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. DETAILED ACTION Insertion of continuing data of European and Great Britain Foreign Priority documents at beginning of the specification is suggested. SPECIFICATION OBJECTION A subsection, “BRIEF DESCRIPTION OF DRAWING”, is missing from the page 4 of the specification . 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 appl icant regards as his invention. Claim 2 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. Claim 1 recites that a composition is comprised curable resin, microspheres, at least one additive and a catalyst. Thus, the recited addition of the catalyst to the composition already comprising the catalyst is confusing. Claim Rejections - 35 USC § 102 and 35 USC § 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. Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fultz (US 4,311,541). Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. Fultz teaches a syntactic foam panel obtained by a composition comprising phenolic resin, clay (i.e., additive) , expanded spherical polystyrene beads ( microsphere s) and (toluene sulfonic acid (i.e., catalyst ) in line 35 of col. 6 to line 33 of col. 7. The instant claims 19 and 20 are silent as to a size of the panel and thus the syntactic foam panel taught by Fultz , although it was not cut, would meet the invention. Claims 19 and 20 are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Orpin (US 2004/0102534 A1) equivalent to EP 1420042 A1 (May 19, 2004) . Note that a n invention in a product-by-process is a product, not a process. See In re Brown , 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe , 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. Orpin teaches a syntactic foam panel obtained by a composition comprising phenolic resin, wet microsphere, glass fibers (i.e., additive) and catalyst in example 5. The instant claims 19 and 20 are silent as to a size of the panel and thus the syntactic foam panel taught by Orpin, although it was not cut, would meet the invention. Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/136878 A1 (Aug. 17, 2017). Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. WO teaches a syntactic foam panel obtained by a composition comprising phenolic resin, wet microsphere, polystyrene particles (i.e., additive) and catalyst in example 1. The instant claims 19 and 20 are silent as to a size of the panel and thus the syntactic foam panel taught by Orpin, although it was not cut, would meet the invention. Claims 1-9 , 11, 14, 15 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/136878 A1 (Aug. 17, 2017). WO teaches a foam obtained from a composition comprising expanded polystyrene particles (i.e., additive), phenolic resin , thermoplastic microsphere s and catalyst in example 1. WO teaches a method in Figure1 in which the flowing steps are disclosed. Blend expanded polystyrene particles , phenolic resin and thermoplastic microspher e , Fill mold and compress. Cure Demold and dry. Cutting. The instant invention further recites cutting panels before drying the panels over WO. It would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer. Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to cut the syntactic foam panel of the syntactic foam panel taught by the example 5 of Orpin with the disclosure of GB before drying since it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer absent showing otherwise. Regarding claim 2 , WO teaches adding the catalyst a mixture comprising the polystyrene particles and phenolic resin in [00118]. Further mixing of a mixture comprising the catalyst in order to obtain a homogeneous composition would have been obvious. Regarding claim 3, it would be obvious to obtain panels having the same dimension after cutting in order to produce mass panels having the same dimensions. Regarding claim 4, utilization of multiple molds in order to produce mass panels would have been obvious to one skilled in the art and a molding industry. Regarding claim 5, WO teaches post-curing at 80 o C in [0066] to remove moisture and residual formaldehyde. Regarding claim 6, WO teaches a density of up to 50 kg/m3 in [0077] Regarding claim 7, WO teaches the syntactic foam panel in the example 5 obtained from the same components sued in the instant claim 1 and having the instantly recited density in claim 6. Thus, the syntactic foam panel taught by the examples 1-3 of WO would be expected to meet claim 7. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from the examples 1-3 of WO. See In re Best , 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC , 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc ., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.01. Regarding the recited sealant of claim 8, utilization of the sealant on the foam panel taught by WO in order to provide at least a smooth surface would be expected to be exercised by one skilled in the art since the surface would be expected to have protruded microspheres as well as broken microspheres having void. Regarding claim 11, WO teaches phenolic resin in the examples 1-3. Regarding claim 14, WO teaches other fillers such as glass fiber in [0045]. Regarding claim 1 5 , WO teaches utilization of expanded polystyrene in the examples 1-3 which would meet the recited polymeric foam. Regarding claim 18, the recited cut panels of 4 to 8 pieces would be dependent on a size of an initial mold and a desired size of a final panel which would have been obvious. Regarding claims 19 and 20, the foamed block and pieces of the block after cutting would meet claims 19 and 20. Claim s 1 -9 , 11, 14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Orpin (US 2004/0102534 A1) in view of GB 1,414,506 (Nov. 19, 1975) . Orpin teaches a composition comprising phenolic resin, wet microsphere, glass fibers (i.e., additive) and catalyst and curing in a mold thereof in example 5. The example 5 further teaches that the syntactic foam panel is released and dried/post-cured in a recirculating oven at 80 o C yielding a density of about 50 kg/m 3 . The panel would be obtained by a cuboid shaped mold inherently as evidenced by a coffin mold taught in [0119]. The instant invention further recites cutting panels before drying the panels over Orpin. GB teaches cutting of cured panels in example 9. Thus, it would have been obvious to cut the syntactic foam panel taught by the example 5 with the disclosure of GB in order to obtain a desired size. Regarding the recited drying panels after the cutting of cured panels of claim 1, it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer . Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to cut the syntactic foam panel of the syntactic foam panel taught by the example 5 of Orpin with the disclosure of GB before drying since it would be expected to be easier to cut non-dried panels than the dried panel since non-dried panels would be softer absent showing otherwise. Regarding claim 2, the example 5 of Orpin teaches further mixing of a composition after blending the catalyst. Regarding claim 3 , it would be obvious to obtain panels after cutting in order to produce mass panels having same dimensions. Regarding claim 4 , utilization of multiple molds in order to produce mass panels would have been obvious to one skilled in the art and a molding industry. Regarding claim 5 , the example 5 of Orpin teaches dr ying /post-cur ing in a recirculating oven at 80 o C . Regarding claim 6 , the example 5 of Orpin teaches a density of about 50 kg/m 3 . Orpin further teaches various values of density b y utilizing different amounts of the microsphere in the example 4 and 5. Regarding claim 7, Orpin teaches the syntactic foam panel in the example 5 obtained from the same components s ued in the instant claim 1 and having the instantly recited density in claim 6. Thus, the syntactic foam panel taught by the example 5 would be expected to meet claim 7. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from th e example 5 of Orpin . See In re Best , 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC , 401 F.2d 574, 579 (6th Cir. 1968). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure, Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.01. Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald , 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best , 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183. Regarding the recited sealant of claim 8 , utilization of the sealant on the foam panel taught by Orpin in order to provide at least a smooth surface would be expected to be exercised by one skilled in the art since the surface would be expected to have protruded microspheres and glass fibers as well as broken microspheres having void. Regarding claim 9 , Orpin teaches utilization of steel skin in [01020] and thus further utilization of the steel skin on the foam panel of the example 5 in order to provide streangth would have been obvious. Further, GB teaches further lamination of the syntactic foam with polyester impregnated glass mat in the example 9 meeting claim 9. Regarding claim 11 , Orpin teaches phenolic resin in the example 5. Regarding claim 1 4 , Orpin teaches glass fiber in the example 5. Regarding claim 16 , Orpin teaches dry unexpanded Expancel grade 551DU and wet expanded Expancel grade 551WE in [0043]. Thus, utilization of a mixture of 551DU and 551WE would have been obvious to one skilled in the art. See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti , 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123. Regarding claim 17, w hen patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05. Orpin further teaches different temperature s for the expansion of the 551 grade and thus utilization of different amounts of 551DU and 551E in order to adjust a density of a final foam would have been obvious. Regarding claim 1 8 , the recited cut panels of 4 to 8 pieces would be dependent on a size of an initial mold and desired size of a final panel which would have been obvious. Regarding claims 19 and 20, the syntactic foam panel taught by Orpin and pieces of the block after cutting thereof would meet claims 19 and 20. Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/136878 A1 (Aug. 17, 2017) as applied to claim s 1-9, 11, 14, 15 and 18-20 above, and further in view of Machine translated JP 2004521975 A (July 22, 2004) . Regarding claims 12 and 13, JP teaches a polymer composite foam in abstract and utilization phenol- or furfuryl alcohol- based resin in [0022]. Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art well known furfuryl alcohol- based resin used for obtaining the polymer composite foam taught by JP in WO since JP teaches and equates phenol- or furfuryl alcohol- based resin absent showing otherwise. Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp ., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07. The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc ., 550 U.S. 398, 416 (2007). MPEP 2141. CLAIM OBJECTION Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims since none of the prior art of the record in any combination teaches utilization of a gl a ss reinforced phenolic top-skin on a polymer composite foam. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT TAE H YOON whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-1128 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Mon-Fri . 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 Robert Jones can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT (571)270-7733 . 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. /TAE H YOON/ Primary Examiner, Art Unit 1762