June 16, 2026 have been fully considered. The Office responds as follows:
Acceptance of the Drawings
The drawings filed September 28, 2023 have been accepted.
Rejections under 35 U.S.C. 112
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding rejections of the claims under 35 U.S.C. 112. Accordingly, all outstanding rejections under 35 U.S.C. 112 have been withdrawn.
Rejections under 35 U.S.C. 102
Applicant argues that Ekanayake fails to disclose “a second resin, different form the first resin, covers the first layer from a farther side of the first layer, and face the voids of the plurality of voids, the farther side being farther from the frame portion”. However, as detailed in the outstanding and present Office actions, Ekanayake teaches coating polystyrene beads with polyurethane. A slurry comprising a resin (e.g. polyvinyl alcohol or polyethylene glycol resin) and inorganic particles (e.g. feldspar and quartz) is then extruded on the polyurethane-coated beads ([0036] – [0042]). The polyurethane in Ekanayake then corresponds to the instantly claimed second resin, which is different from the first resin (polyvinyl alcohol or polyethylene glycol).
Applicant argues that Ekanayake does not teach that the inorganic particles are placed on the surfaces of the resin particles such that a first layer including inorganic particles is positioned between the polyurethane coating and ceramic slurry. However, the instant claims do not require the inorganic particle layer and frame portion be distinct components. The Office notes that instant Claim 5 even expressly allows for the presence of the inorganic particles in the frame portion. Thus, while the claim does require it is the second layer that face the plurality of voids, there is no requirement that the first layer including organic particles be between the second layer and frame portion, as alleged by applicant. It then remains the Office’s position that the instant claims, as written, are properly met by Ekanayake. The polyurethane coating disclosed by the reference corresponds to the second layer including a second resin different from the first resin, covering the first layer from a farther side of the first layer, and facing the voids of plurality of voids. The disclosed ceramic slurry, including a first resin and plurality of inorganic particles, will provide a first layer including the plurality of inorganic particles placed along a periphery of each of the plurality of voids and which is covered on a farther side with the second layer and additionally a frame portion including the first resin.
In response to applicant’s argument that Ekanayake’s ceramic slurry forms the ceramic body itself and not a frame portion including a first resin, the reference expressly teaches polyvinyl alcohol and polyethylene glycol resins may be included therein [0041]. While the Office notes that additional components are also included in the ceramic slurry, the claim simply sets forth the frame portion includes a first resin and places no minimum on the amount of first resin which may be present.
Applicant also argues that the final product in Ekanayake is a sintered body, not a composite material retaining any resin components. Assuming arguendo applicant’s argument is correct, the intermediate in Ekanayake prior to sintering still corresponds to a composite material having all of the instantly claimed features for the reasons detailed above.
In response to applicant’s arguments that Ekanayake does not use a resin in the ceramic slurry of the working example, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (MPEP 2123) Thus, that Ekanayake does not use a resin in the ceramic slurry of the working example does not negate the fact that resins are expressly envisioned for use in the ceramic slurry in the general disclosure of the reference [0041].
Applicant’s arguments with respect to Claim 10 have been responded to, in detail above. It remains the Office’s position that the process which forms the intermediate in Ekanayake prior to sintering still corresponds to a process of preparing a composite material having all of the instantly claimed features for the reasons detailed above. Additionally, that Ekanayake does not use a resin in the ceramic slurry of the working example does not negate the fact that resins are expressly envisioned for use in the ceramic slurry in the general disclosure of the reference [0041].
Rejections under 35 U.S.C. 103
Applicant’s arguments that the secondary references applied in the rejections under 35 U.S.C. 103 do not remedy the deficiencies of Ekanayake are not persuasive, as the alleged deficiencies have been addressed above.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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