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 .
DETAILED ACTION
Claim Interpretation
It is noted that claim 1 is recited using open transitional phrase. As such, in terms of mapping elements of the prior art to elements as claimed, the prior art may have additional elements (e.g. additional insulation layer and adhesive layer) that are not considered to map onto the claimed elements. Alternatively, in view of the open transitional phrase, a biosoluble insulation layer in effects reads as “one or more biosoluble insulation layer(s)” or can alternatively be an insulation layer having multiple sublayers.
This is particularly relevant, as pending claims 4 and 5 expressly covers the situation in which there are multiple insulation layers, wherein no single insulation layer/ sub-layer is affixed to both metallic layers solely via respective adhesive layers. As such, Applicant’s position of narrow interpretation when it comes to prior art but broad interpretation when it comes to coverage of Applicant’s own claim is not well-taken. Furthermore were Counsel’s remarks to be given full weight, claims 4 and 5 would run afoul of the provisions of 35 U.S.C. 112(d).
Furthermore, as Applicant has never provided a definition for aluminum foil, it is interpreted according to BRI. In this case, it is taken to mean a layer of aluminum.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 1, 2, 4, 5, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipate by or, in the alternative, under 35 U.S.C. 103 as unpatentable over U.S. 2015/0336356 A1 (“D2”).
Considering claims 1, 2, and 9, D2 discloses a wall element comprising opposing metallic skin sheets and at least one core layer between the skin sheets, the core layer preferably comprising bio-soluble mineral fibers. (D2 abs. and ¶¶ 0028-0034). D2 is analogous art, for it is directed to the same field of endeavor as that of the instant application (fire-proofing material). D2 further discloses that the core layer is adhered to respective metallic skin sheets via respective aqueous based adhesives. (Id. ¶ 0036).
As discussed in ¶ 3 above, aluminum foil is hereby interpreted broadly, namely that it is a distinct layer of aluminum. D2 discloses that at least one of the skin sheets is coated with an outermost layer of aluminum. (Id. ¶ 0017). Alternatively, D2 also discloses that aluminum can also be used as a skin sheet and notes that this is advantageous from the perspective of formation of high temperature resistant aluminum oxide layer when subjected to fires. (Id. ¶ 0012). Either situation is considered to read on the claimed aluminum foil layer. As either situation is also preferentially disclosed, they are considered to be disclosed with sufficient specificity or alternatively obvious. Furthermore, as D2 a) discloses only three types of metals for its skin sheet, one of which being aluminum, and as D2 b) identifies a particular advantage of using aluminum, usage of aluminum for one of the skin sheets is deemed to be disclosed with sufficient specificity or alternatively obvious. Though not required by the claims, it is further noted that D2 discloses its skin sheet to have thickness of 0.1 to 0.8 mm. (D2 claim 7). This means the aluminum skin sheet is in fact a free-standing layer, thereby reading on even Applicant’s unduly narrow interpretation of aluminum foil layer. D2 anticipates or renders obvious claims 1 and 9.
Considering claims 4 and 5, at least one core layer renders obvious claims 4 and 5.
Claims 1, 2, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipate by or, in the alternative, under 35 U.S.C. 103 as unpatentable over EP 3804976 A1 (“D3”).
Considering claims 1, 2, and 9, D3 discloses a multilayered laminate comprising a heat reflective aluminum foil layer 1 having thickness of 50 µm to 1 mm, a hot melt adhesive layer 2, a first insulating layer 3, and various other hot melt adhesive layer(s), wherein the multilayered laminate is to be laminated onto a steel layer. (D3 ¶¶ 0016, 0017, 0028, 0043, and 0053; clm. 1, 3, 10, and 11; and Fig. 1). D3 is analogous art, for it is directed to the same field of endeavor as that of the instant application (fire/heat resistant material). D3 discloses that its first insulating layer can be a nonwoven fabric comprising alkaline earth silicate fibers. (D3 ¶¶ 0018, 0020, and 0021). With alkaline earth silicate expressly named as a heat resistant fiber, its usage is deemed to be disclosed with sufficient specificity or alternatively obvious. When the multilayered laminate is applied onto a steel layer, D3 anticipates or renders obvious claims 1, 2, and 9.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over D2 as applied to claim 1 above.
Considering claim 6, D2 discloses that the skin sheet is preferentially steel sheet having thickness of approximately 0.1 to approximately 0.8 mm, wherein the steel sheet is treated with a corrosion protection layer based on zinc, and that the core layer preferably has thickness of approximately 0.5 to 2.0 mm. (D2 ¶¶ 0030-0032). Steel treated with a corrosion protection layer based on zinc is a well-known galvanization process. D2 further discloses that the skin sheets can be of different materials and thicknesses. (D2 ¶ 0030). As such, one skin sheet of steel and another of aluminum is obvious in view of express disclosures of D2.
It is noted that the thickness ranges disclosed overlap respectively recited ranges. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05).
Considering claim 7, as discussed above, the treated steel layer at ~0.1 to ~0.8 mm overlaps the value of 0.4 mm.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over D2 as applied to claim 2 above, and further in view of U.S. 2020/0295332 A1 (“D4”).
Considering claim 3, although D2 discloses usage of biosoluble fibers, D2 does not teach the usage of such material in paper form. However, usage of such material in paper form is well-known in the field of fire-resistant materials, as taught in D4. (D4 ¶¶ 0031-0034 and 0044). Person having ordinary skill in the art would have been motivated to use alkaline earth silicate fibers in paper form, as D4 is considered to have demonstrated that such a form is known in the art for fire-resistant materials. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over D3 as applied to claim 2 above, and further in view of U.S. 2020/0295332 A1 (“D4”).
Considering claim 3, although D3 discloses usage of alkaline earth silicate fibers, D3 does not teach the usage of such material in paper form. However, usage of such material in paper form is well-known in the field of fire-resistant materials, as taught in D4. (D4 ¶¶ 0031-0034 and 0044). Person having ordinary skill in the art would have been motivated to use alkaline earth silicate fibers in paper form, as D4 is considered to have demonstrated that such a form is known in the art for fire-resistant materials. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over D3 as applied to claim 1 above, and further in view of U.S. 2003/0183626 A1 (“D5”).
Considering claims 6-8, as discussed above, aluminum foil layer 1 of D3 has thickness of 50 µm to 1 mm. This overlaps the ranges of the foil layer. D3 discloses its insulating layer to have thickness of 1 to 10 mm. (D3 ¶ 0025). This overlaps the range for the biosoluble insulation layer. While D3 does not disclose the thickness of the steel substrate onto which the multilayered laminate is adhered, D3 discloses that such steel substrate the skin sheet is preferentially steel sheet used for fuel tanks. (D3 ¶ 0043).
It is noted that fuel tanks made from steel treated with Zn-protective layers and having thickness of ~0.8 mm is known (D5 ¶¶ 0063-0066). It would have been obvious to one of ordinary skill in the art to have applied the multilayered laminate of D3 onto steel with Zn-protective layers, given the express disclosures of D3. As a result, the thickness ranges disclosed overlap respectively recited ranges. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness.
Response to Arguments and Additional Comments
In view of amendments to claim 1, all prior art rejections based on at least D1 have been withdrawn.
In view of amendments to claim 1, all prior art rejections based on at least D2 have been withdrawn. New rejections over at least D2 have been instated above.
In view of amendments to claim 1, all prior art rejections based on at least D3 have been withdrawn. New rejections over at least D3 have been instated above.
Re: Applicant’s arguments applicable to the new rejections above, it is noted that Applicant’s contentions are riddled with fallacies.
Applicant’s arguments against rejections based on D2 are primarily based on unduly narrow interpretations. It is not in question that D2 discloses a skin sheet of aluminum, the skin sheet having thickness of 0.1 to 0.8 mm. Though not termed “foil”, this is a foil layer in view of thickness disclosed by the reference.
Applicant’s arguments against rejections based on D3 are primarily based on allegation that 1) a stack of layers placed on a steel substrate does not result in a laminate structure and 2) presence of other layers in D3 means that D3 does not read on claim 1.
Similar to Applicant’s contention re: D2, contention 1) is no more than a fallacious argument based solely on semantics but one that is without merit upon closer scrutiny. In this case, the entirety of a steel substrate coated with the layers shown in Fig. 1 of D3 is a composite panel, and as claim 1 is recited using open transitional phrase (see ¶¶ 1 and 2 above), a steel substrate coated with the stack of layers reads on claim 1. Similarly, that claim 1 allows presence of other layers means contention 2) is not commensurate with the scope of the pending claims.
Amending claim 1 to recite limitations of claim 4 and claim 8 would overcome rejections based on both 1) at least D2 and 2) at least D3 as set forth above.
Concluding Remarks
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 Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights