DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. 202211543290.5 filed 12/2/2022, which papers have been placed of record in the file.
Claims 1-20 are pending.
Drawings/Specification
The disclosure is objected to because of the following informalities: The “single view" drawing is referred to as “FIG. 1”. In accordance with 37 CFR 1.84(u)(1), the specification should not refer to “FIG.” See CFR 1.84(u)(1).
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation “FIG.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear.
Appropriate correction is required.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/524,338 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
While copending 338 claims a structure promoter component, this is equivalent to a reinforcement component. Further, while the amounts overlaps the claimed amounts, and therefore arrive at the present claims since they fall within the claimed ranges.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 2-9 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.
Claims 2-9 recite the limitation "the composite material or composite material layer". There is insufficient antecedent basis for a composite material layer limitation in these claims.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 2, 9-13, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ding et al. (US 2025/0132421).
Regarding claim 2: Ding is directed to a composite material ([0002]) comprising:
A ceramization filler component of a silicate filler, e.g. a ceramic forming filler of muscovite comprising aluminum silicate salt.
A reinforcement component, e.g. extending filler of wollastonite ([0031])
A flux component, e.g. glass powder (abstract)
A flame retardant component ([0076]).
A specific composite is disclosed in Example 1.
Regarding claim 9: The UL94 flame retardancy of V0 is disclosed (equivalent to a V-0 flammability rating as measure according to ASTM D3801).
Regarding claim 10: The composite comprises a silicone polymer (abstract).
Regarding claims 11-12: Example 1 comprises 40 wt% silicone polymer of the total weight of the composite material. ([0046]).
Regarding claim 13: Ding is directed to a thermal barrier composite material (Title, abstract) comprising:
A ceramization filler component of a silicate filler, e.g. a ceramic forming filler of muscovite comprising aluminum silicate salt.
A reinforcement component, e.g. extending filler of wollastonite ([0031])
A flux component, e.g. glass powder (abstract)
A flame retardant component ([0076]).
A specific composite is disclosed in Example 1.
Regarding claim 20: The UL94 flame retardancy of V0 is disclosed (equivalent to a V-0 flammability rating as measure according to ASTM D3801).
Claim Rejections - 35 USC § 102/103
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3-8, 14-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ding et al. (US 2025/0132421).
Regarding claims 3-8: Ding doesn't specifically recite a 5/15/30 minute HPE cold side temperature or 5/15/30 minute TE cold side temperature. However, the composite produced in Ding is substantially identical to the composite produced in the instant invention. Specifically, the same components of ceramization filler, reinforcement, flux, and flame retardants are used as in the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ding suggests a composite having a 5/15/30 minute HPE cold side temperature or 5/15/30 minute TE cold side temperature within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 35 USC 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claims 14-19: Ding doesn't specifically recite a 5/15/30 minute HPE cold side temperature or 5/15/30 minute TE cold side temperature. However, the composite produced in Ding is substantially identical to the composite produced in the instant invention. Specifically, the same components of ceramization filler, reinforcement, flux, and flame retardants are used as in the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ding suggests a composite having a 5/15/30 minute HPE cold side temperature or 5/15/30 minute TE cold side temperature within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 35 USC 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (US 2025/0132421).
Regarding claim 1: Ding is directed to a filler composition comprising:
A ceramization filler component of a silicate filler, e.g. a ceramic forming filler of muscovite comprising aluminum silicate salt.
A reinforcement component, e.g. extending filler of wollastonite ([0031])
A flux component, e.g. glass powder (abstract)
A flame retardant component ([0076])
The filler composition comprises 20-30 parts by weight of the ceramic forming filler, 10-17 parts of the extending filler, 2-10 parts of the glass powder flux component, and 15-25 parts of the flame retardant (claim 10 Ding). While the amount of flame retardant is outside the claimed 5-20 wt% of the total weight of the filler composition, significant overlap exists between different components. For instance, suitable flame retardants include borates in Miller ([0076] Miller), which are defined by the present invention as a flux component. Hence, specific amounts of components at least overlaps the claimed amounts because significant overlap exists between how specific components, e.g. borates, are characterized.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Therefore, it would have been obvious to have selected a ceramization filler, reinforcement component, flux component, and flame retardants within the scope of claim 1.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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