DETAILED ACTION
A Restriction requirement was mailed 03/09/2026. Applicant filed a Response on 05/06/2026.
Claims 1-9 and 11-21 are pending. Claims 1-9 are rejected. Claims 11-21 are withdrawn from consideration.
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 with traverse of Group I, claims 1-9, in the reply filed on 05/06/2026 is acknowledged. The traversal is on the ground(s) that the invention of Group I is basically the same as that of Groups II and III, and there would not be a serious search and/or examination burden.
This is not found persuasive because establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d), for a detailed discussion of unity of invention under the Patent Cooperation Treaty (PCT).
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 05/06/2026.
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 1 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li, CN 104910723A (Li).
The Examiner has provided a machine translation of Li. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1 and 6-8, Li discloses a thermal insulation coating comprising an acrylic emulsion, a styrene-acrylic emulsion and calcium fluoride (binders including the calcium fluoride of claim 7), hollow glass microspheres, and water (a solvent, including the water of claim 8) (Li; page 2, lines 15-19, and Examples 1-6 at page 2, line 55-page 3, line 42).
The instant specification at paragraph [0025] discloses: “… the microspheres can be ceramic microspheres, also referred to herein as glass bubbles. As known to one with ordinary skill in the art, glass is considered as a ceramic material.”
Paragraph [0028] discloses that calcium fluoride is solar transparent (claim 6).
Li, therefore, anticipates coating compositions as claimed.
Claims 1-2, 4 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng et al, CN 101481583A (Zheng).
The Examiner has provided a machine translation of Zheng. The citation of the prior art in this rejection refers to the machine translation.
Zheng discloses a coating system with a light reflectivity of 95% (Abstract). 95% falls within the claimed solar reflectivity range of 0.9-1.0 of claim 2.
The system comprises a film forming emulsion (i.e., a binder), hollow glass microspheres, and water (claim 8) (Abstract and page 2, line 50-page 3, line 8) The hollow glass microspheres have a preferred particle size of 10-15 microns, which falls completely within the claimed range of 1-40µm of claim 4 (Zheng; page 3, lines 22-23).
The instant specification at paragraph [0025] discloses: “… the microspheres can be ceramic microspheres, also referred to herein as glass bubbles. As known to one with ordinary skill in the art, glass is considered as a ceramic material.”
Zheng, therefore, anticipates coating compositions as claimed.
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 1-6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al, CN 112341914A (Wang) in view of Nie, “Porous Morphology-Driven Optical Properties Control for Radiative Thermal Management” (Nie).
The Examiner has provided a machine translation of Wang. The citation of the prior art in this rejection refers to the machine translation.
Regarding claims 1 and 3-4, Wang teaches a thermal insulation coating comprising: 25-35 parts by mass alkyd resin (binder), 15-30 parts 15-20 parts acetone (solvent), 15-30 parts propylene glycol methyl ether (solvent), 15-25 parts titanium dioxide, 0-2 parts leveling agent, 0-1 part pigment dispersant, 0-1 parts bactericidal and antifungal agent, and 28-48 parts of a light-reflecting agent, wherein the light reflecting agent has a particle size from 40-130µm (Wang; page 2, lines 18-23).
Particles sizes of 40-130µm overlap in scope with the claimed about 1µm to about 40µm of claim 4.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The coatings automatically perform heat radiation and cooling, and can achieve light transmittance above 80% because the alkyd resin can also reflect sunlight (Wang; page 4, line 47-page 5, lines 12).
The light reflecting agent may be ceramic microbeads, ceramic bubbles, hollow glass beads or hollow glass microbeads (Wang; page 2, lines 35-36 and 41-42). The light-reflecting agent is preferably in hollow form (Wang; line 35).
Although Wang teaches that the light reflecting agent may have a spherical shape (i.e., microspheres as claimed) or a polyhedral shape, Wang teaches that hollow polyhedral light-reflecting agents are more cost effective (Wang; page 4, lines 35-37).
With respect to the claimed microspheres (emphasis added), Nie teaches hollow glass microspheres for radiative cooling (Nie; page 9). Nie teaches that hollow glass microspheres can be used in a PDMS matrix (i.e., a binder matrix) to make highly flexible and lightweight hybrid films. The method is cost-effective, inexpensive and scalable. Over 0.95 solar reflectivity can be achieved without any metal reflectors, leading to significant surface cooling (Nie; page 15).
The hollow glass microspheres are made of SiO2 (Nie; page 10, right column).
The instant specification at paragraph [0025] discloses: “The term ‘microsphere’ can be used interchangeably with ‘bubbles’. In some embodiments, the microspheres are solid. In other embodiments, the microspheres are hollow.”
Nie, therefore, teaches the SiO2 “bubbles” of claim 3.
In light of the motivation provided by Nie to use hollow SiO2 glass microspheres in radiative cooling coatings comprising a resinous binder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the hollow SiO2 glass microspheres of Nie in the heat radiation and cooling coatings of Wang in order to obtain a highly flexible and lightweight film that can achieve over 0.95 solar reflectivity without any metal reflectors, leading to significant surface cooling, and thereby arrive at the claimed invention. Further, by using the method of Nie, those skilled in art would have been able to solve the problem of Wang of using hollow glass microbeads in resinous radiative cooling compositions, i.e., high cost, because Nie teaches a method that is cost-effective, inexpensive and scalable.
Regarding claim 2, Wang in view of Nie are relied upon as teaching the limitations of claim 1 as discussed above. Wang teaches the coatings can achieve light transmittance above 80% because the alkyd resin can also reflect sunlight (Wang; page 5, lines 9-12).
Nie teaches when using the hollow glass microspheres, over 0.95 solar reflectivity can be achieved without any metal reflectors, leading to significant surface cooling (Nie; page 15).
Therefore, it is clear that the coating of Wang in view of Nie can achieve high solar reflectivity that overlap with the range of from 0.9-1 as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 5, Wang in view of Nie are relied upon as teaching the limitations of claim 1 as discussed above. Wang teaches that the wall thickness of the light-reflecting agent is 1-2µm. 1-2µm falls within the claimed range of about 0.05µm to about 2µm as claimed.
Regarding claim 6, Wang in view of Nie are relied upon as teaching the limitations of claim 1 as discussed above. Wang teaches the coatings can achieve light transmittance above 80% because the alkyd resin can also reflect sunlight (Wang; page 5, lines 9-12).
Given that Wang teaches in order to ensure the reflection of sunlight by the thermal insulation coating, that the transparency of the alkyd resin should be high, i.e., the light transmittance is above 80%, it is clear that the resin (i.e., binder) would include being solar transparent as claimed.
Regarding claim 9, Wang in view of Nie are relied upon as teaching the limitations of claim 1 as discussed above. Wang teaches using 25-35 parts by mass alkyd resin (binder) and 28-48 parts of the light-reflecting agent (glass or ceramic microspheres) (Wang; page 2, lines 18-22).
Wang does not explicitly teach a weight ratio of ceramic microspheres to binder of 3:7 as claimed.
With respect to the difference, Nie teaches that as the volume concentration of hollow glass microspheres increases, reflectivity increases (Nie; chart on page 12).
It has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the weight ratio of ceramic microspheres to binder, such as by increasing the volume of hollow glass microspheres, including over the presently claimed, in order to obtain a radiative cooling composition with high reflectivity, thereby increasing the cooling results.
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, 15-16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12, 20-21 and 24 of copending Application No. 19/168,518 (reference application “copending ‘518). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reason:
Regarding claims 1, 3 and 6-7, copending ‘518 claim 1 claims a high solar reflectivity coating composition comprising yttrium oxide hollow microspheres (i.e., yttrium oxide ceramic microspheres or bubbles of claim 3) and the inorganic binder potassium bromide (a solar transparent binder of claims 6-7) in a solution (i.e., in a solvent).
Regarding claim 2, copending ‘518 claim 20 claims that the composition has a solar reflectivity of 0.90 to 0.98.
Regarding claim 8, copending ‘518 claim 12 claims that the solution is water.
Regarding claims 13, 15, 18 and 19, copending ‘518 claim 21 claims a method for producing the coating of claim 11 comprising dissolving the inorganic binder in the solution, and dispersing the yttrium oxide hollow microspheres into the solution (i.e., adding both a binder and ceramic microspheres to a solvent and dispersing or mixing).
Regarding claim 20, copending ‘518 claim 24 claims the solvent is water.
Regarding claims 5 and 16, while the copending ‘518 claims do not explicitly claim a ceramic microsphere diameter range as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the ceramic microsphere diameter, including over the presently claimed, in order to obtain a coating composition with high solar reflectivity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references were cited in PTO-892 mailed 03/09/2026:
Fan, CN 106118186A, discloses coating compositions comprising an aqueous polyurethane emulsion, ethyl acrylate and sodium fluoride (i.e., binders including the NaF of claim 7), glass microbeads (i.e., ceramic microspheres or SiO2 “bubbles” of claim 3), and water (i.e., the solvent water of claim 8) (Fan; Abstract; page 1, lines 58-59; page 2, lines 40-42 and page 3, lines 36-38). The coatings have good reflective performance (Fan; page 2, lines 31-33 and page 3, lines 19-21).
Codolar et al, US 2015/0210863A1 (Codolar), teaches coating compositions comprising hollow glass microspheres (i.e., ceramic microspheres) and a silicate-based binder (i.e., a binder) (Codolar; [0008-0012]). The coating compositions may be solvent-based or water-based (Codolar; [0019] and [0037]). An accelerator may be added, such as potassium chloride or potassium bromide (i.e., binders) (Codolar; [0046]). The glass microspheres have a particle diameter such that 90% have a particle size less than 100µm (Codolar; [0066-0067]).
Zhang, CN 105855458A (Zhang), discloses coating compositions comprising water (i.e., a solvent), magnesium fluoride (i.e., a binder), and ceramic microspheres (Zhang; Abstract; page 1, line 54; page 2, lines 39-42, and page 3, lines 11-14).
Rejections over these references would be cumulative to the above rejections.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAROLINE D LIOTT whose telephone number is (703)756-1836. The examiner can normally be reached M-F 8:30-5.
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/CDL/ Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732
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