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 § 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 4-5 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 claim 4 which recites, “volume fraction of the organic substance particles is less than 50%”, however, it is not clear what the volume fraction is based on, it is based on total amount of overall composite member or volume fraction is based on total volume in the matrix. Clarification is requested.
In claim 5, which recites, “carbon is partially present”, it is not clear how much percent is required to be considered partially, clarification is required.
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) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Skorina et al. (US 2019/0112227) in view of Wolff et al. (US 5122291) and Kondo et al. (US 2005/0030218).
Regarding claims 1, 3 Skorina teaches a plurality of granules comprising particulate silicate material (the inorganic substance being an oxide) bonded together with an inorganic binder (connection part) (abstract), which corresponds to the particles of the inorganic substance bonding with each other to form a matrix part. Skorina also teaches the inorganic binder comprises a reaction product of at least an alkali silicate and hardener (Id), which corresponds to a connection part derived from a silicate (the inorganic substance). Skorina teaches the granules are useful in roofing material applications (composite member) (paragraph [0065]). Skorina also teaches the granules further comprise at least one functional additive, organic binder, or pigment (paragraph [0033]). The particulate silicate material includes metal oxide (silica) (para 0066-0067).
However, Skorina fails to disclose that the organic substance present in a dispersed state inside the matrix part and a radio wave absorbing material present in a dispersed state inside the matrix part.
Whereas Wolff teaches thermal insulating material based on a pigment-containing silica (abstract). Wolff teaches suitable pigments scatter, absorb, or reflect infrared radiation (column 2, lines 44-46). Wolff teaches the pigments include organic dyes, such as phthalocyanines (organic material) (column 2, lines 61-62). Wolff teaches the pigments improves the insulating effect at higher temperatures, and a prerequisite is a homogenous distribution of the pigment particles in a matrix (column 3, lines 5-11), which corresponds to: (1) an organic material present in a dispersed state inside the matrix part; and (2) the organic absorbing material is not continuously present from a surface of the matrix part to an inside of the matrix part.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the pigment of Skorina with the pigments of Wolff to provide suitable pigments which scatter, absorb, or reflect infrared radiation, and provide an improved insulating effect at higher temperatures.
Whereas Kondo discloses radio wave absorber is provided which can be produced at a low cost compared to the case of using silicon carbide fiber and which is also superior in radio wave absorption property in 76 GHz band (75-77 GHz frequency band). The radio wave absorber is produced by arranging a radio wave absorbing layer onto the surface of a metal body. The radio wave absorbing layer is made of a radio wave absorbing material containing silicon carbide powder dispersed in matrix resin (abstract).
Therefore, it would have been obvious to a person having ordinary skill in the art at the time of the invention to include radio wave absorbing material containing silicon carbide of Kondo along with the pigments of Skorina motivated by the desire to have thermal resilience and corrosion resistance.
Regarding claim 2, Skorina teaches each granule has a total porosity in a range from greater than 0 to 50 % by volume (abstract and paragraph [0003]). Skorina does not explicitly teach a porosity of each granule is measured when a cross section of the matrix part is observed, an average value of a percentage of pores per unit area is 20% or less, or 10% or less. However, it would have been obvious to one having ordinary skill in the art at the time of the invention to determine an average value of a percentage of pores per unit area when a cross section of the matrix part is observed using nothing more than routine experimentation given the volumetric porosity disclosed by Skorina. It has been held where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art unless such a range is shown to be critical. Please see MPEP § 2144.05(II)(A).
Regarding claim 4, Wolff teaches thermal insulating material based on a pigment-containing silica (abstract). Wolff teaches suitable pigments scatter, absorb, or reflect infrared radiation (column 2, lines 44-46). Wolff teaches the pigments include organic dyes, such as phthalocyanines (organic material) (column 2, lines 61-62).
With respect to the volume fraction of less than 50%, When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Alternatively, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges of volume fraction through process optimization motivated by the desire to have improved insulating effect at higher temperatures, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Regarding claim 5, Kondo discloses radio wave absorber is provided which can be produced at a low cost compared to the case of using silicon carbide fiber and which is also superior in radio wave absorption property in 76 GHz band (75-77 GHz frequency band). The radio wave absorber is produced by arranging a radio wave absorbing layer onto the surface of a metal body. The radio wave absorbing layer is made of a radio wave absorbing material containing silicon carbide powder dispersed in matrix resin (abstract).
With respect to carbon present in silicon carbide in partial amount, It would have been obvious to one of ordinary skill in the art at the time of the invention to choose the instantly claimed ranges of volume fraction through process optimization motivated by the desire to have corrosion resistance, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05).
Regarding claim 6, As Skorina in view of Wolff discloses matrix part and organic particles as presently claimed as stated above, therefore it would be obvious that thermal conductivity of the matrix party would intrinsically be higher than organic particles.
Conclusion
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/RONAK C PATEL/Primary Examiner, Art Unit 1788
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