DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 4-12, and 14-16 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claim(s) contains subject matter that was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. In particular, claim 1 now recites a porous structure that “is hydrophobic”. Although the instant disclosure provides support for a porous structure that has a hydrophobic site (Applicant’s published application, par. 33), there is no teaching of the material, as a whole, being hydrophobic as is now claimed. Therefore, the claim requirement appears to constitute new matter. Appropriate correction and/or explanation are required.
Claims 4-12 and 14-16 are also rejected under 35 U.S.C. 112(a) because they depend from and require all of the limitations of claim 1.
The rejections made under 35 U.S.C. 112(b) in the previous Office Action are withdrawn in view of Applicant’s amendment, filed March 27, 2026.
Claim Rejections - 35 USC § 102
The rejections made under 35 U.S.C. 102 in the previous Office Action are withdrawn in view of Applicant’s amendment, filed March 27, 2026.
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.
Claims 1, 4-9, 11, 12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Imae (US PG Pub. No. 2014/0057083) in view of Oya (US PG Pub. No. 2022/0018485)
Regarding claims 1, 11, 12, and 16, Imae teaches a heat insulating member comprising a heat insulating layer containing hydrophobic aerogel particles (i.e. “a porous structure that has a plurality of particles connected to form a skeleton, has pores on an inside, and is hydrophobic” and that “has a silica aerogel in which a plurality of fine silica particles is connected to form a skeleton”), particles of an infrared interacting agent (i.e. “infrared shielding particles”), which may be SiC particles, and inorganic fibers (Abstract; par. 24, 26, 31 45, 48, 50).
Imae exemplifies various compositions including components discussed above (Table 2; par. 104). With the components of the composition being normalized to 100 wt. %, Example 11 includes about 66.5 wt. % silica aerogel, about 6.6 wt. % glass fibers having a length of 6 mm, and 10 wt. % SiC particles (Table 2, par. 85, 104).
Although Imae does not explicitly teach an average particle diameter, D50, for the aerogel particles in his product, which might be considered a difference from the current invention, he does teach that the aerogel particles in his product preferably have a particle diameter in the range of 10 to 500 µm (par. 26). Therefore, it would have been obvious to one of ordinary skill in the art to configure the aerogel particles (i.e. “porous structure”) in Imae’s product, including the product discussed above, to have a particle diameter in the range of 10 to 500 µm because Imae teaches that such a range is preferable. As it would have been obvious to configure the product to have a particle diameter in the taught range, it also would have been obvious to select any subset of particle diameters within that range (see MPEP 2144.05), including selecting to only include particles having sizes in the range of 10 to 100 µm, because Imae teaches such a range to be appropriate and preferred. A group of particles only having diameters in the range of 10 to 100 µm also has an average particle diameter, D50, in the range of 10 to 100 µm.
The teachings of Imae differ from the current invention in that a SiC particle size is not disclosed. However, Imae does teach that the SiC particles are intended to serve as an infrared interacting agent that can absorb or reflect infrared radiation (par. 48). Oya also teaches a heat insulating member including SiC particles, which serve as an infrared absorber (par. 88). Oya discloses that his infrared absorber may have an average particle diameter in the range of 0.5 to 4 µm and exemplifies using SiC particles with a D50 particle diameter (i.e. “average” particle diameter) of 1.8 µm (par. 86, 150). Therefore, it would have been obvious to one of ordinary skill in the art to utilize SiC particles having an average particle diameter in the range of 0.5 to 4 µm, including having a D50 particle diameter of 1.8 µm, because Imae teaches including SiC particles as an infrared absorber in his product and Oya discloses that SiC particles with an average particle diameter of 0.5 to 4 µm, including with a D50 particle diameter of 1.8 µm, are effective as an infrared absorber for heat insulating products.
The teachings of Imae might be considered to differ from the current invention in that the “standard number” of aerogel particles in his product is not discussed. However, given that the “standard number” is a measure of the distribution of “porous structure”, i.e. aerogel particles, within the heat insulating layer, the standard number of aerogel particles in a material necessarily depends on the quantity of aerogel particles in the material. Imae discloses that the heat insulating property of a material decreases as the relative content (i.e. concentration) of aerogel relatively decreases (par. 50), thereby demonstrating that the aerogel particle content is a result-effective variable. As such, it would have been obvious to one of ordinary skill in the art to select an appropriate aerogel particle content for the prior art heat insulating composition, including selecting an aerogel particle content that results in a “standard number” of greater than 10, according to the required/desired heat insulating property of the material. As noted above, Imae also teaches or renders obvious making a composition to have aerogel particles commensurate in size and relative quantity with that of the instant claims. Therefore, the product rendered obvious the Imae and Oya is expected to have a “standard number” commensurate with that of the instant claims.
Regarding claims 4 and 5, as discussed above, Imae and Oya’s SiC particles may have an average particle diameter of 0.5 to 4 µm, including having a D50 of 1.8 µm. As evidenced by Applicant’s disclosure, SiC particles have a refractive index of 2.0 or more in a visible wavelength range (Applicant’s published application, par. 38). Oya also discloses that the infrared absorbing particles, which includes the SiC particles, should have a thermal emissivity (i.e. radiation rate of infrared wavelengths) of 0.6 to 9 and specifically teaches SiC particles with sizes in the disclosed range having an emissivity of 0.82 (par. 130, 150). Therefore, the prior art SiC particles are “high radiation rate” particles.
Regarding claims 6-8, the composition for the heat insulator of Example 11 also includes an organic, nonionic surfactant (i.e. “organic additive”) (Table 2; par. 85, 102).
Regarding claim 9, the teachings of Imae might be considered to differ from the current invention in that the product discussed above only includes a nonionic surfactant. However, Imae further teaches that cationic, anionic, or zwitterionic surfactants, in addition to nonionic surfactants, may be used in the product (par. 42). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize both a nonionic surfactant and an ionic surfactant in the composition for Imae’s heat insulating layer because Imae explicitly teaches that both nonionic and ionic surfactants are appropriate for his product.
Regarding claim 15, the teachings of Imae may be considered to differ from the current invention in that the heat insulator discussed above is not taught to be laminated with another layer. However, Imae does teach multilayered heat insulating members and discloses that it is preferable for a multilayered heat insulator to include a first insulating layer without an infrared interacting agent and a second heat insulating layer including the an infrared interacting agent so that the first layer can face a side of lower temperature and the second layer can face a heat source, wherein the second layer can absorb and/or reflect thermal energy (par. 77, 79). Accordingly, it would have been obvious to one of ordinary skill in the art to laminate the heat insulator discussed above to another heat insulating layer that does not include an infrared interacting agent because Imae teaches that such a configuration is preferable and in order to make an insulator that is appropriate for both facing a low-temperature side and a heat source, wherein the thermal energy can be absorbed or reflected.
Claims 1, 4, 5, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Oya alone or, optionally, in view of Imae.
Regarding claims 1, 12, 15, and 16, Oya teaches a heat insulating member comprising a heat insulating layer consisting of a mixture of hydrophobic silica aerogel particles (i.e. “a porous structure that has a plurality of particles connected to form a skeleton, has pores on an inside, and is hydrophobic” and that “has a silica aerogel in which a plurality of fine silica particles is connected to form a skeleton”), silica (i.e. inorganic) fibers, and an infrared absorber “(i.e. “infrared shielding particles”), which is preferably SiC particles (Abstract; par. 16, 20, 44, 79, 88, 134). The SiC particles may have an average diameter in the range of 0.5 to 4 µm and Oya exemplifies using SiC particles with a D50 particle diameter (i.e. “average” particle diameter) of 1.8 µm (par. 86, 150).
The silica aerogel and silica fibers are present in Oya’s composition in a weight ratio of 2:8 to 8:2 (par. 81). The content of silica fibers to infrared absorber has a weight ratio of 9:1 to 5:5, and the ratio of silica fibers to the total amount of aerogel and infrared absorber is in the range of 9:1 to 1:9 (par. 91).
Although Oya does not explicitly teach an average particle diameter, D50, for the aerogel particles used in his product, which might be considered a difference from the current invention, he does teach that the 90 % or more of the aerogel particles in his product preferably have a particle size in the range of 10 to 500 µm (par. 70). Therefore, it would have been obvious to one of ordinary skill in the art to configure 90 % or more, including all, of the aerogel particles (i.e. “porous structure”) in Oya’s product, including the product discussed above, to have a particle diameter in the range of 10 to 500 µm because Oya teaches that such a range is preferable. As it would have been obvious to configure the product to have an aerogel particle diameter in the taught range, it also would have been obvious to select any subset of particle diameters within that range (see MPEP 2144.05), including selecting to only include particles having sizes in the range of 10 to 100 µm, because Oya teaches such a range to be appropriate and preferred. A group of particles only having diameters in the range of 10 to 100 µm also has an average particle diameter, D50, in the range of 10 to 100 µm.
Although Oya does not explicitly exemplify a heat insulating layer including all of the above components in the recited proportions, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to make such a layer because Oya explicitly teaches each component and proportion to be appropriate for his product. The instantly claimed composition is overlapped or encompassed and rendered obvious by Oya. See MPEP 2144.05. For example, Oya renders obvious an insulating layer including 70 wt. % hydrophobic silica aerogel particles having a D50 in the range of 10 to 100 µm, 15 wt. % SiC particles having an average diameter in the range of 0.5 to 4 µm, including a D50 of 1.8 µm, and 25 wt. % inorganic fibers, which has a total of 100 % by mass and meets each of conditions (a), (b), (c), and (d).
The teachings of Oya might be considered to differ from the current invention in that the “standard number” of aerogel particles in his product is not discussed. However, given that the “standard number” is a measure of the distribution of “porous structure”, i.e. aerogel particles, within the heat insulating layer, the standard number of aerogel particles in a material necessarily depends on the quantity of aerogel particles in the material. As noted above, Oya teaches or renders obvious making a composition to have aerogel particles commensurate in size and relative quantity with that of the instant claims. Therefore, the product rendered obvious by Oya is expected to have a “standard number” commensurate with that of the instant claims.
Imae also discloses that the heat insulating property of a material decreases as the relative content (i.e. concentration) of aerogel relatively decreases (par. 50), thereby demonstrating that the aerogel particle content is a result-effective variable. As such, it would have been obvious to one of ordinary skill in the art to select an appropriate aerogel particle content for the prior art heat insulating composition, including selecting an aerogel particle content that results in a “standard number” of greater than 10, according to the required/desired heat insulating property of the material.
Regarding claims 4 and 5, as discussed above, Oya’s SiC particles may have an average particle diameter of 0.5 to 4 µm, including having a D50 of 1.8 µm. As evidenced by Applicant’s disclosure, SiC particles have a refractive index of 2.0 or more in a visible wavelength range (Applicant’s published application, par. 38). Oya also discloses that the infrared absorbing particles, which includes the SiC particles, should have a thermal emissivity (i.e. radiation rate of infrared wavelengths) of 0.6 to 9 and specifically teaches SiC particles with sizes in the disclosed range having an emissivity of 0.82 (par. 130, 150). Therefore, the prior art SiC particles are “high radiation rate” particles.
Regarding claim 14, as Oya discloses that the heat insulating layer discussed above consists of silica aerogel particles, silica fibers, and an infrared absorber (par. 134), a binder is excluded from being present in the composition. Additionally, if Oya’s teachings were construed as not excluding a binder from the above-discussed composition, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to omit a binder because Oya explicitly teaches that the binder is merely optional (Abstract).
Claims 1, 5, 11, 12, and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN 113666675 A), cited herein according to the English language translation filed on with the Information Disclosure Statement (“IDS” submitted on 11/5/24, alone or, optionally, in view of Imae.
Regarding claims 1, 12, 15, and 16, Xu teaches a heat insulating member comprising a substrate laminated to a heat insulating layer containing, in terms of parts by mass, 50 to 80 parts of an insulating filler, which may be a hydrophobic silica aerogel (i.e. “a porous structure that has a plurality of particles connected to form a skeleton, has pores on an inside, and is hydrophobic” and that “has a silica aerogel in which a plurality of fine silica particles is connected to form a skeleton”), 5 to 20 parts of an infrared opacifying agent (i.e. “infrared shielding particles”), which may be silicon carbide particles, and 1 to 10 parts of fibers, which may be inorganic (Abstract; par. 8, 10-13).
Although Xu does not explicitly teach an average particle diameter, D50, for the aerogel particles used in his product, which might be considered a difference from the current invention, he does teach that the aerogel particles in his product have a particle size in the range of 1 to 50 µm (par. 10). Therefore, it would have been obvious to one of ordinary skill in the art to configure the aerogel particles (i.e. “porous structure”) in Xu’ product, including the product discussed above, to have a particle diameter in the range of 1 to 50 µm because Xu teaches that such a range is appropriate. As it would have been obvious to configure the product to have a particle diameter in the taught range, it also would have been obvious to select any subset of particle diameters within that range (see MPEP 2144.05), including selecting to only include particles having sizes in the range of 10 to 50 µm, because Xu teaches such a range to be appropriate. A group of particles only having diameters in the range of 10 to 50 µm also has an average particle diameter, D50, in the range of 10 to 50 µm.
Although Xu does not explicitly teach an average, D50, SiC particle (i.e. “infrared shielding particle”) diameter, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to configure all of the SiC particles in Xu’s product to have a size, or range of sizes, within the range of 1 to 50 µm because Xu explicitly teaches the range to be appropriate (par. 12). As it would have been obvious to configure the product to have a SiC particle diameter in the taught range, it also would have been obvious to select any subset of particle diameters within that range (see MPEP 2144.05), including selecting to only include particles having sizes in the range of 10 to 22 µm, because Xu teaches such a range to be appropriate. A group of particles only having diameters in the range of 10 to 22 µm also has an average particle diameter, D50, in the range of 10 to 22 µm.
Although Xu does not explicitly exemplify a single heat insulating layer including all of the above components in the recited proportions, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to make such a layer because Xu explicitly teaches each component and proportion to be appropriate for his product. The instantly claimed composition is overlapped or encompassed and rendered obvious by Xu. See MPEP 2144.05. For example, Xu renders obvious an insulating layer including 80 wt. % hydrophobic silica aerogel particles, 15 % SiC particles, and 5 % inorganic fibers, which has a total of 100 % by mass and meets each of conditions (a), (b), (c), and (d).
The teachings of Xu might be considered to differ from the current invention in that the “standard number” of aerogel particles in his product is not discussed. However, given that the “standard number” is a measure of the distribution of “porous structure”, i.e. aerogel particles, within the heat insulating layer, the standard number of aerogel particles in a material necessarily depends on the quantity of aerogel particles in the material. As noted above, Xu teaches or renders obvious making a composition to have aerogel particles commensurate in size and relative quantity with that of the instant claims. Therefore, the product rendered obvious by Xu is expected to have a “standard number” commensurate with that of the instant claims.
Imae also discloses that the heat insulating property of a material decreases as the relative content (i.e. concentration) of aerogel relatively decreases (par. 50), thereby demonstrating that the aerogel particle content is a result-effective variable. As such, it would have been obvious to one of ordinary skill in the art to select an appropriate aerogel particle content for the prior art heat insulating composition, including selecting an aerogel particle content that results in a “standard number” of greater than 10, according to the required/desired heat insulating property of the material.
Regarding claim 5, as discussed above, Xu’s product includes SiC particles. As evidenced by Applicant’s disclosure SiC particles have a high refractive index of 2.0 or more in a visible wavelength range (Applicant’s published application, par. 38).
Regarding claim 11, the inorganic fibers in Xu’s product may have a length of 0.5 to 5 mm (par. 13). The instantly claimed fiber length is encompassed and rendered obvious by Xu. See MPEP 2144.05.
Regarding claim 14, Xu does not teach including a binder in his insulating layer composition (i.e. the heat insulating layer “does not have a binder”).
Claims 1, 6-12, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Samanta (US PG Pub. No. 2014/0273701) alone or, optionally, in view of Paar (Paar, A.; “Particle Size Analysis Methods: Dynamic Light Scattering Vs. Laser Diffraction”, 2020, p. 1-8) and/or Imae.
Regarding claims 1, 12, and 16, Samanta teaches a heat insulating member comprising a heat insulating layer containing greater than 20 wt. % of aerogel particles, which may be a hydrophobic silica aerogel (i.e. “a porous structure that has a plurality of particles connected to form a skeleton, has pores on an inside, and is hydrophobic” and that “has a silica aerogel in which a plurality of fine silica particles is connected to form a skeleton”), greater than 10 wt. % parts of fibers, which may be inorganic, and an infrared opacifier (i.e. “infrared shielding particles”), which may be SiC particles, in an amount of 2 to 150 wt.% of that of the aerogel (Abstract; par. 15, 29, 38, 44).
Although Samanta does not explicitly teach an average particle diameter in terms of a D50 value, which might be considered a difference from the current invention, he does teach that the aerogel particles in his product may have an average particle diameter (i.e. not expressed as “D50”) of 0.01 to 1 mm (i.e. 10 to 1000 µm) and the SiC particles may have an average particle size of 500 nm (i.e. 0.5 µm) to 6 µm (par. 30, 44). As such, it would have been obvious to one of ordinary skill in the art to configure Samanta’s product to include aerogel particles having an average diameter in the range of 10 to 1000 µm and SiC particles to have a size, or diameter, in the range of 0.5 to 6 µm according to any reasonable measure because Samanta explicitly teaches such average diameter/size ranges to be appropriate but does not disclose how the measurements were performed. The particle diameters are overlapped or encompassed and rendered obvious by Samanta’s teachings. See MPEP 2144.05. Even if a different measure of average diameter was used than that of the instant claims, the claimed ranges are still expected to be at least partially overlapped and rendered obvious (see MPEP 2144.05) by Samanta’s ranges because the claimed aerogel particle diameter range falls completely within Samanta’s range and the Samanta’s taught SiC particle size range falls completely within the claimed SiC particle diameter range.
Paar further teaches that D50 should be considered to get a more accurate “average particle size” when analyzing the sizes of particles (p. 3). Therefore, it would have been obvious to one of ordinary skill in the art to select average particle sizes for Samanta’s product according to the D50 value, including selecting aerogel particles having a D50 in the range of 0.01 to 1 mm and selecting SiC particles having a D50 in the range of 0.5 to 6 µm, because Paar teaches that it is a more accurate method of assessing “average particle size”. The instantly claimed particle size ranges are overlapped or encompassed and rendered obvious by Samanta and Paar. See MPEP 2144.05.
Although Samanta does not explicitly exemplify a heat insulating layer including all of the above components in the recited proportions, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to make such a layer because Samanta explicitly teaches each component and proportion to be appropriate for his product. The instantly claimed composition is overlapped or encompassed and rendered obvious by Samanta. See MPEP 2144.05. For example, Samanta renders obvious an insulating layer including 70 wt. % hydrophobic silica aerogel particles, 15 wt. % SiC particles, and 25 wt. % inorganic fibers, which has a total of 100 % by mass and meets each of conditions (a), (b), (c), and (d).
The teachings of Samanta might be considered to differ from the current invention in that the “standard number” of aerogel particles in his product is not discussed. However, given that the “standard number” is a measure of the distribution of “porous structure”, i.e. aerogel particles, within the heat insulating layer, the standard number of aerogel particles in a material necessarily depends on the quantity of aerogel particles in the material. As noted above, Samanta and, optionally, Paar teach or render obvious making a composition to have aerogel particles commensurate in size and relative quantity with that of the instant claims. Therefore, the product rendered obvious by Samanta and, optionally, Paar is expected to have a “standard number” commensurate with that of the instant claims.
Imae also discloses that the heat insulating property of a material decreases as the relative content (i.e. concentration) of aerogel relatively decreases (par. 50), thereby demonstrating that the aerogel particle content is a result-effective variable. As such, it would have been obvious to one of ordinary skill in the art to select an appropriate aerogel particle content for the prior art heat insulating composition, including selecting an aerogel particle content that results in a “standard number” of greater than 10, according to the required/desired heat insulating property of the material.
Regarding claim 5, as discussed above, Samanta’s product includes SiC particles. As evidenced by Applicant’s disclosure SiC particles have a high refractive index of 2.0 or more in a visible wavelength range (Applicant’s published application, par. 38).
Regarding claims 6-10, the composition for Samanta’s heat insulating layer may include at least one organic surfactant (i.e. an “organic additive”), which may be one or more of a nonionic surfactant and an ionic surfactant (par. 33, 34). In addition to the inorganic fibers discussed above, Samanta’s product may also include polyvinyl alcohol (PVA) fibers (i.e. an “organic additive”). Although Samanta does not explicitly exemplify a heat insulator comprising a nonionic and an ionic surfactant and/or PVA fibers in the composition discussed above, which might be considered a difference from the current invention, it would have been obvious to one of ordinary skill in the art to include a nonionic surfactant and an ionic surfactant and/or PVA fibers in the composition because Samanta explicitly teaches that each are appropriate for the disclosed product. As evidenced by Applicant’s disclosure, PVA is a material that has a heating residue of 50 % by mass or less at 600 °C (Applicant’s published application, par. 48).
Regarding claim 11, the fibers, including the inorganic fibers, in Samanta’s product have a length of less than 2 cm or even less than 1 cm (par. 40). The instantly claimed fiber length overlapped and rendered obvious or anticipated by Samanta. See MPEP 2144.05.
Regarding claim 15, although Samanta does not explicitly teach laminating a layer with the composition discussed above to another layer (i.e. “substrate”), it would have been obvious to one of ordinary skill in the art to make such a structure, e.g. including the heat-insulating layer discussed above and one more cover materials (i.e. “substrate” layers), because Samanta explicitly discloses that his heat insulating layers may be laminated to other materials to form composites that can exhibit different properties, such as improved dust retention, reflectivity, and strength (par. 59).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Xu and, optionally, Imae, or over Samanta and, optionally, Paar and/or Imae, as applied to claim 1 above, and further in view of Oya.
Regarding claim 4, the teachings of Xu and Samanta differ from the current invention in that neither teaches radiation rates of their SiC particles (i.e. “infrared shielding particles”). However, as noted above, each of the taught products is a heat insulator and the SiC particles in each is intended to interact with infrared radiation. Oya teaches a similar heat insulating member including aerogel particles, fibers, and infrared absorbing particles (Abstract; par. 20). Oya teaches that the infrared absorbing particles are preferably SiC, demonstrate thermal emissivity (i.e. radiation rate of infrared wavelengths) of 0.6 to 0.9, and that such particles absorb and emit infrared rays and work as an effective heat insulating material for keeping temperatures relatively high where the rate of radiant heat is relatively high and predominant, thereby providing an advantageous heat retaining effect. Therefore, it would have been obvious to one of ordinary skill in the art to utilize SiC particles that demonstrate thermal emissivity (i.e. infrared radiation rate) of 0.6 to 0.9 as the SiC particles in the prior art heat insulators because Oya teaches that such particles work as an effective heat insulating material that provides an advantageous heat retaining effect. Therefore, the prior art SiC particles are “high radiation rate” particles.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Oya and, optionally, Imae, as applied above, and further in view of Samanta.
Regarding claims 6-9, the teachings of Oya differ from the current invention in that he does not discuss “organic additives” as claimed. However Oya does teach using surfactants in the composition (par. 105). Samanta also teaches a heat insulating layer and discloses that its composition may include at least one organic surfactant (i.e. an “organic additive”), which may be one or more of a nonionic surfactant and an ionic surfactant, in order to aid with dispersibility (par. 33, 34)
Response to Arguments
Applicant's arguments filed March 27, 2026 have been fully considered but they are not persuasive.
Applicant has argued that the claimed invention is distinguished over the cited prior art because none of the cited references teach average particle diameters in terms of D50 for their silica aerogel particles. However, it would have been obvious to configure each to include aerogel particles with a D50 value in or overlapping and rendering obvious (see MPEP 2144.05) the claimed range for the reasons discussed above.
Applicant has further argued that the claim requirement of a “standard number” of greater than 10 distinguishes the claimed invention over the prior art because none of the cited references teach a “standard number” or a D50 particle diameter value for the aerogel particles in their materials. Applicant has also argued that it cannot be assumed that a skilled artisan would select an appropriate aerogel content for their heat insulating compositions that would achieve the recited “standard number” because the cited references do not teach D50 values. However, as just noted, it would have been obvious to configure the prior art products to include aerogel particles rendering obvious the claimed D50 range for the reasons discussed above. As discussed in the rejections, the “standard number” depends on the aerogel particle diameter and content within a material. Therefore, a materials with a large number of smaller aerogel particles or a small number of larger aerogel particles can have a similar “standard number”. As discussed above, it would have been obvious in view of Imae’s teachings to select an appropriate aerogel content, including selecting a content that achieves a “standard number” of 10 or more, according to the required/desired heat insulating property of the materials. Therefore, even without knowing the D50 value of the contained aerogel particles, a material with a standard number meeting the claim requirement is rendered obvious by the prior art.
Applicant has also argued that materials with the claimed combination of standard number, D50 value of porous structure, and D50 value of infrared shielding particles achieve particularly improved results. However, as discussed above, the prior art renders obvious a material that meets each of the claim requirements. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). To the extent that Applicant’s arguments are an assertion of unexpected results, it is noted that objective evidence of nonobviousness must be commensurate in scope with the claims for which the evidence is offered to support and that claimed ranges must be established to have criticality. See MPEP 716.02(d).
As claim 1 does not require a specific type of “porous structure”, a specific type of “inorganic fibers”, or specific type “infrared shielding particles”, it is not commensurate with any products that have been shown to demonstrate improved results. It is also unclear, based on the data provided in Table 1 that any of the claimed ranges have criticality.
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.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
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