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 with traverse of group II invention with species C2 (hollow microspheres with walls including metal atoms are hollow metal oxide microsphere or hollow metal silicate microspheres) (claim 7-11) in the reply filed on 11/12/2025 is acknowledged. The traversal is on the ground(s) that claim 9 recited species C2 depending on claim 8 recited species C1. This is found persuasive therefore, such species election has been withdrawn.
The requirement is still deemed proper and is therefore made FINAL.
Claim 1-6 and 12-20 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/12/2025.
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 7-11 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. In this case, claim 7 first recites “hollow microsphere including a metal”, next recites transforming solutions including “metal atoms”, and further recites “replacement of silicon atoms in said walls of said hollow microspheres with said meta atoms of transforming solution”, one of ordinary skill in the art is uncertain what is the relationship between hollow microsphere’s metal as compared to hollow microsphere’s silicon, are they the same or different substance included in such hollow microsphere? Nor one of ordinary skill in the art is certain what is the relationship between the hollow microsphere’s metal as compared to transforming solution included “metal”. If hollow microsphere’s metal being the same as compared to the transforming solution’s metal, how can one of ordinary skill in the art ascertain the hollow microsphere’s silicon being replaced with transforming solution’s metal or not? Therefore, such limitations render claim indefiniteness. All claim 7’s depending claims are rejected for similar reasons.
Claim 9 is 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. In this case, elected claim 9 depending on claim 8 recited hollow silica microsphere or hollow glass sphere, one of ordinary skill in the art is uncertain how can metal oxide hollow microsphere or metal silicate hollow sphere being dependent on claim 8 recited hollow silica microsphere or hollow glass sphere because metal oxide and/or a metal silicate are not silica or glass material at all. Therefore, such limitation renders confusion for one of ordinary skill in the art.
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 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. In this case, elected claim 9 recited metal oxide hollow microsphere or metal silicate hollow sphere does not appear further limit its parent claim 8 recited hollow silica microsphere or hollow glass microsphere at all. 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 § 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 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.
Claim(s) 7 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Gough (US5632326) in view of Krowl (US6840994).
Gough teaches a refractory composition comprising hollow microspheres containing alumina or alumina-silica, readily oxidizable metal, for example, aluminum, magnesium or silicon or an alloy containing a major component of one or more of these metals, specifically aluminum (col. 3 lines 23-42, 60-65, col. 4 lines 1-25), wherein such refractory composition sleeves are produced by hand or mechanical ramming the mixed components into a mould. Gough further teaches a method of producing a casting in a mold having a mold cavity, comprising the steps of:
(a) locating in operative association with the mold cavity a bonded refractory composition comprising hollow alumina- and silica-containing microspheres, and a binder, wherein the microspheres have an alumina content of at least 40% by weight, and the quantity of alumina present in the composition expressed as a percentage of the total alumina plus silica is less than about 55% by weight;
(b) pouring molten metal into the mold so as to fill the mold cavity; and
(c) allowing the molten metal to solidify (claim 17-20).
Regarding claim 7, Gough does not expressly disclose controlling the temperature of the hollow microspheres and the transforming solution (i.e. metal, such as aluminum) with a sufficient range to facilitate replacement of silicon atoms in said walls of hollow microspheres with said metal atoms of the transforming solution.
Krowl teaches a method of forming a calcium silicate insulating material comprising mixing the lime, a siliceous material, e.g. alumina silica microspheres etc. to form an aqueous slurry, placing the aqueous slurry into a mold to form a shape retaining molded body, then curing the molded body under high pressure steam for such time and at such pressure as necessary cause the lime, siliceous material (e.g. alumina silica microsphere) and water to react to form the tobermorite calcium silicate hydrate crystalline matrix, and drying the cured body may then be oven dried to reduce its moisture content and subsequently heat treated to burn away any organic fiber material that was utilized to facilitate handling and molding (col. 5 lines 15-44).
It would have been obvious for one of ordinary skill in the art to adopt such high pressure steam curing as shown by Krowl to modify the molding process of producing refractory material of Gough because by such high pressure steam curing can help reacting alumina silica microsphere and lime (CaO) to form desired silicate ceramic material.
Gough already teaches molding a mixture comprising hollow microsphere of alumina-silica with aluminum metal, while Krowl teaches such ceramic mixture can be cured under high pressure steam, i.e. heated with certain temperature, which is a same or substantially the same controlling temperature of a mixture containing metal and alumina-silica microsphere to a sufficient range as that of instant application, therefore, same or substantially the same reaction of metal replacing silicon atoms in hollow alumina silica microsphere would be expected.
As for the claimed lowering the temperature of said hollow microspheres with walls including metal atoms to solidify said transforming solution and forming a cast, Krowl reaches high pressure steam curing being used to react the alumina-silica microspheres and metal for obtaining desired ceramic material in the mold, it would have been obvious for one of ordinary skill in the art to lower the formed ceramic material temperature therefore to solidify the transforming solution temperature and also obtaining a cooled ceramic/refractory material in a casting as final product.
Regarding claim 8, such limitation has been met as discussed above.
Regarding claim 9, Gough already teaches using a hollow microsphere containing alumina, i.e. a metal oxide hollow microsphere, while Krowl already teaches curing such microspheres containing microspheres with metal compound leading to formation of silicate material. Therefore, hollow microspheres with wall including metal atoms are hollow metal oxide microspheres or hollow metal silicate microspheres is expected.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Gough (US5632326) in view of Krowl (US6840994) as applied above, and further in view of Showman (WO0027561).
Gough further teaches the bonded refractory compositions of the invention may also be used to produce breaker cores. A breaker core, which is usually in the form of a disc shaped body having a central aperture, is located at the base of a feeder sleeve and may be formed integrally with the feeder sleeve or fixed to the base of the feeder sleeve (col. 2 line 63-col. 3 line 6).
Regarding claim 10, Gough in view of Krowl does not expressly teach the claimed placing a consumable plug into the mold.
Showman teaches a casting mold can comprises a sleeve (item 1) in contact with a consumable material (item 2, Fig. 1) and such sleeve can be used covers part of the riser (comprising the cavity) of the mold (page 5 lines 10-15, page 5 line 26-page 6 line 10, page 6 line 21- page 7 line 3, Fig. 2). Showman also teaches a breaker core can be used as a seal at the bottom of the sleeve (page 7 lines 4-8).
It would have been obvious for one of ordinary skill in the art to adopt such consumable material containing sleeve as cover as shown by Showman to modify the mold of Gough in view of Krowl because by doing so can help providing consumable material for burning to form an air gap which acts as an insulating layer for the sleeve as suggested by Showman (page 6 line 21-page 7 line 3). Since such consumable material containing sleeve being used to cover the openings, it would have been obvious for one of ordinary skill in the art “obvious to try” to place such consumable sleeve ( i.e. plug) in an opening at a bottom (or an end) of the mold, and introducing the transforming solution through such opening by consuming such consumable plug for help providing more desired insulating layer as suggested by Showman.
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Gough (US5632326) in view of Krowl (US6840994) as applied above, and further in view of Molz (US2006/0242813).
Gough further teaches the mold may be an ingot mold and the bonded refractory composition may be in the form of a sleeve or boards located in the top of the mold or in the head box thereto (col. 2 lines 43-52).
Regarding claim 11, Gough in view of Krowl does not expressly teach placing a porous plug in a top opening of the mold.
Molz teaches mold can be equipped with vents or bleeder lines to allow air to escape from the mold during the molding process, or the mold may be equipped with a porous metal or ceramic insert to allow air to escape from the mold (para [0028]).
It would have been obvious for one of ordinary skill in the art to placing such porous metal or ceramic insert as shown by Moltz to modify the top or head box of the mold as shown by Gough in view of Krowl because by doing so can help venting air from the top part of the mold during the molding process as suggested by Molz (para. [0028]).
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.
Claim 7-8 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of U.S. Patent No. 11964873. Although the claims at issue are not identical, they are not patentably distinct from each other because US’873 teaches a substantially the same method as that of instantly claimed, e.g. a method for producing a casting including: providing a mold; providing hollow microspheres including silicon; introducing transforming solution into said mold etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUN LI whose telephone number is (571)270-5858. The examiner can normally be reached IFP.
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, Ching-Yiu (Coris) Fung can be reached at 571-270-5713. 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.
/JUN LI/ Primary Examiner, Art Unit 1732