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 without traverse of Invention I (claims 1-18; drawn to an exhaust insulation system) and Species A (figs. 4 & 7; embodiments where the conformal coating comprises a fiber reinforcement phase) in the reply filed on 01 September 2026 is acknowledged. Claims 16-31 are hereby withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention and/or a nonelected species, there being no allowable generic or linking claim.
Drawings
The drawings are objected to because figure 1A is a photograph. Photographs are not ordinarily permitted in utility and design patent applications [37 CFR 1.84(b)(1)]. While the Office will accept photographs if photographs are the only practicable medium for illustrating the claimed invention (e.g. cell cultures, crystalline structures, etc.), the photographs must show the invention more clearly than can be done by India ink drawings, which is not the case here.
When the subject matter of the application admits of illustration by a drawing, as it does here, 37 CFR 1.84(b)(1) authorizes an examiner to require a drawing in place of the photograph. See MPEP § 608.02(VII)(B).
The drawings are further objected to as failing to comply with 37 CFR 1.84(p)(5) because figure 1A includes the following reference character(s) not mentioned in the description: “1” (appearing to indicate layer 110), “2” (appearing to indicate layer 112), “3” (appearing to indicate layer 114), “4” (appearing to indicate element 116).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informality:
Para. 15, line 9: “…in Figure 1A,…” appears it should read “… in Figure 1B,…” as the gap 120 is shown in fig. 1B, not 1A.
Appropriate correction is required.
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.
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.
Claim 9 recites “wherein the fibers are chosen from a fiber material including glass, carbon, and basalt fibers”.
This was likely intended to mean that the fibers comprise a material selected from the group consisting of glass fibers, carbon fibers, and basalt fibers, but might be interpreted as requiring the fiber material to include all three of glass, carbon and basalt fibers, causing the claim to take on an unreasonable degree of uncertainty.
In other words, the claim appears to suggest that the fiber material itself includes glass, carbon, and basalt fibers instead of stating that the fiber material is selected from a group consisting of said materials.
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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, 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 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Merrett et al. (US 2021/0003061 A1; hereafter Merrett) in view of Porodo (US 2020/0141218 A1).
Regarding claim 1, Merrett discloses (fig. 1A) an exhaust insulation system (100) for an exhaust pipe (102), comprising:
a base insulation layer (110) of an insulation disposed about a section of the exhaust pipe;
a middle retaining layer (112) at least partially surrounding the base insulation layer; and
an outer layer (114), comprising a polymeric resin (i.e., a fabric and polymeric resin composite), forming a direct interface with the middle retaining layer (see paras. 22 & 30; figs. 1A & 6).
Merrett does not explicitly disclose the outer later to comprise a conformal polymer outer coating forming a direct interface with the middle retaining layer.
Porodo teaches (figs 1 & 5) a pipe insulation system, comprising:
a base insulation layer (12) of an insulation (see paras. 21-22) disposed about a section of a pipe (10);
a middle retaining layer (14) at least partially surrounding the base insulation layer (see fig. 1; para. 28); and
a conformal polymer outer coating (18) forming a direct interface with the middle retaining layer (see figs. 1 & 5; paras. 33-34).
Porodo explains that the polymer of the outer coating (18) is applied onto the retaining (compression) layer, may be “spray applied” (para. 34), and may be formed of, for example, “a phenolic resin, thermoset plastic, thermoplastic,…, epoxies,…, and silicones.” (para. 33).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Merrett such that the outer layer is a conformal polymer outer coating forming a direct interface with the middle retaining layer, in view of the teachings of Porodo, to provide a polymeric outer layer which may be applied over the middle retaining layer by spraying, rather than a potentially labor intensive fabric composite layup process, or otherwise obvious as the simple substitution of one known type of insulation system outer layer (the original fabric-resin composite outer layer of Merrett) for another (the polymeric conformal outer coating of Porodo) to obtain predictable results (e.g., as above, enabling application via a spray process rather than a conventional layup process).
Regarding claim 2, with respect to the limitation wherein the conformal polymer outer coating includes a silicone conformal outer coating, as noted for claim 1 above, Porodo suggests that the conformal outer coating may be formed of a number of suitable polymeric materials, including “silicones” (para. 33).
When modifying the system of Merrett in view of Porodo as above to comprise a polymeric conformal outer coating, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the conformal polymeric outer coating as a silicone conformal outer coating, as further suggested by Porodo, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 3, with respect to the limitation wherein the conformal polymer outer coating includes a phenolic conformal outer coating, as noted for claim 1 above, Porodo suggests that the conformal outer coating may be formed of a number of suitable polymeric materials, including “a phenolic resin” (para. 33).
Furthermore, Merrett already discloses that phenolic resin may be used for an outer layer (i.e., in the original fabric-resin composite layer) and provides certain advantages including desirable curing conditions, storage lifetime, low cost, and desirable high temperature properties after curing (para. 22).
Thus, when modifying the system of Merrett in view of Porodo as above to comprise a polymeric conformal outer coating, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the conformal polymeric outer coating as a phenolic conformal outer coating, in view of teachings of Porodo and/or Merrett, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 4 & 5, Merrett reasonably discloses the additional limitations wherein the middle retaining layer (112) includes a wrapped tape retaining layer (claim 4), wherein the tape includes polyimide (claim 5).
See para. 20: “FIG. 1A further shows a polyimide layer 112 at least partially surrounding the base insulation layer 110. In one example, as can be seen in FIG. 1A, the polyimide layer 112 includes a band of polyimide wrapped spirally around the fiber mat insulation layer”.
To promote compact prosecution, it is also noted that Porodo also teaches that a middle retaining layer (compression layer 14) may include a wrapped tape (see para. 28).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Merrett in view of Porodo as applied to claim 4 above, and further in view of Goulet (US 2019/0329486 A1).
Regarding claim 6, Merrett does not explicitly disclose the tape to include a woven glass, however, Merrett suggests that “[a]lthough polyimide is shown in FIG. 1A, other materials such as polymers, or foil materials may also be used within the scope of the invention” (para 21).
Merrett also discloses, generally, that a fabric may be provided in the form of a braided glass fiber fabric made from woven glass strands (para. 23; figs. 2, 4, 5; see also para. 18)
Goulet teaches (fig. 2; para. 158-162) that a retaining / compression layer may be formed by a “braided flat tape” (e.g., 60 in fig. 11) which may comprise materials including “e-glass” and “s-glass”, among others (para. 159).
Goulet also teaches that the outer portion of the insulation system may be a “customizable top coat 90” formed by a thermoset or thermoplastic polymer (paras. 123, 125, 171, 173) to provide abrasion or flame resistance or to provide a desired appearance.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Merrett such that the tape includes a woven glass (e.g., a braided flat tape made of woven glass strands), in view of the teachings of Goulet (or the combined teachings of Merrett and Goulet), in order to provide structural reinforcement properties to the middle retaining layer (when used alone or in combination with polyimide) and/or to enable the conformal polymer outer coating to form a stronger interface with the middle retaining layer by at least partially penetrating into the middle retaining layer when applied.
Examination Note: to promote compact prosecution, it is noted that woven glass fiber reinforced polyimide tapes are otherwise known. See, e.g., US 3,523,056 to Horning.
Claims 7-13 & 15 (as understood) are rejected under 35 U.S.C. 103 as being unpatentable over Merrett in view of Porodo and Goulet or, alternatively, over Merrett in view of Porodo, Goulet, and Skostins (US 4,640,951).
Regarding claim 7, Merrett discloses (fig. 1A) an exhaust insulation system (100) for an exhaust pipe (102), comprising:
a base insulation layer (110) of an insulation disposed about a section of the exhaust pipe;
a middle retaining layer (112) at least partially surrounding the base insulation layer;
an outer layer (114), comprising a polymeric resin (i.e., the polymeric resin component of the fabric and resin composite), forming a direct interface with the middle retaining layer (see paras. 22 & 30; figs. 1A & 6); and
a reinforcing material (i.e., the fabric of the fabric-resin composite) within the outer layer.
Merrett does not explicitly disclose the outer layer to comprise a conformal polymer outer coating forming a direct interface with the middle retaining layer; or a reinforcing phase equally distributed throughout the conformal polymer outer coating.
Porodo teaches (figs 1 & 5) a pipe insulation system, comprising:
a base insulation layer (12) of an insulation (see paras. 21-22) disposed about a section of a pipe (10);
a middle retaining layer (14) at least partially surrounding the base insulation layer (see fig. 1; para. 28); and
a conformal polymer outer coating (18) forming a direct interface with the middle retaining layer (see figs. 1 & 5; paras. 33-34).
Porodo explains that the polymer of the outer coating (18) is applied onto the retaining (compression) layer, may be “spray applied” (para. 34), and may be formed of, for example, “a phenolic resin, thermoset plastic, thermoplastic,…, epoxies,…, and silicones.” (para. 33).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Merrett such that the outer layer is a conformal polymer outer coating forming a direct interface with the middle retaining layer, in view of the teachings of Porodo, to provide a polymeric outer layer which may be applied over the middle retaining layer by spraying, rather than a potentially labor intensive fabric composite layup process, or otherwise obvious as the simple substitution of one known type of insulation system outer layer (the original fabric-resin composite outer layer of Merrett) for another (the polymeric conformal outer coating of Porodo) to obtain predictable results (e.g., as above, enabling application via a spray process rather than a conventional layup process).
Porodo further teaches that “[t]here may be a reinforcing material 18 within the protective layer” (para. 20), however, Porodo also does not explicitly teach the reinforcing material to be a reinforcing phase equally distributed throughout the conformal polymer outer coating.
Goulet teaches that a polymeric outer coating (“top coat 90”) for an exhaust insulation system may be a thermoplastic or thermoset based system which may be applied by brushing, spraying or dipping (para. 123), and may included additives to provide various benefits. Among them, Goulet suggests that “milled carbon fiber, glass, metal and aramid fibers” may be added to improve the strength of the outer coating (para. 125).
Goulet also teaches that the top coat may be applied as a “solvent based polymer solution top coat” with polymers “dissolved or otherwise dispersed in water and/or other solvent” (para. 170) and may comprise “surfactants, emulsifiers, dispersants, rheology modifiers, and functional additives” (paras. 10 & 109).
A person having ordinary skill in the art would have understood, or otherwise reasonably inferred, that a polymeric outer coating formed from thermoplastic or thermoset system having strength additives in the form of milled carbon, glass, metal, or aramid fibers and one or more of surfactants, emulsifiers and dispersants, when applied by brushing, spraying or dipping, the milled fibers would reasonably constitute a reinforcing phase equally distributed throughout the conformal polymer outer coating.
However, to further promote compact prosecution, attention is further drawn to Skostins, which teaches a method of obtaining equal distribution of milled reinforcing fibers (e.g., polyester, glass, carbon, aramid) within a polymeric material (silicone rubber) by first obtaining a uniform mixture, thereby avoiding clumps of fibers, resulting in a higher strength and durometer properties.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the insulation system of Merrett to further include a reinforcing phase equally distributed throughout the conformal polymer outer coating, in view of the teachings of Goulet (or in view of the combined teachings of Goulet and Skostins), to provide higher strength and durability to the polymer outer coating while maintaining the ability to apply the outer coating by spraying, dipping, rolling, etc. (rather than requiring the separate application of a reinforcement layer onto the retaining layer and/or requiring a conventional layup process); wherein the equal distribution of the reinforcing phase throughout the polymer outer coating provides the entire coating with substantially similar strength and durability properties and otherwise avoids undesirable clumps of fibers and/or unreinforced regions of the outer coating, etc.
Regarding claims 8 & 9, the system of Merrett, as modified above reads on or otherwise renders obvious the additional limitations wherein the reinforcing phase includes fibers (claim 8), and wherein the fibers are chosen from a fiber material including glass, carbon, and basalt fibers (claim 9). As noted for claim 7 above, Goulet and Skostins both teach glass and carbon fibers to be among the suitable materials for forming a reinforcing phase of a polymer.
Regarding claim 10, with respect to the limitation wherein the conformal polymer outer coating includes a silicone conformal outer coating, as noted for claim 7 above, Porodo suggests that the conformal outer coating may be formed of a number of suitable polymeric materials, including “silicones” (para. 33).
When modifying the system of Merrett in view of Porodo as above to comprise a polymeric conformal outer coating, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the conformal polymeric outer coating as a silicone conformal outer coating, as further suggested by Porodo, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 11, with respect to the limitation wherein the conformal polymer outer coating includes a phenolic conformal outer coating, as noted for claim 7 above, Porodo suggests that the conformal outer coating may be formed of a number of suitable polymeric materials, including “a phenolic resin” (para. 33). Furthermore, Merrett already discloses that phenolic resin may be used for an outer layer (i.e., in the original fabric-resin composite layer) and provides certain advantages including desirable curing conditions, storage lifetime, low cost, and desirable high temperature properties after curing (para. 22).
Thus, when modifying the system of Merrett in view of Porodo as above to comprise a polymeric conformal outer coating, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide the conformal polymeric outer coating as a phenolic conformal outer coating, in view of teachings of Porodo and/or Merrett, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 12 & 13, Merrett reasonably discloses the additional limitations wherein the middle retaining layer (112) includes a wrapped tape retaining layer (claim 12), wherein the tape includes polyimide (claim 13).
See para. 20: “FIG. 1A further shows a polyimide layer 112 at least partially surrounding the base insulation layer 110. In one example, as can be seen in FIG. 1A, the polyimide layer 112 includes a band of polyimide wrapped spirally around the fiber mat insulation layer”.
To promote compact prosecution, it is also noted that Porodo also teaches that a middle retaining layer (compression layer 14) may include a wrapped tape (see para. 28).
Regarding claim 15, Merrett does not explicitly disclose the tape to include a woven glass, however, Merrett suggests that “[a]lthough polyimide is shown in FIG. 1A, other materials such as polymers, or foil materials may also be used within the scope of the invention” (para. 21).
Merrett also discloses, generally, that a fabric may be provided in the form of a braided glass fiber fabric made from woven glass strands (para. 23; figs. 2, 4, 5; see also para. 18)
Goulet teaches (fig. 2; para. 158-162) that a retaining / compression layer may be formed by a “braided flat tape” (e.g., 60 in fig. 11) which may comprise materials including “e-glass” and “s-glass”, among others (para. 159).
Goulet also teaches that the outer portion of the insulation system may be a “customizable top coat 90” formed by a thermoset or thermoplastic polymer (paras. 123, 125, 171, 173) to provide abrasion or flame resistance or to provide a desired appearance.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Merrett such that the tape includes a woven glass (e.g., a braided flat tape made of woven glass strands), in view of the teachings of Goulet (or the combined teachings of Merrett and Goulet), in order to provide structural reinforcement properties to the middle retaining layer (when used alone or in combination with polyimide) and/or to enable the conformal polymer outer coating to form a stronger interface with the middle retaining layer by at least partially penetrating into the middle retaining layer when applied.
Examination Note: to promote compact prosecution, it is noted that woven glass fiber reinforced polyimide tapes are otherwise known. See, e.g., US 3,523,056 to Horning.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Merrett in view of Porodo and Goulet (or Porodo, Goulet, and Skostins) as applied to claim 12 above, and further in view of Goulet II (US 2013/0306186 A1).
Note: US 2013/0306186 A1 is being designated “Goulet II” to distinguish from US 2019/0329486 A1 which, for consistency, will continue to be referred to as “Goulet”.
Regarding claim 14, Merrett does not explicitly disclose the tape to include polyester, however, Merrett suggests that “[a]lthough polyimide is shown in FIG. 1A, other materials such as polymers, or foil materials may also be used within the scope of the invention” (para. 21).
Goulet II teaches that an exhaust insulation system (e.g., in fig. 6) may include a tape wrap retaining layer (18), such as a polyimide (i.e., KAPTON) tape, and further suggests that suitable high-temperature films in such an application may be made from materials including polyimide (KAPTON) and polyester (para. 24).
See also published claim 9: “…a high-temperature tape made from materials selected from the group consisting of fiberglass, PPS, PEI, PI, PPA, nylon, polyester and polypropylene”.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Merrett such that the tape includes polyester, in view of the teachings of Goulet II, especially considering that it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
The prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard K Durden whose telephone number is (571) 270-0538. The examiner can normally be reached Monday - Friday, 9:00 AM - 5:00 PM ET.
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/Richard K. Durden/Examiner, Art Unit 3753
/ROBERT K ARUNDALE/Primary Examiner, Art Unit 3753
