DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Introduction
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 102
Claims 1, 5, 8-15 and 20 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Kuppens et al. (US 2022/0403662 A1).
As to claims 1 and 15, Kuppens et al. discloses a coated insulation product, where the substrate may be cellular glass. See the abstract. The coating contains an alkali silicate that may solely be potassium silicate. See the abstract, and paragraph [0144]. The coating has a thickness such as 1.5 mm (1500 µm) or 3 mm (3000 µm). See Table 5. The product is formed by applying the coating to the substrate. See paragraph [0049].
Kuppens et al. expressly discloses that potassium silicate may be the sole silicate. See paragraph [0149]. Therefore, the silicate is “selected from the group consisting of … potassium silicate….”
The protective layer of Kuppens may be applied to the lower portion of the cellular glass (C), and a waterproofing layer (D) is subsequently applied to the lower portion of the cellular glass. See the figure and paragraphs [0028] and [0031]. The waterproofing layer (D) falls within the definition of a water repellant coating because the waterproofing layer would prevent (or repell) water from entering into the cellular glass from below.
Kuppens et al. does not disclose the ASTM E-84 rating of the end product. However, the product is identical to the presently claimed product in structure and composition. Therefore, the ASTM E-84 properties recited in claims 1, 10 and 11 are presumed to be inherent to the products of Kuppens et al.
As to claim 5, the coating of Kuppens et al. is non-combustible. See paragraph [0373].
As to claims 8 and 20, Kuppens et al. fails to expressly disclose the coating application coverage in terms of ft2/gallon. Kuppens et al. teaches a coverage amount of 2.4 kg/m2 for a 1.5 mm coating. See paragraph [0386]. 2.4 kg/m2 is 2400 g/m2 which falls within the preferred range of coverage for the instant invention. See paragraph [0044] of the pre-grant publication, US 20240182358, of the instant specification. For this reason, Example 5 of Kuppens et al. is presumed to inherently employ a coverage amount within the range of 10 to 600 ft2/gallon.
As to claim 9, Kuppens et al. teaches the inclusion of fillers such as silicates (i.e., a mineral filler). See paragraph [0194]. Kuppens et al. further teaches including compounds in the form of R-(OH)n (i.e., alcohols) in the composition in paragraphs [0170].
As to claim 12, Kuppens et al. teaches the product does not absorb water (see paragraph [0368]), but does not teach that the product was measured by ASTM C240. However, the product is identical to the presently claimed product in structure and composition. Therefore, the ASTM C240 properties recited in claims 12 and 20 are presumed to be inherent to the product of Kuppens et al.
As to claim 13, Kuppens et al. teaches the product may be used for insulating roofs in the abstract.
As to claim 14, no structural difference can be ascertained between a product that insulates a roof in general as taught by Kuppens et al. and a product that is used specifically for cryogenic spill tank.
Response to Arguments
Applicant's arguments filed 24 August 2026 have been fully considered but they are not persuasive.
Applicants arguments suggest a misunderstanding of the rejection over Kuppens. The examiner assumes he failed effectively communicating the anticipatory nature of the applied prior art. To explain further, the claims are directed to an insulation product – not a roofing system. In the examination process, it goes without saying, that the examiner is tasked with deciding whether a product falling within the scope of the claim has been disclosed in the prior art. In determining novelty, the examiner needed to ascertain the scope of the phrase “water-repellant coating.” Applicants’ arguments suggest that they interpret this phrase to indicate a position of the coating in the final roofing system. The examiner, on the other hand, was interpreting the phrase to indicate a property of the coating: the ability to prevent water from passing therethrough. Evidence that the coating of Kuppens is capable of meeting this definition is present in Kuppens because the reference discloses the coating provides “waterproofing.”
The examiner’s statement regarding the prevention of water from penetrating from the roof to cellular glass is technically true, and was mentioned in an attempt to show how the structure of Kuppen is the same as the claimed structure and the water-proofing layer of Kuppens is a water-repellant coating.
Applicants argue that Kuppens does not teach a waterproofing layer that is “applied” to already coated cellular glass. Kuppens discloses applying the waterproofing layer to the roof, and then applying the coated glass to the waterproofing layer. Again, claim 1 is a product claim. The term “applied” is indicating how the product is formed (because applicants appear to be arguing applying the coated glass to the waterproofing is different than applying a waterproofing layer to coated glass). In other words, “applied” is process limitation in a product claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure a water-repellant coating on the coated glass. Kuppens discloses this product. Once an identical article is found and the ejection is made, the burden shifts to applicant to show a non-obvious difference. Id.
Applicants argue:
This would be a remarkably strange position on which to base a rejection. Indeed, it is more easily imagined that water from rain etc. would fall on the structure and be kept from the roof deck by the waterproofing layer. However, this leads to the scenario where the water would be constrained in the space between the waterproofing layer and the cellular glass - in direct contrast to the Examiner's position as the waterproofing layer would actually be containing the water nearer to the cellular glass.
These arguments are not deemed persuasive for the reason described in the first paragraph of the Response to Arguments section. Specifically, Kuppens discloses a product of a coated glass having a waterproofing layer thereon that falls within the scope of the product described by claim 1.
Allowable Subject Matter
Claims 3, 4 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Sample/Primary Examiner, Art Unit 1784
