Prosecution Insights
Last updated: April 19, 2026
Application No. 18/284,596

COMPOSITE MATERIAL AND METHOD FOR MANUFACTURING COMPOSITE MATERIAL

Non-Final OA §102§103§112
Filed
Sep 28, 2023
Examiner
RIOJA, MELISSA A
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nitto Denko Corporation
OA Round
1 (Non-Final)
50%
Grant Probability
Moderate
1-2
OA Rounds
3y 4m
To Grant
99%
With Interview

Examiner Intelligence

Grants 50% of resolved cases
50%
Career Allow Rate
421 granted / 847 resolved
-15.3% vs TC avg
Strong +55% interview lift
Without
With
+54.8%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
74 currently pending
Career history
921
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
42.2%
+2.2% vs TC avg
§102
14.2%
-25.8% vs TC avg
§112
31.2%
-8.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 847 resolved cases

Office Action

§102 §103 §112
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 § 112 The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 1 – 12 are 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. There is a lack of antecedent basis for “the” void recited in the final line of Claim 1 . It is unclear to which of the previously recited void(s) of the plurality of voids “the” void refers. For the purposes of examination, Claim 1 will be interpreted as setting forth the second layer faces each of the plurality of voids. There is a lso lack of antecedent basis for “the” first layers recited in Claim 7 . Claim 1 only sets forth “a” first layer (singular). For the purposes of examination, this phrase in Claim 7 will be interpreted as setting forth a portion of the first layer surrounding at least one void is connected to a portion of the first layer surrounding at least one other void . There is a dditionally a lack of antecedent basis for “the” surface recited in line 9 of Claim 1 0 . It is unclear to which of each of the surface ( s ) previously set forth the phrase “the” surface r efers. For the purposes of examination, Claim 1 1 will be interpreted as setting forth “the” surface will be interpreted as referring to each of the surfaces of the plurality of resin particles. All other pending claims ultimately depend on independent Claim 1 or Claim 1 0 . They therefore incorporate the subject matter thereof and are also consequently rejected under this statute. 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 Claim s 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 comprise d 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 alc o hol 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] , correspond ing 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 Claim s 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 1 0 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 1 0 . 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 fr o m 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 comprise d 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], correspond ing 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 1 2 . 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 alc o hol resin s 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 1 0 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 1 0 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. Co rrespondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT MELISSA RIOJA whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3305 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday - Friday 10:00 am - 6:30 pm EST . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Arrie Lanee Reuther can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)270-7026 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
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Prosecution Timeline

Sep 28, 2023
Application Filed
Mar 26, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
50%
Grant Probability
99%
With Interview (+54.8%)
3y 4m
Median Time to Grant
Low
PTA Risk
Based on 847 resolved cases by this examiner. Grant probability derived from career allow rate.

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