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
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn. The objection to the drawings has been overcome by the filing of replacement black and white drawings.
The rejection of the claims under 35 U.S.C. 112(b) has been overcome by the amendments to the claims.
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 Interpretation
Claims 1 and 15 have been amended to recite: “comprising a silicate-based material selected from the group consisting of potassium silicate, sodium silicate, magnesium silicate, calcium silicate, or combinations thereof.” MPEP 2111.03 II states “[w]hen the phrase “consisting of” appears in a clause of the body of a claim, rather than immediately following the preamble, there is an “exceptionally strong presumption that a claim term set off with ‘consisting of’ is closed to unrecited elements.””
To overcome the presumption, “the specification and prosecution history must unmistakably manifest an alternative meaning.” Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350 (Fed. Cir. 2016)(citing Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349, 1359 n.4 (Fed. Cir. 2006)).
There is insufficient evidence in the present case to overcome the presumption that the Markush group is open to other silicates. Therefore, the claim 1 and 15 limitations “comprising a silicate-based material selected from the group consisting of potassium silicate, sodium silicate, magnesium silicate, calcium silicate, or combinations thereof” will be interpreted to mean that any silicate added to the first coating layer must solely be one of the listed silicates, however, the first coating layer is open to other non-silicate additions. For example, a coating composition containing a mixture of lithium silicate and potassium silicate falls outside the scope of the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The limitation, “the inorganic coating composition comprises a silicate-based material,” was added by amendment to claim 15. So, claim 16 no longer further limits claim 15.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
Claims 1, 3-5, 8-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bleus et al. (US 2022/0049106).
As to claims 1 and 15, Bleus et al. discloses a coated insulation product, where the substrate may be cellular glass. See the abstract and paragraph [0008]. The coating contains an alkali silicate that may solely be potassium silicate. See the abstract, and paragraph [0129]. The coating has a thickness such as 1.5 mm (1500 µm) or 3 mm (3000 µm). See paragraph [0397]. The product is formed by applying the coating to the substrate. See paragraph [0009].
Bleus et al. expressly discloses that potassium silicate may be the sole silicate. See paragraph [0129]. Therefore, the silicate is “selected from the group consisting of … potassium silicate….”
Bleus 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 Bleus et al.
Claims 3, 4 and 17 are rejected as including optional limitations because they relate to the optional water-repellant coating composition of claims 1 and 15.
As to claim 5, the coating of Bleus et al. is non-combustible. See paragraph [0382].
As to claims 8 and 20, Bleus et al. fails to expressly disclose the coating application coverage in terms of ft2/gallon. Bleus et al. teaches a coverage amount of 2.4 kg/m2 for a 1.5 mm coating. See paragraph [0399]. 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 Bleus et al. is presumed to inherently employ a coverage amount within the range of 10 to 600 ft2/gallon.
As to claim 9, Bleus et al. teaches the inclusion of fillers such as glass (i.e., a mineral filler). See paragraph [0180]. Bleu et al. further teaches including compounds in the form of R-(OH)n (i.e., alcohols) in the composition in paragraphs [0154]-[0155].
As to claim 12, Bleus et al. teaches the product does not absorb water (see paragraph [0374]), 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 Bleus et al.
As to claim 13, Bleus et al. teaches the product may be used for insulating roofs in paragraph [0349].
As to claim 14, Bleus et al. teaches the product can be used to insulate tanks. See paragraph [0349]. No structural difference can be ascertained between a product that insulates tanks in general as taught by Bleus et al. and a product that is used specifically for cryogenic As to claim 16, Bleus et al teaches the coating is formed from potassium silicate (i.e., which is “silicate based” and is an alkali silicate). See the abstract.
spill tanks.
Response to Arguments
Applicant's arguments filed 08 December 2025 have been fully considered but they are not persuasive.
With respect to the prior art rejection over Bleus et al., applicants note that Bleus et al. requires the presence of lithium silicate, and the “consisting of” language with respect to the silicate-based material closes the claim to the inclusion of other non-recited silicates such as lithium silicate. This argument is not deemed persuasive because Bleus et al. expressly teaches the coating composition may contain potassium silicate as the sole silicate. See paragraph [0129]. Moreover, a reference is not limited to preferred embodiments or examples for disclosure.
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.
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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/David Sample/Primary Examiner, Art Unit 1784