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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-8 in the reply filed on 02/10/2026 is acknowledged.
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02/10/2026.
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 1-8 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.
Claim 1 lines 3-6 reciting “preparing an emulsion containing a polymer-based emulsifier, a binder resin, and a liquid medium, and aerogel particles; mixing the emulsion and the aerogel particles to agglomerate at least a portion of the aerogel particles” is indefinite. It is not clear if the aerogel particles in the emulsion is the same or different from the aerogel particles that is mixed with the emulsion because the emulsion already comprises aerogel particles, but there is a step wherein the aerogel particles are mixed with the emulsion to agglomerate at least a portion of the aerogel particles.
Examiner will treat the aerogel particles as the same, which appears to be consistent with specification at [0162] disclosing in the mixing step, the components prepared in the preparation step are each mixed so that the aerogel particles agglomerate… the mixing method may be any method by which the aerogel particles can form agglomerates, and for example, a method of stirring and mixing each of the components prepared in the preparation step.
Examiner suggests to clarify the claimed limitation because “claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant... uncertainties of claim scope should be removed, as much as possible, during the examination process” (see MPEP 2171).
Claims 2-8 are rejected due to their dependency on claim 1.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kumagai et al. (WO 2020/040171 A1, with reference to the machine translation) (“Kumagai” hereinafter) in view of Rin et al. (JP 2018043927 A, with reference to the machine translation) (“Rin” hereinafter).
Regarding claim 1, Kumagai teaches a method (see Kumagai at [0030] teaching preparation method), comprising
preparing an emulsion containing a polymer-based emulsifier, a binder resin, and a liquid medium, and aerogel particles; mixing the emulsion and the aerogel particles; and obtaining a coating liquid containing aerogel particles, the polymer-based emulsifier, the binder resin, and the liquid medium (see Kumagai at [0017] teaching silica aerogel… silica fine particles (primary particles) that form the skeleton of the silica aerogel, see Kumagai at [0022] teaching examples of polysaccharides include… hydroxyethyl cellulose, see Kumagai at [0027]-[0028] teaching water-based emulsion binder is an emulsion-like binder that uses water as a solvent… the binder component may be a… resin… examples of the resin include… urethane resin, see Kumagai at [0030] teaching the coating material for heat insulating materials… by adding silica aerogel, an aqueous emulsion binder, polysaccharides, and if necessary, additives to water and stirring). Stirring is taken to meet the claimed mixing. Hydroxyethyl cellulose is taken to meet the claimed polymer-based emulsifier based on specification at [0137] disclosing examples of the polymer-based emulsifier include… hydroxyethyl cellulose. Urethane resin is taken to meet the claimed binder resin based on specification at [0132] disclosing examples of the binder resin include a… urethane resin. Water is taken to meet the claimed liquid medium based on specification at [0128] disclosing the liquid medium is preferably a water-based solvent including water. Coating material is taken to meet the claimed coating liquid.
Kumagai does not explicitly teach to agglomerate at least a portion of the aerogel particles, and that the coating liquid containing agglomerates of at least a portion of the aerogel particles.
Like Kumagai, Rin teaches a method comprising mixing aerogel, emulsifier and water (see Rin at [0006] teaching a method in which silica aerogel particles can be dispersed in a dispersion medium by mild stirring… by adding silica aerogel particles to an aqueous solution… and a water-soluble nonionic surfactant).
Rin further teaches the hydrophobic silica aerogel particles are dispersed in the dispersion medium as aggregates… after drying this dispersion, the silica aerogel particles remain as aggregates and are incorporated into the network of organic nanofibers with anionic functional groups… as a result, the content of organic nanofibers is low and the silica aerogel does not shrink or fall off, resulting in a composite that is strong and has excellent thermal insulation and sound absorption properties (see Rin at [0022])… by dispersing hydrophobic silica aerogel particles in the aqueous dispersion medium… a creamy dispersion liquid like a colloid in which the silica aerogel particles are dispersed as aggregates can be obtained… the shape and size of the silica aerogel particle aggregates (micelles) (the number of silica aerogel particles incorporated per micelle) depend on the content of organic nanofibers and surfactant, as well as the dispersion process and conditions (see Rin at [0033]). Silica aerogel particles dispersed as aggregates is taken to meet the claimed “to agglomerate at least a portion of the aerogel particles and that the coating liquid containing agglomerates of at least a portion of the aerogel particles”.
Rin also teaches that heat insulating material containing silica aerogel particles is produced by the method disclosed in the… prior art document, the particles themselves are brittle, so the molded product has low strength and is prone to cracking or breaking (see Rin at [0003])… the present disclosure provides a stable aqueous dispersion of silica aerogel particles, which can uniformly and stably disperse silica aerogel in an aqueous dispersion medium and maintains the thixotropy and high viscosity of the dispersion medium even when left at room temperature or under heating for a long period of time, and which also provides a solid composite that does not shrink when the aqueous dispersion of silica aerogel particles is dried, and which has excellent heat insulation and sound absorption properties and is strong (see Rin at [0005]).
As such, one of ordinary skill in the art would appreciate that Rin teaches that silica aerogel particles are brittle in a composite, while silica aerogel aggregates provide a uniform and stable aqueous dispersion, maintains the thixotropy and high viscosity of the dispersion medium, and provides a solid composite that does not shrink when the aqueous dispersion of silica aerogel particles is dried, and has excellent heat insulation and sound absorption properties and is strong, and seek those advantages by forming silica aerogel aggregates in the method as taught by Kumagai.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to form silica aerogel aggregates as taught by Rin in the method as taught by Kumagai because silica aerogel particles are brittle in a composite, while silica aerogel aggregates provide a uniform and stable aqueous dispersion, maintains the thixotropy and high viscosity of the dispersion medium, and provides a solid composite that does not shrink when the aqueous dispersion of silica aerogel particles is dried, and has excellent heat insulation and sound absorption properties and is strong.
Regarding claim 2, Kumagai in view of Rin teach the limitations as applied to claim 1 above, and Rin further teaches wherein an average diameter of the agglomerates is 2 to 40 times an average diameter of the prepared aerogel particles (as outlined below).
Rin teaches the shape and size of the silica aerogel particle aggregates (micelles) (the number of silica aerogel particles incorporated per micelle) depend on the content of organic nanofibers and surfactant, as well as the dispersion process and conditions… in particular, when the content of organic nanofibers is low, the dried composite has an aggregate of silica aerogel particles in the form of polyhedrons such as hexagons… on the other hand, when the content of organic nanofibers is extremely high, the aggregates are spherical (see Rin at [0033]).
As such, one of ordinary skill in the art would appreciate that the content of organic nanofibers and surfactant, as well as the dispersion process and conditions is a result effective variable that could be optimized so as to produce the desired shape and size of the silica aerogel particle aggregates (or agglomerates).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized the content of organic nanofibers and surfactant, as well as the dispersion process and conditions as taught by Rin in the method as taught by Kumagai so as to produce the desired shape and size of the silica aerogel particle aggregates (or agglomerates) so as to arrive at the claimed “wherein an average diameter of the agglomerates is 2 to 40 times an average diameter of the prepared aerogel particles”.
Regarding claim 3, Kumagai in view of Rin teach the limitations as applied to claim 1 above, and Kumagai in view of Rin further teaches wherein when a diluted solution obtained by diluting the coating liquid is observed by using an optical microscope, in an area occupied by the aerogel particles and the agglomerates within a visual field of observation, an area occupied by the agglomerates having a diameter of 20 µm or more is 50% or more (this recitation is not a step in the claimed method, and is seen as being met by Kumagai in view of Rin. Additionally, the coating material from the method as taught by Kumagai in view of Rin is expected to meet the claimed limitations).
Regarding claim 4, Kumagai in view of Rin teach the limitations as applied to claim 1 above, and Kumagai further teaches wherein a total content of the aerogel particles and the agglomerates in the coating liquid is 70% by volume or more based on a total volume of solid content (see Kumagai at [0032] teaching the content of silica aerogel in the cured product is desirably 40% by mass or more when the mass of the entire cured product is taken as 100% by mass). The % by mass is taken to meet the claimed % by volume in this instance, % by mass and % by volume in the solid/cured content is similar (see MPEP 2144.05(I)).
Regarding claim 6, Kumagai in view of Rin teach the limitations as applied to claim 1 above, and Kumagai teaches further comprising: applying the coating liquid on a support to obtain a coating film (see Kumagai at [0030] teaching preparation method… the coating material for heat insulating material, see Kumagai at [0031] teaching heat insulating material… can be produced by applying the heat insulating coating material… to the surface of a substrate and drying the coating film); and
removing at least a portion of the liquid medium from the coating film to obtain a thermal insulation material (see Kumagai at [0031] teaching thermal insulation material… has the cured product… thermal insulation paint… on the surface… heat insulating material… can be produced by applying the heat insulating coating material… to the surface of a substrate and drying the coating film).
Regarding claim 7, Kumagai in view of Rin teach the limitations as applied to claims 1 and 6 above, and Kumagai in view of Rin teach wherein the thermal insulation material has a pore volume of 0.15 cm3/g or more (this recitation is not a step in the claimed method, and is seen as being met by Kumagai in view of Rin. Additionally, the coating material from the method as taught by Kumagai in view of Rin is expected to meet the claimed limitations).
Regarding claim 8, Kumagai in view of Rin teach the limitations as applied to claims 1 and 6 above, and Kumagai further teaches wherein applying the coating liquid to the support comprises applying a pressure to the coating liquid of more than 1.5 MPa (see Kumagai at [0031] teaching thermal insulation material… has the cured product… thermal insulation paint… on the surface… heat insulating material… can be produced by applying the heat insulating coating material… to the surface of a substrate and drying the coating film… for application, a coating machine… or a spray may be used). The claimed “wherein applying the coating liquid to the support comprises applying a pressure to the coating liquid of more than 1.5 MPa” is being treated as being taught by Kumagai in view of Rin because there is no evidence indicating that the claimed “wherein applying the coating liquid to the support comprises applying a pressure to the coating liquid of more than 1.5 MPa” are critical, absent new and unexpected results. Additionally, it is within the ability of one skilled in the art, with the benefit of the teachings of Kumagai in view of Rin to choose an appropriate pressure of the coating liquid when applying the coating liquid.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kumagai in view of Rin as applied to claim 1 above, and further in view of Izumi et al. (WO 2020209131 A1, with reference to US 2022/0195231 A1 as the translation) (“Izumi” hereinafter).
Regarding claim 5, Kumagai in view of Rin teach the limitations as applied to claim 1 above, but Kumagai in view of Rin do not explicitly teach wherein mixing the emulsion and the aerogel particles further comprises mixing a water-soluble polymer having a hydrophobic group, and wherein the coating liquid further contains the water-soluble polymer.
Like Kumagai and Rin, Izumi teaches a coating material comprising aerogel particles (see Izumi at [0007] teaching a coating liquid containing aerogel particles, a water-soluble polymer having a hydrophobic group, and a liquid medium… the water-soluble polymer having a hydrophobic group improves the dispersibility of the aerogel particles), which is taken to meet the claimed “wherein mixing the emulsion and the aerogel particles further comprises mixing a water-soluble polymer having a hydrophobic group, and wherein the coating liquid further contains the water-soluble polymer”.
As such, one of ordinary skill in the art would appreciate that Izumi teaches that water-soluble polymer having a hydrophobic group improves the dispersibility of the aerogel particles, and seek those advantages by mixing the water-soluble polymer having a hydrophobic group in the method as taught by Kumagai and Rin.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to mix the water-soluble polymer having a hydrophobic group as taught by Izumi in the method as taught by Kumagai and Rin because water-soluble polymer having a hydrophobic group improves the dispersibility of the aerogel particles.
Double Patenting
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-7 and 11-13 of copending Application No. 17/795,874 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite a method of obtaining a coating liquid comprising mixing aerogel particles, resin, and a liquid medium; applying the coating liquid onto a support to obtain a coated film; and removing at least a part of the liquid medium from the coated film to obtain a thermal insulating material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 17/795,878 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications recite a method of obtaining a coating liquid comprising mixing aerogel particles, resin, and a liquid medium; applying the coating liquid onto a support to obtain a coated film; and removing at least a part of the liquid medium from the coated film to obtain a thermal insulating material.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731