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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/07/2026 has been entered.
Claims 1, 3, 5, 7-13, 17, and 19-27 are currently pending with claims 2, 4, 6, 14-16, and 18 being canceled. Claim 17 has been withdrawn from consideration as being directed to a non-elected invention. Claims 1, 3, 5, 7-13, and 19-27 are rejected.
The rejection over Mellersh in view of Murray has been maintained.
The provisional nonstatutory double patenting rejection over US Application No. 18/502,366 has been maintained.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, 5, 7-13, 19-24 and 27 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 (hereinafter “Murray”).
As to claims 1, 8-13, 19, 20 and 27, Mellersh discloses a subsea 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 product of a cold cure phenolic resin and a hardener comprising a partial phosphate ester (abstract). The foam insulating layer comprises 20.6 wt% of hollow glass microspheres (page 6).
Mellersh does not explicitly teach each of three layers being formed by the reaction product of a polyfurfuryl alcohol resin and a partial phosphate ester.
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).
Ipakchi et al., “Bio-resourced furan resin as a sustainable alternative to petroleum-based phenolic resin for making GFE polymer composite”, Iranian Polymer Journal, 2020, 29, 287-299, is relied upon as evidence indicating that the furfuryl alcohol is an inexpensive, sustainable bioresin as a promising alternative to the phenolic resin originated from petroleum resource.
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 furfuryl alcohol bioresin from Murray for the phenolic resole resin disclosed in Mellersh because the furfuryl alcohol bioresin is superior to the phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. The motivation statement was taken from the Ipakchi article.
Further, the furfuryl alcohol bioresin 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.
As to claims 3 and 23, Mellersh discloses that the foam insulating layer second material comprises 100% by weight of partial phosphate ester (page 10).
As to claims 5, Mellersh discloses that the foam insulating layer first material comprises 0.75% by weight of silane coupling agent, 2% by weight of glass strands, 20.6% by weight of hollow glass microspheres having an SG of between 0.005 to 0.02 (pages 4 and 6). The silane coupling layer is an amino functional silane coupling agent (page 7).
As to claim 7, Mellersh discloses that the foam insulating layer first material comprises up to 20% by weight of a nitrile butadiene rubber corresponding to the claimed toughener (page 4).
As to claim 19, Mellersh discloses the subsea thermal insulating structure being applied onto a substrate such as subsea equipment (page 8, lines 10-15).
As to claim 21, Mellersh discloses that the hollow microspheres are glass microspheres (page 2, lines 15-25).
As to claim 22, Mellersh discloses that a ratio of the foam insulating layer first material to the foam insulating layer second material is 4:1 to 10:1 (page 5, lines 1-5).
As to claim 24, Mellersh discloses that the foam insulating layer second material comprises 5% by weight of para toluene sulphonic acid as a cure accelerator (page 6, lines 30-40).
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Mellersh in view of Murray as applied to claim 1 above, further in view of US 2023/0167263 to Shukla et al. (hereinafter “Shukla”).
The combined disclosures of Mellersh and Murray result in the tie coat which is the reaction product of (i) a first material comprising polyfufuryl alcohol and hollow microspheres, and (ii) a second material comprising a hardener. Neither Mellersh nor Murray discloses or suggests the resulting tie coat comprising solid microspheres.
Shukla, however, discloses a syntactic foam including a matrix material and a filler material wherein the filler material comprises microspheres of metallic glass material which can be hollow or solid microspheres (abstract, and paragraph 8). The solid metallic glass microspheres provide a higher strength syntactic foam at a greater weight than the syntactic foam provided with hollow microspheres (paragraphs 8, 17 and 19).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the solid microspheres disclosed in Shukla in the tie coat of Mellersh as modified by Murray motivated by the desire to provide a higher strength tie coat. Shukla demonstrates that solid and hollow glass microspheres are conventional fillers used in the syntactic foam.
Claims 25 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Mellersh in view of Murray as applied to claim 1 above, further in view of AU 2000042680 to Jouault (hereinafter “Jouault”).
The combined disclosures of Mellersh and Murray result in the tie coat which is the reaction product of (i) a first material comprising polyfufuryl alcohol and hollow microspheres, and (ii) a second material comprising a hardener. Neither Mellersh nor Murray discloses or suggests the resulting tie coat comprising solid microspheres.
Jouault however, discloses a syntactic foam including a matrix material and a filler material incorporated therein wherein the filler material comprises hollow or solid glass microspheres (page 7, lines 30-35, and page 8, lines 1-5). The syntactic foam with solid microspheres has the ability to withstand large compressive forces (page 14, lines 25-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the solid glass microspheres disclosed in Jouault in the tie coat of Mellersh as modified by Murray motivated by the desire to provide a higher strength tie coat. Jouault demonstrates that solid and hollow glass microspheres are conventional fillers used in the syntactic foam.
Response to Arguments
Applicant's arguments filed on 01/07/2026 have been fully considered but they are not persuasive.
Applicant alleges that the claim is not rendered unobvious over the combined disclosures of Mellersh and Murray because Ipakchi teaches away from a material comprising a polyfurfuryl alcohol resin and from 15 to 30 wt% of hollow microspheres. Any addition of the inorganic filler in an amount exceeding 5 wt% would compromise the mechanical performance of the resulting structure.
Applicant’s allegation is not understood. It is reminded that Ipakchi is not relied upon as the prior art to the claimed invention, but the evidence indicating that the furfuryl alcohol bioresin is superior to the phenolic resole resin regarding sustainability, environmental impact and cost effectiveness. Hence, the content of the inorganic filler disclosed in Ipakchi is completely irrelevant to the obviousness rejection over Mellersh and Murray. The examiner invites Applicant’s attention to Murray’s paragraphs 2, 3, and 26 where the resin formulation comprises a phenolic resin or a furfuryl alcohol resin; in combination with a curing agent comprising a partial phosphate ester. The resin formulation also includes up to 45.8 parts by weight of spheriglass based on 100 parts by weight of the resin formulation (paragraph 48). Hence, it is acceptable to include up to 46 wt% of the inorganic filler in the resin formulation comprising the furfuryl alcohol resin.
As there is a motivation to combine the teachings of Mellersh and Murray, a prima facie case of obviousness is said to exist.
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, 3, 5, 8-13, 19-21 and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 20 of copending Application No. 18/502,366 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3, 5, 8-13, 19-21 and 27 of the current application are fully encompassed by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 7, and 22-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 and 20 of copending Application No. 18/502,366 (reference application) as applied to claims 1 and 19 above, in view of Mellersh.
The reference application does not explicitly disclose: (i) the foam insulating layer first material comprising up to 20% by weight of a tougher; (ii) a ratio of the foam insulating layer first material to the foam insulating layer second material of from 3:1 to 10:1; (iii) the foam insulating layer second material comprising a para toluene sulphonic acid as a cure accelerator.
Mellersh, however, discloses a subsea 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 product of a cold cure phenolic resin and a hardener comprising a partial phosphate ester (abstract). Mellersh discloses that the foam insulating layer first material comprises up to 20% by weight of a nitrile butadiene rubber corresponding to the claimed toughener (page 4). Mellersh also mentions that a ratio of the foam insulating layer first material to the foam insulating layer second material is 4:1 to 10:1 (page 5, lines 1-5). Mellersh teaches that the foam insulating layer second material comprises 5% by weight of para toluene sulphonic acid as a cure accelerator (page 6, lines 30-40).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add a nitrile butadiene rubber toughener disclosed in Mellersh in the tie coat of the reference application motivated by the desire to enhance the toughness of the tie coat.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a ratio of the foam insulating layer first material to the foam insulating layer second material of the reference application in a range from 4:1 to 10:1 disclosed in Mellersh motivated by the desire to enhance the thermal insulating properties of the thermal insulating structure.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a para toluene sulphonic acid as a cure accelerator disclosed in Mellersh in the foam insulating layer second material of the reference application motivated by the desire to promote the curing characteristics of the foam insulating layer.
Claims 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of copending Application No. 18/502,366 (reference application) as applied to claim 1 above, in view of Jouault.
The reference application does not explicitly disclose the tie coat comprising solid microspheres.
Jouault, however, discloses a syntactic foam including a matrix material and a filler material wherein the filler material comprises glass microspheres which can be hollow or solid microspheres (page 7, lines 30-35, and page 8, lines 1-5). The syntactic foam with solid microspheres has the ability to withstand large compressive forces (page 14, lines 25-35).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add the solid glass microspheres disclosed in Jouault in the tie coat of the reference application motivated by the desire to provide a higher strength tie coat. Jouault demonstrates that solid and hollow glass microspheres are fillers used in the syntactic foam.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant asserts that the provisional double patenting rejection has been overcome in view of the present amendment.
The examiner respectfully disagrees.
As previously discussed, the claims of the current application are fully encompassed by the claims of the reference application (claims 1, 3, 5, 8-13, 19-21 and 27). Accordingly, the provisional double patenting rejection has been maintained.
Conclusion
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/Hai Vo/
Primary Examiner
Art Unit 1788