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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/11/25 has been entered.
Response to Amendment
Amendments to the claims, filed on 12/11/25, have been entered in the above-identified application.
Any rejections made in the previous action, and not repeated below, are hereby withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1-4, 6, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al (US 2019/0136527 A1) in view of Katayama et al (JP 2020-078896 A) and What is Aerogel? (2020, herein after “Aerogel”).
Zheng teaches a thermal insulation sheet (e.g., composite board) comprising a base material in the form of a sheet (e.g., facer such as plastic (resin) film or aluminum film) and a thermal insulation layer arranged on at least one surface of the base material, wherein the thermal insulation layer comprises: a porous structure that has a skeleton composed of a plurality of particles connected to each other, has pores therein, and has a hydrophobic site at least on a surface out of the surface and inside of the porous structure (e.g., aerogel), and a binder (e.g., acrylic or other polymer binders) that connects the porous structures with each other; wherein the base material is a resin film (e.g., plastic film) or a metal film (e.g, aluminum film); wherein the thermal insulation layer further contains a reinforcing fiber (e.g., glass fibers); wherein the porous structure is a silica aerogel having a skeleton composed of a plurality of fine silica particles connected to each other (para 1, 22, 29-30, 39, 42-43, 54, 56).
Zheng teaches a particle size of between 100 to 200 microns (i.e., wherein the thermal insulation layer is produced using the porous structure having a 90% diameter (D90) of 100 to 200 microns in a particle size distribution) (para 30). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Zheng, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Zheng fails to suggest the base material having a thickness of 5 μm or more to 50 μm or less; and an elongation at break of 200% or more; and a ratio (E2/E1) of the elongation at break (E2) of the binder to the elongation at break (E1) of the base material is 3.1 or more to 30 or less; wherein the elongation at break of the base material is 150% or less; wherein the thermal insulation layer has a thickness of 0.2 mm or more to 1.2 mm or less; wherein the binder contains one or more selected from resin and rubber, and the binder has a glass transition temperature (Tg) of −20 °C or lower.
However, Zheng teaches its boards may be rolled around pipe for pipe insulation or be used for other applications (para 27, 38).
Katayama teaches a thermal insulation structure that may be used on pipes or be in sheet form which prevents powder dropping, has excellent thermal insulation property, and prevents dripping of dew condensation water; wherein the thermal insulation comprises a protective layer (e.g., urethane resin film) and a porous structure having a plurality of grains being connected to each other to form a skeleton, having pores in its inside, having a hydrophobic part at least on its surface among its surface and its inside, and a first aqueous binder (abstract, page 1-2); wherein the base material comprises resin or metal (page 3); wherein the aqueous binder comprises an aqueous emulsion binder, e.g., acrylic resin, urethane resin, and a mixture of acrylic resin and urethane resin; or rubber, e.g., styrene butadiene rubber (SBR), nitrile rubber, silicone rubber, urethane rubber, acrylic rubber and the like; and the binder component may be crosslinked with a crosslinking agent or the like (page 4-5); and the porous structure comprises silica aerogel (page 4).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to combine the thermal insulation structure with the composite boards of Zheng for composite boards or insulation which prevents powder dropping, has excellent thermal insulation property, and prevents dripping of dew condensation water.
Regarding the limitation “wherein a content of the porous structure in the thermal insulation layer is 80% by volume or more to 96% by volume or less when an entirety of the thermal insulation layer is 100% by volume;” Zheng teaches the aerogel greatly enhances the thermal insulation R-value of the resulting board; greatly minimizes heat or thermal energy transfer due to conduction; greatly minimize thermal energy transfer due to radiation; and minimizes heat or thermal energy transfer due to convention (i.e., convection) (para 23-26).
Aerogel teaches that aerogel is an open-celled, mesoporous, solid foam that is composed of a network of interconnected nanostructures and that exhibits a porosity (non-solid volume) of no less than 50%; and most aerogels exhibit somewhere between 90 to 99.8+% porosity; wherein inorganic aerogels are excellent thermal insulators (page 5). Aerogel further teaches that thermal conductivity is related to density (and therein porosity), and by adjusting the density the thermal conductivity may be adjusted (page 6).
Therefore, per the teachings of Aerogel it would have been obvious to form the aerogel of Zhen as modified by Katayama with the typical porosity of 90 to 99.8+%, since one of ordinary skill in the art would have been merely combining prior art elements (e.g., porosity of Aerogel with the aerogel of Zhen as modified by Katayama) according to known methods to yield predictable results (e.g., aerogel that is an excellent thermal insulator).
Aerogel teaches most aerogels exhibit somewhere between 90 to 99.8+% porosity (page 5). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Aerogel, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
In the alternative, per the combined teachings of Aerogel with Zhen as modified by Katayama, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the porosity of aerogel in the composite board to optimize its density, and therein its thermal conductivity, and thermal insulation R-value as well as minimize the heat or thermal energy transfer due to conduction, radiation, and convection.
Katayama teaches the use of protective layers (i.e., facers comprising resin) with a thickness of 10 µm to 100 µm; and the thermal insulation layer has a preferred thickness of 1 mm or less (page 5-6). These ranges substantially overlap that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the ranges taught by Katayama, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding the limitations “an elongation at break of 200% or more; and a ratio (E2/E1) of the elongation at break (E2) of the binder to the elongation at break (E1) of the base material is 3.1 or more to 30 or less;” “wherein the elongation at break of the base material is 150% or less;” and “wherein the binder contains one or more selected from resin and rubber, and the binder has a glass transition temperature (Tg) of −20 °C or lower;” Zhen as modified by Katayama and Aerogel suggests or would have otherwise rendered obvious to one of ordinary skill in the art at the time the structure, and composition of the thermal insulation sheet of the instant claims; so it is deemed to possess these properties and/or functions.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on "prima facie obviousness" under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art.
Response to Arguments
Applicant's arguments filed 12/11/25 have been fully considered but they are not persuasive.
Regarding the limitation “wherein a content of the porous structure in the thermal insulation layer is 80% by volume or more to 96% by volume or less when an entirety of the thermal insulation layer is 100% by volume;” Zheng teaches the aerogel greatly enhances the thermal insulation R-value of the resulting board; greatly minimizes heat or thermal energy transfer due to conduction; greatly minimize thermal energy transfer due to radiation; and minimizes heat or thermal energy transfer due to convention (i.e., convection) (para 23-26).
Aerogel teaches that aerogel is an open-celled, mesoporous, solid foam that is composed of a network of interconnected nanostructures and that exhibits a porosity (non-solid volume) of no less than 50%; and most aerogels exhibit somewhere between 90 to 99.8+% porosity; wherein inorganic aerogels are excellent thermal insulators (page 5). Aerogel further teaches that thermal conductivity is related to density (and therein porosity), and by adjusting the density the thermal conductivity may be adjusted (page 6).
Therefore, per the teachings of Aerogel it would have been obvious to form the aerogel of Zhen as modified by Katayama with the typical porosity of 90 to 99.8+%, since one of ordinary skill in the art would have been merely combining prior art elements (e.g., porosity of Aerogel with the aerogel of Zhen as modified by Katayama) according to known methods to yield predictable results (e.g., aerogel that is an excellent thermal insulator).
Aerogel teaches most aerogels exhibit somewhere between 90 to 99.8+% porosity (page 5). This range substantially overlaps that of the instant claims. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Aerogel, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
In the alternative, per the combined teachings of Aerogel with Zhen as modified by Katayama, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the porosity of aerogel in the composite board to optimize its density, and therein its thermal conductivity, and thermal insulation R-value as well as minimize the heat or thermal energy transfer due to conduction, radiation, and convection.
Regarding the fiber content of Zheng, this argument is not persuasive, because Zhen teaches its aerogel containing construction boards have a low fiber content (e.g., 1 weight percent of coarse glass fibers and 10 weight percent of glass microfibers) (para 4) and further suggest a more porous and lower density board is desirable for sound absorption (para 70).
Conclusion
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783