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 .
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4 and 7-10 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by Hastings (WO 90/10668).
Hastings is directed to an intumescent, fire-retardant coating material having a fluid consistency and comprising (a) a base material including a foaming agent (claimed catalyst) and a binder (claimed reactant) and (b) a refractory fibrous material consisting of fibers, including silicon dioxide (Page 1, Lines 21+ and Pages 4 and 5). More particularly, (a) said fibrous material can be included at weights as large as 80 ounces per gallon (128 ounces) of said base material (Page 7, Lines 10-19) and (b) said fibrous material is preferably composed of 40%-55% by weight of silicon dioxide. Thus, when using 80 ounces of refractory fibers, any loading for the silicon dioxide fibers would satisfy the claimed invention. Using the preferred loadings identified above, silicon dioxide would have a weight between 32 ounces (40% of 80 ounces) and 44 ounces (55% of 80 ounces), which results in an overall silicon dioxide weight percentage between approximately 15 weight percent (32 ounces /208 ounces (total weight is 208 ounces)) and approximately 21 weight percent (44 ounces/208 ounces). These weights are fully encompassed by claimed range between 10 weight percent and 85 weight percent.
Furthermore, in an analogous manner to the claimed invention, said coating will expand or foam upon exposure to a certain magnitude of heat (Page 11, Lines 19+). Lastly, the claimed heat conducting property is associated with the presence of silicon dioxide fibers (see Page 13 in Applicant’s originally filed specification). As such, it reasons that the coating of Hastings has a “heat conductivity” prior to foaming as required by the claimed invention.
Regarding claim 2, Hastings teaches fiber diameters between 2 microns and 10 microns (Page 6, Lines 1-5) and such is fully encompassed by the claimed range between 5 nm and 10 microns.
With respect to claim 3, Hastings describes temperatures that are significantly greater than 130°C (Page 8, Lines 1-10 and Page 11, Lines 19+).
As to claim 4, given that the composition or coating of Hastings includes a catalyst, a reactant, and silicon dioxide at loadings between 10% by weight and 85% by weight, it reasons that the coating of Hastings would demonstrate a behavior in accordance to the claimed invention (lack of evidence that additional factors contribute to the claimed properties). It is also emphasized that the claims as currently drafted are directed to a composition and it is not required for the reference to actually carry out a foaming reaction in 30 seconds or 5 minutes.
Regarding claims 7 and 8, the claims fail to further define the makeup of the claimed composition (intended use of claimed composition does not impart structural limitations to the claimed composition).
With respect to claim 9, the claimed flame retardancy appears to naturally flow from a composition including a reactant, a catalyst, and between 1 weight percent and 85 weight percent of silicone dioxide fibers having a diameter between 5 nm and 10 microns.
As to claim 10, the claims are directed to a composition and limitations pertaining to a thickness after foaming fail to impart structural limitations to the claimed composition. Hastings states that the composition or coating will expand approximately 5-12 times an original thickness at temperatures that range between 1200°F and 4000°F (approximately 650°C-2200°C). Thus, the final thickness is simply a function of the initial coating thickness- the coating or composition of Hastings has the capability of having a final or foamed thickness of 600 microns and providing heat insulation at temperatures exceeding 800°C.
Claim(s) 1, 3, and 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tong (US 2016/0272893).
Tong is directed to a intumescent material that is viscous and pliable (corresponds with semi-solid state) and designed for fire protection and comprises 30 weight percent or less of a resin (claimed reactant), a reinforcing material, an inorganic filler, and an intumescent component (Paragraph 14). It is further noted that (a) Tong teaches a preferred resin loading as small as 5 weight percent (Paragraph 29), (b) Tong teaches that silicon dioxide can constitute said reinforcing fibers and be included at loadings as high as “about” 50 weight percent (Paragraphs 30 and 31), and (c) said inorganic filler can be a metal oxide, such as silicon dioxide, and included at loadings in any suitable amount, for example “about” 5 to 25 weight percent (Paragraph 33). As such, Tong is directed to a wide variety of compositions in which a silicon dioxide loading is between 10 weight percent and 85 weight percent.
Furthermore, in an analogous manner to the claimed invention, said composition will expand or foam upon exposure to a certain magnitude of heat (Paragraph 36). Lastly, the claimed heat conducting property is associated with the presence of silicon dioxide fibers (see Page 13 in Applicant’s originally filed specification). As such, it reasons that the composition of Tong has a “heat conductivity” prior to foaming as required by the claimed invention.
With respect to claim 3, a foaming reaction occurs as a result of a fire (Paragraph 36) and such temperatures are considerably greater than 130°C. Tong further states that an activation stage occurs between temperatures of 200°C and 300°C (Paragraph 27).
Regarding claims 7 and 8, the claims fail to further define the makeup of the claimed composition (intended use of claimed composition does not impart structural limitations to the claimed composition).
With respect to claim 9, the claimed flame retardancy appears to naturally flow from a composition including a reactant, a catalyst, and between 1 weight percent and 85 weight percent of silicone dioxide fibers. Tong also states that fire protection preferably lasts up to 4 hours with a hydrocarbon fire test method UL 1709 (Paragraph 36).
As to claim 10, the claims are directed to a composition and limitations pertaining to a thickness after foaming fail to impart structural limitations to the claimed composition. Tong states that the composition or coating will expand at least 10 times an original thickness during a fire (Paragraph 36). Thus, the final thickness is simply a function of the initial composition thickness- the coating or composition of Tong has the capability of having a final or foamed thickness of 600 microns. Additionally, as detailed above, the foamed composition preferably provides fire protection for up to 4 hours (fire protection would be expected to be present at the claimed temperature given the substantial overlap in makeup and fire temperatures).
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, 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.
Claim(s) 4 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tong.
As to claim 4, given that (a) silicon dioxide can constitute said reinforcing fibers and be included at loadings as high as “about” 50 weight percent and (b) said inorganic filler can be a metal oxide, such as silicon dioxide, and included at loadings in any suitable amount, for example “about” 5 to 25 weight percent, it reasons that a total silicon dioxide loading of 80 weight percent would have been well within the purview of one having ordinary skill in the art (end points add up to 75 weight percent and the terms “about” and “any suitable amount” broaden the range). It is further noted that Applicant has not provided a conclusive showing of unexpected results for the claimed silicon dioxide loading. Also, the claimed duration of the foaming reaction fails to further define the structure of the claimed composition (limitations fail to limit the makeup of the claimed composition). One of ordinary skill in the art would have found it obvious to use silicon dioxide as the disclosed reinforcing fibers and the inorganic filler given the general disclosure of Tong detailed above.
Regarding claim 5, given that (a) silicon dioxide can constitute said reinforcing fibers and be included at loadings between “about” 0.5 weight percent and 50 weight percent and (b) said inorganic filler can be a metal oxide, such as silicon dioxide, and included at loadings in any suitable amount, for example “about” 5 to 25 weight percent, it reasons that a total silicon dioxide loading of 40 weight percent would have been well within the purview of one having ordinary skill in the art (end points add up to 75 weight percent and the terms “about” and “any suitable amount” broaden the range). It is further noted that Applicant has not provided a conclusive showing of unexpected results for the claimed silicon dioxide loading. Also, the claimed duration of the foaming reaction fails to further define the structure of the claimed composition (limitations fail to limit the makeup of the claimed composition).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R FISCHER whose telephone number is (571)272-1215. The examiner can normally be reached M-F 5:30-2:00.
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Justin Fischer
/JUSTIN R FISCHER/Primary Examiner, Art Unit 1749 January 14, 2026