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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/20/2026 has been entered.
Claims 1, 7, 12-14, 21, 22, 30, 32, 34, and 36-45 are currently with claims 2-6, 8-11, 15-20, 23-29, 31, 33, and 35 being canceled. Claims 1, 7, 12-14, 21, 22, 30, 32, 34, and 36-45 are rejected.
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 30, 32, 34, and 36-38 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.
“During examination, after applying the broadest reasonable interpretation to the claim, if the metes and bounds of the claimed invention are not clear, the claim is indefinite and should be rejected. Parkard, 752 F .3d at 1310.”
“If the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C 112, second paragraph is appropriate.” (MPEP 2173.02, I).
The claim looks ambiguous because a person having ordinary skill in the art (PHOSITA) could construe the alkaline earth silicate matrix as a particle matrix which is beyond the scope of the claimed invention. However, according to Applicant’s disclosure, the alkaline earth silicate matrix refers to the fiber matrix. Since the alkaline earth silicate matrix could be interpreted with more than one reasonable interpretation, and said more than one reasonable interpretation going beyond the scope of the claimed invention, the claim is rendered indefinite.
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, 7, 12-14, and 39-41 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2 448 901 to Mellersh et al. (hereinafter “Mellersch”) in view of WO 2014/177850 to Murray, and US 2008/0167412) to Elgimiabi et al. (hereinafter “Elgimiabi”).
As to claims 1, 7, 12-14, and 39-41, Mellersh discloses a thermal insulation structure comprising three layers: an inner tie coat, a foam insulating layer and an outer protective layer wherein each of three layers is formed by the reaction of a cold cure phenolic resin and a partial phosphate ester (abstract). The thermal insulation structure is applied to a substrate (page 1).
Mellersh does not explicitly teach each of three layers being formed by the reaction of a furan or furfuryl alcohol resin, and a partial phosphate ester; nor does the foam insulating layer first material comprise (i) a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% by weight of the hollow microspheres are the hollow polymer microspheres; and (ii) up to 15 wt% of a smoke suppressor.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Mellersh because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Elgimiabi, however, discloses a curable precursor of a fire-retardant, low-density and essentially halogen-free epoxy composition comprising (i) 10-70 wt% of at least one organic epoxide compound with at least one an epoxide functionality, (ii) 5-55 wt% of at least one epoxide hardener, (iii) 5-50 wt% of an essentially halogen-free fire-retardant system, and (iv) 10-60 wt% of a filler system comprising a mixture of hollow glass microspheres and hollow polymer microspheres (abstract; and table 1).
The fire-retardant system comprises at least one phosphorous-containing material (paragraph 49) corresponding to the claimed smoke suppressor.
The filler system contains 24.31 wt% of hollow glass microspheres and 1.2 wt% of hollow polymer microspheres (table 1). The filler system contains 4.7 wt% of hollow polymer microspheres. The precursor contains 0.25-3 wt% of hollow polymer microspheres (paragraph 78).
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 a flame-retardant system from Elgimiabi in the foam layer first material disclosed in Mellersh/Murray, motivated by the desire to impart flame-retardant properties.
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 a filler system from Elgimiabi in the foam layer first material disclosed in Mellersh/Murray, motivated by the desire to improve the processability and density of the thermal insulating structure without compromising its compressive strength.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Mellersh in view of Murray and Elgimiabi as applied to claim 1 above, further in view of US 6,133,332 to Ide et al. (hereinafter “Ide”).
None of the references: Mellersh, Murray and Elgimiabi, disclose a thermal insulation structure comprising a fluorinated surfactant.
Ide, however, discloses a phenolic resin foam comprising a phenolic resin and an acidic curing agent, and a blowing agent (abstract). The phenolic resin foam also includes a fluorine surfactant as a foam stabilizer in an amount of 1 to 10 wt% (column 4, lines 25-30).
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 a fluorine surfactant from Ide in the foam insulating material first material disclosed in Mellersh/Murray/Elgimiabi, motivated by the desire to improve stability, flowability and mixing during the foam production.
Claims 22, and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Mellersh in view of Murray, and CN 108603053 to Han et al. (hereinafter “Han”) as evidenced by CN 101706030 to Lu et al. (hereinafter “Lu”).
As to claims 22, and 42-45, Mellersh discloses a thermal insulation structure comprising three layers: an inner tie coat, a foam insulating layer and an outer protective layer wherein each of three layers is formed by the reaction of a cold cure phenolic resin and a partial phosphate ester (abstract). The thermal insulation structure is applied to a substrate (page 1).
Mellersh does not explicitly teach each of three layers being formed by the reaction of a furan or furfuryl alcohol resin, and a partial phosphate ester and there is no teaching or suggestion that the foam layer first material comprises a smoke suppressor and an alkaline earth silicate fiber matrix while the foam layer second material comprises a flame retardant.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Mellersh because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Shepherd because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Han, however, discloses a foam fireproof composition comprising an epoxy, a curable resin, a phosphorous-based flame retardant, a blowing agent, an acid catalyst and 3-10 wt% of fibers including silicate salt fibers, magnesium silicate fibers, mineral wool and carbon fibers (table 1). The foam fireproof composition comprises 0.9 wt% of magnesium silicate fibers.
Lu et al. (CN101706030A) will be relied upon as evidence to demonstrate the fact that magnesium silicate fibers comprise 40-85 wt% silica, 3-40 wt% magnesium oxide and 2-30 wt% calcium oxide with the balance being one of any combination of B2O3, Al2O3, Fe2O3, Na2O and K2O (abstract).
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 a flame retardant from Han in the first and second materials of the foam layer of Mellersh/Murray, motivated by the desire to impart fire retardant properties.
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 magnesium silicate fiber from Han in the fire-resistant syntactic foam material of Mellersh/Murray, motivated by the desire to improve the processability of the material and heat insulating performance.
Claims 30, 32, 34, and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Mellersh in view of Murray, Han, Idle, Elgimiabi and Bracegirdle.
As to claims 30, 32, 34, and 36-38, Mellersh discloses a thermal insulation structure comprising three layers: an inner tie coat, a foam insulating layer and an outer protective layer wherein each of three layers is formed by the reaction of a cold cure phenolic resin and a partial phosphate ester (abstract). The thermal insulation structure is applied to a substrate (page 1). The foam insulating layer comprises a first material and a second material with a ratio of 4.25:1 wherein the first material comprises a cold cure phenolic resin while the second material comprises a partial phosphate ester (page 6).
Mellersh does not explicitly teach each of three layers being formed by the reaction of a furan or furfuryl alcohol resin, and a partial phosphate ester; nor does the foam insulating layer first material comprise (i) a smoke suppressor, (ii) an alkaline earth silicate fiber matrix, (iii) 0.5-3 wt% of fluorinated surfactant, (iv) 10-30 wt% of a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% by weight of the hollow microspheres are the hollow polymer microspheres; nor does the foam insulating layer second material comprise a boric acid flame retardant.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Mellersh because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Han, however, discloses a foam fireproof composition comprising an epoxy, a curable resin, a phosphorus-based flame retardant, a blowing agent, an acid catalyst and 3-10 wt% of magnesium silicate fiber.
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 magnesium silicate fibers from Han in the foam layer first material of Mellersh/Murray, motivated by the desire to improve the processability of the material and heat insulating performance.
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 phosphorous-based flame retardant from Han in the foam layer first material of Mellersh/Murray, motivated by the desire to impart flame retardancy.
Ide, however, discloses a phenolic resin foam comprising a phenolic resin and an acidic curing agent, and a blowing agent (abstract). The phenolic resin foam also includes a fluorine surfactant as a foam stabilizer in an amount of 1 to 10 wt% (column 4, lines 25-30).
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 a fluorine surfactant from Ide in the foam layer first material disclosed in Mellersh/Murray, motivated by the desire to improve stability, flowability and mixing during the foam production.
Elgimiabi, however, discloses a curable precursor of a fire-retardant, low-density and essentially halogen-free epoxy composition comprising (i) 10-70 wt% of at least one organic epoxide compound with at least one an epoxide functionality, (ii) 5-55 wt% of at least one epoxide hardener, (iii) 5-50 wt% of an essentially halogen-free fire-retardant system, and (iv) 10-60 wt% of a filler system comprising a mixture of hollow glass microspheres and hollow polymer microspheres (abstract; and table 1).
The fire-retardant system comprises at least one phosphorous-containing material (paragraph 49) corresponding to the claimed smoke suppressor.
The filler system contains 24.31 wt% of hollow glass microspheres and 1.2 wt% of hollow polymer microspheres (table 1). The filler system contains 4.7 wt% of hollow polymer microspheres. The precursor contains 0.25-3 wt% of hollow polymer microspheres (paragraph 78).
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 a filler system from Elgimiabi in the foam layer first material disclosed in Mellersh/Murray, motivated by the desire to improve the processability and density of the thermal insulating structure without compromising its compressive strength.
Bracegirdle, however, discloses a polystyrene-phenolic foam has a density of less than 40 kg/m3 (paragraph 15). The polystyrene-phenolic foam includes 0.5-60 wt% of particulate filler comprising granular boric acid (paragraphs 134-136). The granular boric acid has a particle size of 0.1 to 5 mm and contributes to fire inhibition (paragraphs 135 and 136).
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 the granular boric acid from Bracegirdle to the foam layer second material disclosed in Mellersh/Murray, motivated by the desire to enhance fire resistant properties.
Response to Arguments
The rejections based on Mellersh in view of several references have been modified in view of the amendment and response filed on 5/20/2026. None of the cited references disclose or suggest a passive fire-resistant structure wherein a first material comprises an alkaline earth silicate fiber matrix, or a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% (w/w) of the hollow microspheres are the hollow polymer microspheres.
New ground of rejection is made in view of newly discovered references to Elgimiabi et al. (US 2008/0167412) and Han et al. (CN 108603053).
Claim 1 is rendered obvious in view of new combination of Mellersh, Murray, and Elgimiabi.
Claim 22 is rendered obvious in view of new combination of Mellersh, Murray and Han as evidenced by Lu.
Claim 30 is rendered obvious in view of new combination of Mellersh, Murray, Han, Idle, Elgimiabi and Bracegirdle.
Claims 22, and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0155519 to Shepherd et al. (hereinafter “Shepherd”) in view of Murray, and CN 108603053 to Han et al. (hereinafter “Han”) as evidenced by CN 101706030 to Lu et al. (hereinafter “Lu”).
As to claims 22, and 42-44, Shepherd discloses a fire-resistant syntactic foam material comprising the reaction product of a mixture comprising a resole cold curing phenolic resin, hollow spheres, a partial phosphate ester, phosphate plasticizer, reinforcing filler and a particulate filler (abstract). The phosphate plasticizer comprises a phosphate triester wherein the phosphate group is esterized with three alkyl or aryl groups (paragraph 35). The phosphate triester reads on the claimed smoke suppressor. The syntactic foam material further includes fluorinated surfactant (paragraph 30). The syntactic foam also includes vermiculite or graphene and each of which corresponding to the claimed flame retardant.
The claim is directed to a passive fire-resistant structure comprising a passive fire-resistant foam layer that is the reaction product of (i) a first material comprising a bio-based resin and a smoke suppressor and (ii) a second material comprising a hardener and a flame retardant. The smoke suppressor and the flame retardant in the first and second materials carry through to the final foam product. Therefore, the inclusion of the flame retardant in the first material or the second material does not add patentable weight with respect to the foam product claim. So long as the flame retardant and its content in the final product of the passive fire-resistant foam layer meet the claimed requirements, the distinctions in the first and second materials as intermediate products do not render the claim unobvious.
Shepherd discloses a composite material 10 comprising an inner layer 12, a syntactic foam layer 16 and an outer layer 14 as shown in figure 1. In particular, the syntactic foam layer is disposed between two phenolic outer layers (paragraph 41). Shepherd also discloses a fire-resistant structure having a surface thereof being coated with a syntactic foam layer (paragraph 40). That is to say, the fire-resistant structure can have a surface thereof being coated with the syntactic foam layer which is reinforced between two phenolic outer layers. The fire-resistant structure reads on the claimed substrate while the phenolic outer layer that is adjacent to the fire-resistant structure reads on the claimed tie coat.
Additionally, it is reminded that the substrate has not been presently claimed as a required component of the claimed passive fire-resistant structure. Instead, the substrate is considered as an intended use limitation.
PNG
media_image1.png
500
468
media_image1.png
Greyscale
Shepherd does not explicitly disclose the syntactic foam layer being formed by the reaction of a bio-based resin and a hardener, nor does the foam layer first material comprise an alkaline earth silicate fiber matrix.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Mellersh because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Han, however, discloses a foam fireproof composition comprising an epoxy, a curable resin, a phosphorous-based flame retardant, a blowing agent, an acid catalyst and 3-10 wt% of fibers including silicate salt fibers, magnesium silicate fibers, mineral wool and carbon fibers (table 1). The foam fireproof composition comprises 0.9 wt% of magnesium silicate fibers.
Lu et al. (CN101706030A) will be relied upon as evidence to demonstrate the fact that magnesium silicate fibers comprise 40-85 wt% silica, 3-40 wt% magnesium oxide and 2-30 wt% calcium oxide with the balance being one of any combination of B2O3, Al2O3, Fe2O3, Na2O and K2O (abstract).
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 magnesium silicate fiber from Han in the fire-resistant syntactic foam material of Shepherd/Murray, motivated by the desire to improve the processability of the material and heat insulating performance.
As to claim 45, Shepherd discloses a composite material 10 comprising an inner layer 12, a syntactic foam layer 16 and an outer layer 14 as shown in figure 1. In particular, the syntactic foam layer is disposed between two phenolic outer layers (paragraph 41). Shepherd also discloses a fire-resistant structure having a surface thereof being coated with a syntactic foam layer (paragraph 40). That is to say, the fire-resistant structure can have a surface thereof being coated with a syntactic foam layer which is reinforced between two phenolic outer layers. The fire-resistant structure reads on the claimed substrate while one of the phenolic outer layers reads on the claimed tie coat.
Shepherd does not explicitly disclose the phenolic outer layers comprising a bio-based resin and a hardener.
Murray, however, discloses that a syntactic foam or an adhesive material obtained from a composition comprising a pre-polymeric resin, a partial phosphate ester curing agent and hydroxylamine (paragraph 1). The pre-polymeric resin includes a phenolic resole resin or a furfuryl alcohol resin (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a bio-based furfuryl alcohol resin from Murray for the phenolic resole resin disclosed in Mellersh because the bio-based furfuryl alcohol resin is superior to traditional phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Further, the bio-based furfuryl alcohol resin is free of formaldehyde which is a common component of phenolic resin and a known volatile organic compound (VOC). As such, the absence of the formaldehyde reduces health risk associated with the VOC emissions and enhances workplace safety.
Response to Arguments
The rejections based on Shepherd in view of several references have been modified in view of the amendment and response filed on 5/20/2026. None of the cited references disclose or suggest a passive fire-resistant structure wherein a first material comprises an alkaline earth silicate fiber matrix.
New ground of rejection is made in view of newly discovered references to Elgimiabi et al. (US 2008/0167412) and Han et al. (CN 108603053).
Claim 22 is rendered obvious in view of new combination of Shepherd, Murray and Han as evidenced by Lu.
Applicant alleges that there is no tie coat in Shepherd because the inner layer is not bonded to a substrate.
The examiner respectfully disagrees.
Shepherd discloses a composite material 10 comprising an inner layer 12, a syntactic foam layer 16 and an outer layer 14 as shown in figure 1. In particular, the syntactic foam layer is disposed between two phenolic outer layers (paragraph 41). Shepherd also discloses a fire-resistant structure having a surface thereof being coated with a syntactic foam layer (paragraph 40). That is to say, the fire-resistant structure can have a surface thereof being coated with the syntactic foam layer which is reinforced between two phenolic outer layers. The fire-resistant structure reads on the claimed substrate while the phenolic outer layer that is adjacent to the fire-resistant structure reads on the claimed tie coat.
Additionally, it is reminded that the substrate has not been presently claimed as a required component of the claimed passive fire-resistant structure. Instead, the substrate is considered as an intended use limitation.
Accordingly, claim 22 is rendered obvious in view of the combined disclosures of Shepherd, Murray and Han as evidenced by Lu.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, 12-14, and 39-41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 19 and 20 of copending Application No. 18/502,400 (reference application) in view of Elgimiabi.
The claims of the reference application teach each and every limitation of the claim of the present invention except for the foam layer first material comprising (i) a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% by weight of the hollow microspheres are the hollow polymer microspheres; and (ii) up to 15 wt% of a smoke suppressor.
Elgimiabi, however, discloses a curable precursor of a fire-retardant, low-density and essentially halogen-free epoxy composition comprising (i) 10-70 wt% of at least one organic epoxide compound with at least one an epoxide functionality, (ii) 5-55 wt% of at least one epoxide hardener, (iii) 5-50 wt% of an essentially halogen-free fire-retardant system, and (iv) 10-60 wt% of a filler system comprising a mixture of hollow glass microspheres and hollow polymer microspheres (abstract; and table 1).
The fire-retardant system comprises at least one phosphorous-containing material (paragraph 49) corresponding to the claimed smoke suppressor.
The filler system contains 24.31 wt% of hollow glass microspheres and 1.2 wt% of hollow polymer microspheres (table 1). The filler system contains 4.7 wt% of hollow polymer microspheres. The precursor contains 0.25-3 wt% of hollow polymer microspheres (paragraph 78).
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 a flame-retardant system from Elgimiabi in the foam layer first material of the reference application, motivated by the desire to enhance flame-retardant properties.
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 a filler system from Elgimiabi in the foam layer first material of the reference application, motivated by the desire to improve the processability and density of the thermal insulating structure without compromising its compressive strength.
Claim 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 19 and 20 of copending Application No. 18/502,400 (reference application) in view of Elgimiabi as applied to claim 1 above, further in view of Ide.
The claims of the reference application as modified by Elgimiabi teach each and every limitation of the claim of the present invention except for the foam layer first material comprising 0.5-3 wt% of fluorinated surfactant.
Ide, however, discloses a phenolic resin foam comprising a phenolic resin, an acidic curing agent, and a blowing agent (abstract). The phenolic resin foam also includes a fluorine surfactant as a foam stabilizer in an amount of 1 to 10 wt% (column 4, lines 25-30).
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 a fluorine surfactant in an amount disclosed in Ide in the foam layer first material disclosed in the reference application/Elgimiabi, motivated by the desire to improve stability, flowability and mixing during the foam production.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 22, and 42-45 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 19 and 20 of copending Application No. 18/502,400 (reference application) in view of Han as evidenced by Lu.
The claims of the reference application teach each and every limitation of the claim of the present invention except for the foam layer first material comprising (i) a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% by weight of the hollow microspheres are the hollow polymer microspheres; and (ii) a smoke suppressor.
Han, however, discloses a foam fireproof composition comprising an epoxy, a curable resin, a phosphorous-based flame retardant, a blowing agent, an acid catalyst and 3-10 wt% of fibers including silicate salt fibers, magnesium silicate fibers, mineral wool and carbon fibers (table 1). The foam fireproof composition comprises 0.9 wt% of magnesium silicate fibers.
Lu et al. (CN101706030A) will be relied upon as evidence to demonstrate the fact that magnesium silicate fibers comprise 40-85 wt% silica, 3-40 wt% magnesium oxide and 2-30 wt% calcium oxide with the balance being one of any combination of B2O3, Al2O3, Fe2O3, Na2O and K2O (abstract).
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 magnesium silicate fiber from Han in the foam layer first material of the reference application, motivated by the desire to improve the processability of the material and heat insulating performance.
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 a phosphorous-based flame retardant from Han in the foam layer first material of the reference application, motivated by the desire to enhance flame-retardant properties.
Claims 30, 32, 34, and 36-38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13, 19 and 20 of copending Application No. 18/502,400 (reference application) in view of Han, Idle, Elgimiabi and Bracegirdle.
The claims of the reference application teach each and every limitation of the claim of the present invention except for
(a) the foam insulating layer first material comprising (i) a smoke suppressor, (ii) an alkaline earth silicate fiber matrix, (iii) 0.5-3 wt% of fluorinated surfactant, and (iv) 10-30 wt% of a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% by weight of the hollow microspheres are the hollow polymer microspheres; and
(b) the foam insulating layer second material comprising a boric acid flame retardant.
Han, however, discloses a foam fireproof composition comprising an epoxy, a curable resin, a phosphorus-based flame retardant, a blowing agent, an acid catalyst and 3-10 wt% of magnesium silicate fiber.
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 magnesium silicate fibers from Han in the foam layer first material of the reference application, motivated by the desire to improve the processability of the material and heat insulating performance.
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 the phosphorous-based flame retardant from Han in the foam layer first material of the reference application, motivated by the desire to impart flame retardancy.
Ide, however, discloses a phenolic resin foam comprising a phenolic resin and an acidic curing agent, and a blowing agent (abstract). The phenolic resin foam also includes a fluorine surfactant as a foam stabilizer in an amount of 1 to 10 wt% (column 4, lines 25-30).
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 a fluorine surfactant from Ide in the foam layer first material of the reference application, motivated by the desire to improve stability, flowability and mixing during the foam production.
Elgimiabi, however, discloses a curable precursor of a fire-retardant, low-density and essentially halogen-free epoxy composition comprising (i) 10-70 wt% of at least one organic epoxide compound with at least one an epoxide functionality, (ii) 5-55 wt% of at least one epoxide hardener, (iii) 5-50 wt% of an essentially halogen-free fire-retardant system, and (iv) 10-60 wt% of a filler system comprising a mixture of hollow glass microspheres and hollow polymer microspheres (abstract; and table 1).
The fire-retardant system comprises at least one phosphorous-containing material (paragraph 49) corresponding to the claimed smoke suppressor.
The filler system contains 24.31 wt% of hollow glass microspheres and 1.2 wt% of hollow polymer microspheres (table 1). The filler system contains 4.7 wt% of hollow polymer microspheres. The precursor contains 0.25-3 wt% of hollow polymer microspheres (paragraph 78).
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 a filler system from Elgimiabi in the foam layer first material of the reference application, motivated by the desire to improve the processability and density of the thermal insulating structure without compromising its compressive strength.
Bracegirdle, however, discloses a polystyrene-phenolic foam has a density of less than 40 kg/m3 (paragraph 15). The polystyrene-phenolic foam includes 0.5-60 wt% of particulate filler comprising granular boric acid (paragraphs 134-136). The granular boric acid has a particle size of 0.1 to 5 mm and contributes to fire inhibition (paragraphs 135 and 136).
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 the granular boric acid from Bracegirdle in the foam layer second material of the reference application, motivated by the desire to enhance fire resistant properties.
Response to Arguments
The double patenting rejection over US Application No. 18/502,400 has been modified in view of the amendment and response filed on 5/20/2026. None of the cited references disclose or suggest a passive fire-resistant structure wherein a first material comprises an alkaline earth silicate fiber matrix, or a mixture of hollow glass microspheres and hollow polymer microspheres and wherein up to 20% (w/w) of the hollow microspheres are the hollow polymer microspheres.
New ground of rejection is made in view of newly discovered references to Elgimiabi et al. (US 2008/0167412) and Han et al. (CN 108603053).
Claim 1 is rendered unpatentable in view of new combination of US Application No. 18/502,400 and Elgimiabi.
Claim 22 is rendered unpatentable in view of new combination of US Application No. 18/502,400 and Han as evidenced by Lu.
Claim 30 is rendered unpatentable in view of new combination of US Application No. 18/502,400, Han, Idle, Elgimiabi and Bracegirdle.
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.
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, Alicia Chevalier can be reached at 571-272-1490. 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.
/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights