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 1-4, 6, 8-10, and 12-14; species B(i): an aerogel; and C(i): a polymer matrix in the reply filed on 04/16/2026 is acknowledged. Claims 5, 11, 16, 20, 21 and 27 have been cancelled. Claims 7, 15, 17-19, 22-26 and 28 have been withdrawn from consideration as being directed to a non-elected invention.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
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.
Claims 1, 4, 9, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 6,265,333 to Dzenis et al. (hereinafter “Dzenis”).
Dzenis discloses a composite material comprising a preform comprising at least two layers 12, 14 of primary reinforcing fibers and a layer of secondary reinforcing layer 10 disposed between two layers of primary reinforcing fibers wherein the preform is infused with a polymer matrix (figure 1; column 11, lines 45-65). The secondary reinforcing fibers have a diameter of 50 to 5000 nm, corresponding to the claimed nanoporous material (column 8, lines 25-30). The secondary reinforcing fiber is thus adjacent to at least a portion of the primary reinforcing fibers.
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As to claim 4, the secondary reinforcing fibers are prepared by electrospinning to form a random nonwoven mat of fibers suitable for interface reinforcement (column 8, lines 30-35).
As to claim 9, the interstices in the layers of the primary and secondary reinforcing fibers are completely filled with the polymer matrix (column 10, lines 40-45). That is, the interstices are substantially undetectable when the secondary reinforcing layer is included in the composite material.
As to claim 12, the composite material comprises a preform comprising at least two layers of primary reinforcing fibers and a layer of secondary reinforcing layer disposed between two layers of primary reinforcing fibers wherein the preform is infused with a polymer matrix (figure 1; column 11, lines 45-65).
As to claim 13, the composite material comprises layers of unidirectional fibers on unidirectional fibers (examples, column 12, lines 50-55).
Claims 2 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dzenis.
Dzenis discloses that the secondary reinforcing fibers are prepared by electrospinning of a polymer solution to form a random nonwoven mat of fibers suitable for interface reinforcement (column 8, lines 30-35). The secondary reinforcing fibers having a diameter of 300 to 500 nm (column 12, lines 35-40) are infused with the polymer matrix (column 11, lines 45-65). This is the same process for forming the nanoporous material as described in the Applicant’s disclosure.
Therefore, the examiner takes the position that the layer of the secondary reinforcing fibers would inherently be a nanoporous network comprising capillary pores extending along a horizontal dimension of the composite so as to enhance the infusion of the polymer matrix into the pores thereof. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 1-4, 6, 8, 10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0287641 to Steiner, III (hereinafter “Steiner”).
Steiner discloses a composite material comprising alternating layers of multiple plies 27 and an aerogel 28 that are bonded to each other wherein each ply comprises of multiple layers of sheets 30 and a polymer matrix 31 holding the layers together (paragraph 61; and figure 8). The sheets comprise oriented fibers, unoriented fibers, woven fibers or a continuous material (paragraph 62). The aerogel layer is adjacent to the fiber ply. The aerogel layer reads on the claimed nanoporous material.
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As to claims 2-4, 6, 8, and 10, the aerogel layer is a nanoporous network with an average pore size of 2 to 50 nm; and a porosity of up to 99.98% (paragraph 48). Voids are introduced in the aerogel by molding, needle, waterjet or laser (paragraph 80). This at least indicates that the aerogel layer comprises capillary pores extending along a horizontal dimension thereof.
As to claim 12, the composite material comprises alternating layers of multiple plies 27 and an aerogel 28 that are bonded to each other wherein each ply comprises of multiple layers of sheets 30 and a polymer matrix 31 holding the layers together (paragraph 61; and figure 8). The sheets comprise oriented fibers, unoriented fibers, woven fibers or a continuous material (paragraph 62).
As to claim 13, the multiple sheet plies comprise fibers with the fiber orientation rotated between each sheet (paragraph 77).
As to claim 14, the composite material consequently comprises, from bottom to top, a plate 32, an adhesive layer 34, a first aerogel 33, a second aerogel 34 wherein an interface of the adhesive layer and the first aerogel layer, and an interface of the two aerogel layers are reinforced by an array of substantially oriented carbon nanotubes. As the carbon nanotubes are embedded in the aerogel layer, the aerogel layer serves as a polymer matrix for the carbon nanotube fibers.
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Claim 9 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Steiner.
Steiner does not explicitly disclose the composite material free of voids.
However, it appears that the composite material of Steiner meets all structural limitations and chemistry required by the claims. The composite material comprises alternating layers of multiple plies 27 and an aerogel 28 that are bonded to each other wherein each ply comprises of multiple layers of sheets 30 and a polymer matrix 31 holding the layers together (paragraph 61; and figure 8). The sheets comprise oriented fibers, unoriented fibers, woven fibers or a continuous material (paragraph 62). The aerogel layer is adjacent to the fiber ply.
The aerogel layer is a nanoporous network with an average pore size of 2 to 50 nm; and a porosity of up to 99.98% (paragraph 48). Voids are introduced in the aerogel by molding, needle, waterjet or laser (paragraph 80). This at least indicates that the aerogel layer comprises capillary pores extending along a horizontal dimension thereof.
The multiple sheet plies comprise fibers with the fiber orientation rotated between each sheet (paragraph 77).
Alternatively, the composite material consequently comprises, from bottom to top, a plate 32, an adhesive layer 34, a first aerogel 33, a second aerogel 34 wherein an interface of the adhesive layer and the first aerogel layer, and an interface of the two aerogel layers are reinforced by an array of substantially oriented carbon nanotubes 35. As the carbon nanotubes are embedded in the aerogel layer, the aerogel layer serves as a polymer matrix for the carbon nanotube fibers.
Therefore, the examiner takes the position that the composite material would inherently be free of voids in the presence of the aerogel layer. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claims 1-4, 6, 8, 10, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2020/0061970 to Chen (hereinafter “Chen”).
Chen discloses a composite structure comprising alternating layers of a graphene and an aerogel, together with UHMWPE fabric layers between each pair of the graphene and aerogel layers (paragraph 87). The graphene layer is composed of a polyurethane matrix and graphene platelets dispersed within the polyurethane matrix (paragraph 67). The aerogel layer is adjacent to the UHMWPE fabric layer.
As to claims 2-4 and 6, the aerogel layer is a nanoporous network with a pore size ranging from 0.1 to 100 nm and a porosity of at least 95% (paragraph 15). The aerogel layer must have a network of capillary pores extending along a horizontal dimension of the composite layer in view of the great porosity of at least 99% (paragraph 15).
As to claim 8, the aerogel layer is a nanoporous network with a pore size ranging from 0.1 to 100 nm and a porosity of at least 95% (paragraph 15).
As to claim 10, the aerogel layer is a nanoporous network with a pore size ranging from 0.1 to 100 nm and a porosity of at least 95% (paragraph 15).
As to claim 12, a composite structure comprises 26 layers of UHMWPE fibers alternating with a backing structure comprising 25 layers of aerogel alternating with 25 layers of polyurethane (example 2; and paragraph 89).
As to claim 13, the UHMWPE layer is a woven layer (paragraph 87). The composite structure comprises layers of woven fibers on woven fibers.
Claim 9 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen.
Chen does not explicitly disclose the composite material free of voids.
Chen discloses that the combined layers making up the composite structure are cured at atmospheric pressure for 24 hours. This is the same process as disclosed in the Applicant’s specification. Therefore, the examiner takes the position that the composite structure would inherently be free of voids in the presence of the aerogel layer.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Chen.
Chen discloses the composite structure wherein the aerogel layer can be formed from polyimide, polystyrene, polyurethane, polyacrylate or epoxy resin (paragraph 15) while the polymer matrix of the graphene layer is formed from polyurethane, polyethylene, polyamide, polyimide, or epoxy resin (paragraph 26).
Chen does not explicitly disclose the composite material where the polymer matrix and the aerogel layer are made of the same polymer.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to construct a composite structure where both of the polymer matrix and the aerogel layer are made of the same polymer, motivated by the desire to enhance the adhesion strength between the graphene layer and the aerogel layer.
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 1-4, 9-10, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,263,663. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the U.S. Patent No. 12,263,663 disclose each and every limitation of the claims of the present invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights