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
Applicant's election with traverse of claims 1-4, 6, and 8-14; species A (i): a ceramifiable barrier component contacting the core foam layer; and species B(i): a core foam layer comprising a silicone-based foam, in the reply filed on 5/29/2026 is acknowledged. The traversal is on the ground(s) that the examination of all of the species does not create undue burden on the USPTO. This is not found persuasive because of the following reasons:
(a) the species require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(b) the prior art applicable to one species would not likely be applicable to another species.
The requirement is still deemed proper and is therefore 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.
Claims 11 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.
Substitution of the term “and” for “or” is deemed appropriate in compliance with the proper Markush group. There is one possible combination of two components of the ceramization filler components. Therefore, it is not clear what is meant by any combination thereof.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 6, and 8-10 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 US 2022/0294044 to Kristy et al. (hereinafter “Kristry”).
Kristy discloses a multilayer composite comprising a silicone foam layer and a flame-retardant layer on the silicone foam layer (abstract, and paragraph 77). The silicon foam layer comprises a silicone matrix and a reactive filler composition dispersed within the silicone matrix (paragraph 34). The reactive filler composition that comprises aluminum trihydrate, hydrous sodium silicate, zinc borate corresponds to the claimed flame-retardant filler (paragraphs 68-70). The silicone foam layer further includes glass microspheres corresponding to the claimed insulation filler component (paragraph 72).
According to Materials Science, the term “ceramifiable” refers to a material such as a polymer or a silicone resin, that is capable of transforming into a hard, ceramic-like, fire-resistant residue when exposed to extreme heat or fire.
Kristy discloses that the flame-retardant layer includes aluminum hydroxide, magnesium hydroxide, an intumescent material or a combination thereof (paragraph 78). The flame-retardant layer further comprises a silicone binder (paragraph 85) which is capable of transforming into a hard, ceramic-like when exposed to heat or fire. The flame-retardant layer reads on the claimed ceramifiable layer.
Kristy does not disclose the multilayer composite comprising a HBF flammability rating as measured according to ASTM D4986.
It appears that the multilayer composite of Kristy meets all structural limitations and chemistry required by the claims. The multilayer composite comprises a silicone foam layer, and a flame-retardant layer on the silicone foam layer (abstract, and paragraph 77). The silicon foam layer comprises a silicone matrix and a reactive filler composition dispersed within the silicone matrix (paragraph 34). The reactive filler composition that comprises aluminum trihydrate, hydrous sodium silicate, zinc borate corresponds to the claimed flame-retardant filler (paragraphs 68-70). The silicone foam layer further includes glass microspheres corresponding to the claimed insulation filler component (paragraph 72).
The flame-retardant layer includes aluminum hydroxide, magnesium hydroxide an intumescent material or a combination thereof (paragraph 78). The flame-retardant layer further comprises a silicone binder (paragraph 85) which is capable of transforming into a hard, ceramic-like when exposed to heat or fire. The flame-retardant layer reads on the claimed ceramifiable layer.
Therefore, the examiner takes the position that the HBF flammability rating would be inherently achieved as like material as like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
As to claims 2, 3 and 6, Kristy discloses that the silicon foam layer comprises a silicone matrix and a reactive filler composition dispersed within the silicone matrix (paragraph 34). The reactive filler composition that comprises aluminum trihydrate, hydrous sodium silicate, zinc borate corresponds to the claimed flame-retardant filler (paragraphs 68-70). The silicone foam layer further includes glass microspheres corresponding to the claimed insulation filler component (paragraph 72).
As to claims 8-10, Kristy discloses that Kristy discloses that the flame-retardant layer includes aluminum hydroxide, magnesium hydroxide, an intumescent material or a combination thereof (paragraph 78). The intumescent material comprises a polymeric binder, a synergistic compound, and a char-forming agent. The aluminum hydroxide and magnesium hydroxide correspond to the claimed ceramifiable layer’s flame- retardant component. The synergistic compound comprises zinc borate reading on the claimed ceramifiable layer’s flux component. The char-forming agent comprises a lignin, boehmite, clay nanocomposite, cellulose, nanosilica and each of which reads on the claimed structural promoter component. Similarly, the clay nanocomposite or nanosilica can read on the claimed ceramifiable layer’s ceramization filler.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kristy as applied to claim 1, further in view of US 4,433,069 to Harper (hereinafter “Harper”), and US 2022/0169814 to Wu et al. (hereinafter “Wu”).
The claim is directed to a silicone foam layer comprising a component A and a component B. Since the claim is not specific about a mixing ratio of A to B, the examiner interprets the mixing ratio of A to B is 1:1. Therefore, the silicone foam layer of the claimed invention contains 5-30 wt% of a first filler of alumina trihydrate (ATH), 1-15 wt% of a second filler of perlite, 1-20 wt% of third filler of calcium carbonate and 1-20 wt% of a fourth filler of zinc borate. The components A and B contain said fillers and these carry through to the final foam product. Therefore, the absence of the fillers in the component B does not add patentable weight with respect to the foam product claim. If the final product of the prior art silicone foam contains the fillers and their contents within the claimed ranges, the distinctions in the intermediate components A and B of the prior art silicone foam do not render the claim unobvious.
Kristy discloses a multilayer composite comprising: a silicone foam layer comprising a component A and a component B, disposed between two release layers (paragraph 99). The component A contains 5-40 wt% of ATH and 5-40 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate, each based on the total weight of the component A (paragraph 69). Kristy teaches that the ATH, the zinc borate, and the hydrous sodium silicate are “reactive” fillers because they can generate water upon exposure to fire. The generating water can absorb heat to prevent thermal runaway (paragraph 48). Additionally, the reactive fillers render the silicone foam flame retardant due to formation of a thermal barrier layer upon exposure to a heat source. The reactive fillers do not involve in the chemical reactions between the components A and B. The ATH, the zinc borate, and the hydrous sodium silicate incorporated in the component A carry through to the final foam product.
Kristy does not disclose the component B comprising the fillers as presently claimed. However, the reactive fillers in the component A carry through to the final foam product. Therefore, lack of the reactive fillers in the intermediate component B is found irrelevant to determining patentability of the foam product claim. Since the silicone foam layer contains the fillers and their contents within the claimed ranges, the distinction in the intermediate component B will not affect the non-obviousness of the final foam product claim.
Given that a mixing ratio of A:B is 20:1 (paragraph 112), the silicone foam layer approximately includes 5-40 wt% of ATH, 5-30 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate. These overlap the claimed ranges.
Kristy teaches that the component A also includes a thermally insulating fillers comprising calcium carbonate (paragraph 72).
Kristy does not explicitly disclose (i) the component A and the component B, each comprising 1-15 wt% of perlite, and 1 to 20 wt% of calcium carbonate; and (ii) the silicone foam layer comprising a V-0 flammability rating as measured according to ASTM D3801.
Harper, however, discloses a silicone foam exhibiting superior flame-retardant properties, and comprising 2.5 wt% of glass fibers and 5.0 wt% of perlite and at least 5 ppm of platinum catalyst (abstract; and table 2, sample I).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include perlite and glass fibers disclosed in Harper in the silicone foam layer disclosed in Kristy motivated by the desire to enhance flame retardant properties for the multilayer composite.
Wu, however, discloses a silicone foam comprising a component A and a component B wherein the component A comprises at least one polyorganosiloxane having at least one vinyl group, at least one chemical blowing agent; and at least one catalyst; wherein the component B comprises at least one polyorganosiloxane having at least one vinyl group, at least one polyorganosiloxane having at least one SiH group, and at least one expandable graphite (paragraphs 11-18). The silicone foam further includes 2-40 wt% of additional filler including calcium carbonate, based on the total weight of the component A (paragraph 93). This overlaps the claimed range.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in a content of the calcium carbonate will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such a content of the calcium carbonate is critical or provides unexpected results.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the calcium carbonate of Kristy in the component A in an amount as disclosed in Wu, motivated by the desire to enhance flame retardant properties for the multilayer composite.
It appears that the combined disclosures of Kristy, Harper and Wu result in a multilayer composite meeting all structural limitations and chemistry required by the claims.
The resulting multilayer composite comprises: a flame-retardant layer, and a silicone foam layer comprising a component A and a component B. The component A contains 5-40 wt% of ATH, 5-40 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate, each based on the total weight of component A. Given that a mixing ratio of A:B is 20:1, the silicone foam layer approximately includes 5-40 wt% of ATH, 5-30 wt% of zinc borate, and 5-30 wt% of hydrous sodium silicate.
The resulting component A also includes 2-40 wt% of the calcium carbonate, 2.5 wt% of the glass fibers, and 5 wt% of the perlite.
Therefore, the examiner takes the position that the V0 flammability rating as measured according to ASTM D3801 would inherently be present to the multilayer composite as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kristy as applied to claim 1 above, further in view of US 2025/0162282 to Kagumba et al. (hereinafter “Kagumba”).
As to claim 11, Kristy does not explicitly disclose the flame-retardant layer comprising sepiolite and/or wollastonite.
Kagumba, however, discloses a laminate having thermal-protection and flame-retardant properties, comprising a flame-retardant layer, a porous layer and a structural layer disposed between the flame-retardant layer (figure 3). The porous layer is a foam layer or an aerogel layer (abstract; and paragraph 9). The flame-retardant layer comprises fillers including sepiolite (paragraph 57). The structural layer comprises a fiber-glass material (paragraphs 58 and 59). The laminate has a flammability rating compliant with at least one flammability standard of UL94 V0, V1, V2, HB, 5VA, and 5VB.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include sepiolite disclosed in Kagumba in the flame-retardant layer of Kristy, motivated by the desire to enhance the flame-retardant properties.
As to claim 12-14, Kristy does not explicitly disclose the multilayer composite comprising a structural layer disposed between the flame-retardant layer and the foam layer wherein the structural layer comprises a fiber-glass material.
Kagumba, however, discloses a laminate having thermal-protection and flame-retardant properties, comprising a flame-retardant layer, a porous layer and a structural layer disposed between the flame-retardant layer (figure 3). The porous layer is a foam layer or an aerogel layer (abstract; and paragraph 9). The flame-retardant layer comprises fillers including sepiolite (paragraph 57). The structural layer comprises a fiber-glass material (paragraphs 58 and 59). The laminate has a flammability rating compliant with at least one flammability standard of UL94 V0, V1, V2, HB, 5VA, and 5VB.
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Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to disposed a structural layer disclosed in Kaguma between the foam layer and the flame-retardant layer disclosed in Kristy, motivated by the desire to impart structural reinforcement of the multilayer composite.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights