DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The amendment filed by Applicant on May 13, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. Specifically, claim 1 has been amended to include a limitation of:
..the ordered microstructure is (a) a nucleation microstructure having precipitated solvent in an epoxy matrix, or (b) a spinodal microstructure.
In light of the amendment, the previous rejections cited below are maintained but suitably framed to better address the current amendment. Thus, the following action is properly made final.
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.
3. Claims 1-5 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.
4. As currently amended, instant claim 1 recites a limitation of the ordered microstructure is (a) a nucleation microstructure having precipitated solvent in an epoxy matrix. However, it is not clear what is the origin of “precipitated solvent”, since claim 1 does not mention any used solvent; and further there is no preposition “the” or “said” in front of “epoxy matrix”; and it is not clear if “epoxy matrix” used with respect to “nucleation microstructure” is the same or different from that previously used.
Claim Rejections - 35 USC § 102/103
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.
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.
5. Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nowak et al (US 5,837,739).
6. Nowak et al discloses a syntactic foam comprising:
a) a resin, preferably epoxy resin (Abstract, col. 4, lines 47-50; Example 1);
b) microspheres (Abstract),
wherein the foam is characterized by tightly packed network of the resin-coated microspheres spaced by controlled, yet random voids comprising at least 20% by volume (Abstract). Figures 6A, 6B show the foam having many microscopic interstitial voids having dimensions of about 50 microns (col. 11, lines 41-60), i.e. including closed cells. The closed voids shown on Fig. 6A-6C of Nowak et al also include the microspheres added in the process for making it. Further, Figure 7B of Nowak et al shows mostly closed cells in the epoxy resin matrix surrounding the microspheres, where Figure 7C further shows at least partially broken, i.e. at least partially opened cells and open spaces of the epoxy matrix surrounding the microspheres.
7. The syntactic foam of Nowak et al is produced by a process comprising:
i) combining a resin and a curing agent (col. 5, lines 60-62),
ii) further adding a solvent, specifically methyl ethyl ketone (col. 6, lines 1-2);
iii) further mixing with microspheres (col. 7, lines 40-53) to form a slurry in which the resin, the microspheres and the solvent are uniformly dispersed, followed by partially or fully extracting the solvent by heat or pressure (col. 3, lines 25-34; col. 7, lines 40-61; col. 9, lines 49-51). Nowak et al explicitly teaches extracting solvent by heat (col. 4, lines 35-37; col. 9, lines 49-51).
Nowak et al further teaches that, depending on the particular resin, curing/evaporation maybe conducted at room temperature; otherwise a series of temperatures can be further applied to further cure the material (col. 9, lines 56-60).
8. As to instant claims 4-5, the syntactic foam is having density of below 0.35 g/cc, or 0.3 g/cc, or below 0.3 g/cc (col. 10, lines 60-63) and exemplified compression failure strength of 1270 psi (8.75 MPa) or 1430 psi (10 MPa (Table II, col. 21).
9. Nowak et al teaches that random voids are formed between adjacent microspheres as the solvent is extracted, wherein the extracting can be conducted by heating (col. 4, lines 33-36; col. 9, lines 50-51). Thus, Nowak et al explicitly teaches that said random voids in the epoxy resin matrix are formed due to the solvent extraction, which maybe done by heating, i.e. evaporation.
10. It is noted that instant specification recites the term “ordered microstructure” as follows ([0033] of instant specification):
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Thus, said “ordered microstructure” defines the vacancies (i.e. voids) being arranged in uniform, a consistent, i.e. controlled, but still non-periodic, i.e. random, manner.
Instant specification further recites ([0007] of instant specification):
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Further, in paragraph [0020] instant specification recites that:
“….After the solvent evaporates, an empty space remains in the shape that the solvent assumed when it separated from the curing epoxy. Since the solvent acts as a template for the pores, it is referred to as a porogen in this application. Through the selection of the solvent type, solvent fraction and processing conditions (time, temperature, stochiometric ratio, etc.), it is possible to deliberately tune the arrangement of these empty spaces into a consistent microstructure…”
Further, specific example 2 of instant specification shows the steps of preparing the specific ELF having nucleation microstructure, the steps including mixing the curing agent with epoxy resin, adding toluene solvent, adding glass bubbles, curing at room temperature and further heating in an oven (see [0064] of instant specification).
11. Since the syntactic foam of Nowak et al is essentially the same as that claimed in instant invention, is characterized by tightly packed network of resin-coated microspheres spaced by controlled, yet random voids, as that disclosed in instant invention, and the process steps for making the syntactic foam of Nowak et al are essentially or substantially the same as those disclosed in instant invention, including mixing essentially the same components in essentially the same order, curing and eliminating solvent at room temperature and/or further heating; therefore, the epoxy resin matrix of the syntactic foam of Nowak et al will inherently have, or alternatively would be reasonably expected to have the structure that is at least partially and at least in a minor amount be as that claimed in instant invention, i.e. either i) at least partially a nucleation microstructure having in at least minor amount precipitated solvent in the epoxy matrix (that is at least partially a closed-cell structure as defined in [0034] of instant specification), or ii) at least partially an open-cell structure (i.e. corresponding to a spinodal microstructure as defined in [0035] of instant specification), or iii) at least in a minor extent both i) and ii), as well, especially since the polymeric foams of the art are having either closed-celled structure, open-celled structure, or both; and the syntactic foam of Nowak et al further having the combination of density and compressive failure stress as cited in instant claim 4 and in instant claim 5. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed foam, if not taught, may be very well met by the foams of Nowak et al, since the foams of Nowak et al are essentially the same and made in essentially the same manner as applicants’ foams, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
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.
12. Claims 1, 3 are rejected under 35 U.S.C. 103 as being unpatentable over Nowak et al (US 5,837,739) in view of Matsko (US 3,849,350) and Aubert et al (US 4,673,695).
13. The discussion with respect to Nowak et al (US 5,837,739) set forth in paragraphs 5-11 above, is incorporated here by reference.
14. Nowak et al does not explicitly disclose the ordered microstructure of the epoxy resin matrix being a spinodal microstructure.
15. However,
1) Matsko discloses a low density syntactic foam comprising:
a) a binder resin, specifically epoxy resin (Abstract, col. 4, lines 3-5, claim 1);
b) hollow sphere or microsphere material (Abstract),
wherein said foam is produced by thoroughly mixing the resin, the microspheres and a solvent until uniform mixture is formed, followed by cooling and freezing the produced mixture and removing the solvent by sublimation (Abstract, col. 2, lines 29-45). The sublimation of the solvent allows the formulation to remain homogeneous (col. 3, lines 20-21), i.e. uniform and ordered (claims 1, 2).
Thus, Matsko teaches that low density syntactic foams can be produced by cooling and freezing the uniform mixture of the resin, microspheres and the solvent, followed by removing the solvent by sublimation.
2) Aubert et al discloses low density microporous foams produced by a process comprising forming a mixture of a polymer and a solvent, followed by rapid cooling of the solution to form phase-separated system comprising a polymer phase and a solvent phase, each of which is substantially continuous within the other (Abstract), further followed by removing the solvent by sublimation to produce foam (col. 3, lines 9-25; col. 9, lines 10-11). The phase-separation occurs without nucleation by way of spinodal decomposition (col. 5, lines 1-18). Thus, Aubert et al teaches the process for making low density foams by removing the solvent, wherein Aubert et al explicitly teaches that by cooling and freezing the resin/solvent mixture phase separation and spinodal decomposition take place, thereby leading to forming the foam with spinodal microstructure.
3) It is noted that instant specification defines “spinodal microstructure” as formed by phase-separation/spinodal decomposition as well ([0035] of instant specification):
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The specific example 1 of instant specification shows the method of preparation of the spinodal microstructure by combining curing agent-epoxy mixture with toluene, with glass bubble, followed by cooling first, then followed by keeping the product at room temperature and further heating to dry out solvent ([0062] of instant specification).
16. Since both Matsko and Nowak et al are related to syntactic epoxy resin-based foams, produced by forming uniform mixtures comprising said resin, microspheres and a solvent, followed by removing said solvent, and thereby belong to the same field of endeavor, wherein Matsko teaches the step of removing the solvent by cooling/ freezing said mixtures and sublimation, and further wherein Aubert et al teaches that such removal of the solvent from the resin/solvent mixtures by cooling/freezing and sublimation leads to phase-separation and spinodal decomposition in the produced foams, and thus to producing spinodal microstructure of the foam, therefore, based on the combined teachings of Matsko, Aubert et al and Nowak et al, given the syntactic foam with at least partially spinodal microstructure is desired, it would have been obvious to a one of ordinary skill in the art to apply, or obvious to try to apply in the process for making the syntactic foam of Nowak et al an additional step of cooling/freezing the composition of Nowak et al leading to phase-separation and spinodal decomposition, and thus to forming at least partially spinodal microstructure of the epoxy resin matrix of said foam, as taught by Aubert et al as well, i.e. having at least partially open-celled voids in the epoxy resin matrix surrounding the microspheres, thereby arriving at the present invention. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
Response to Arguments
17. Applicant's arguments filed on May 13, 2026 have been fully considered.
18. With respect to Applicant’s arguments regarding the rejections of Claims 1-5 under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nowak et al (US 5,837,739) and Claims 1, 3 under 35 U.S.C. 103 as being unpatentable over Nowak et al (US 5,837,739) in view of Matsko (US 3,849,350) and Aubert et al (US 4,673,695), it is noted that:
1) Since the syntactic foam of Nowak et al is essentially the same as that claimed in instant invention, is characterized by tightly packed network of resin-coated microspheres spaced by controlled, yet random voids, as that disclosed in instant invention, and the process steps for making the syntactic foam of Nowak et al are essentially or substantially the same as those disclosed in instant invention, including mixing essentially the same components in essentially the same order, curing and eliminating solvent at room temperature and/or further heating; therefore, the epoxy matrix of the syntactic foam of Nowak et al will inherently have, or would be reasonably expected to have the structure that is at least partially and at least in a minor amount be as that claimed in instant invention, i.e. either i) at least partially a nucleation microstructure comprising in at least minor amount the solvent precipitated in the epoxy matrix (that is at least partially a closed-cell structure as defined in [0034] of instant specification), or ii) at least partially an open-cell structure (that is, at least partially corresponding to a spinodal microstructure as defined in [0035] of instant specification), or iii) at least in a minor extent both i) and ii), as well, especially since the polymeric foams of the art are having either closed-celled structure, open-celled structure, or both. The above rejections were made in the sense of in re Fitzgerald (205 USPQ 594). (CAFC ) based on presumption that the properties governing the claimed foam, if not taught, may be very well met by the foams of Nowak et al, since the foams of Nowak et al are essentially the same and made in essentially the same manner as applicants’ foams, wherein the burden to show that it is not the case is shifted to applicants; or in the sense of In re Spada, 911 F 2d 705, 709 15 USPQ 1655, 1658 (Fed. Cir. 1990), which settles that when the claimed compositions are not novel, they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in prior art. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
2) With respect to Applicant’s arguments that there is no motivation to combine the teachings of Nowak et al with the teachings of Matsko and Aubert et al, it is noted that:
i) the citation of Nowak et al in col. 1, line 63-col. 2, line 16 belongs to polyurethane foams and polystyrene foams only, blown with volatile blowing agents like pentane, wherein Nowak et al recites that even those foams have demonstrated desirable strength and insulating characteristics. Nowak et al further characterizes syntactic foams as different from those polyurethane and polystyrene foams, in that the cells of the syntactic foams are formed by the incorporation of microspheres into a bonding agent/resin binder (col. 2, lines 22-25).
Therefore, even by definition, the syntactic foams are having closed cells brought in by said added microspheres. Nowak et al further teaches that voids are created between the microspheres (col. 2, lines 28-30). However, Nowak et al does not teach away from the voids formed in the resin binder between the microspheres as being at least partially open-celled.
The closed voids shown on Fig. 6A-6C of Nowak et al appear to be mainly the microspheres added in the process for making it. Figure 7B of Nowak et al shows mostly closed cells in the epoxy resin matrix surrounding the microspheres, where Figure 7C further shows at least partially opened cells, and open spaces of the epoxy matrix surrounding the microspheres.
ii) On the other hand, Aubert et al explicitly teaches that removal of the solvent from the resin/solvent mixtures by cooling/freezing and sublimation leads to phase-separation and spinodal decomposition, thus forming foams with spinodal microstructure.
Therefore, given the syntactic foam having a spinodal microstructure, formed by spinodal decomposition, of the epoxy resin matrix, is desired, it would have been obvious to a one of ordinary skill in the art to apply in the process for making the syntactic foam of Nowak et al an additional step of cooling/freezing leading to phase-separation and spinodal decomposition, and thus forming at least partially spinodal microstructure of the epoxy resin of the syntactic foam of Nowak et al, as taught by Aubert et al as well. The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
iii) It is not clear how the presence of at least partially spinodal microstructure, i.e. at least partially open-celled voids, in epoxy matrix surrounding the microspheres, i.e. surrounding the closed-celled voids, will negate the benefits of the Nowak’s syntactic foam, and what are the specific benefits that would be negated, if Figures 6C and 7C of Nowak et al still show microscopic, at least partially open-celled voids, surrounding the microspheres.
iv) It is further noted that Matsko and Aubert et al are the secondary references which were applied for the specific of teachings, i.e. phase-separation/spinodal decomposition during the foam formation. Secondary reference does not need to teach all limitations. “It is not necessary to be able to bodily incorporate the secondary reference into the primary reference in order to make the combination.” In re Nievelt, 179 USPQ 224 (CCPA 1973).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764
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