CTNF 18/926,626 CTNF 85368 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1 and 4-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 7 of U.S. Patent No. 12,162,766 . Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 7 of US 12,162,766 encompasses an aerogel composite comprising all of the limitations of claim 1 including where the aerogel comprises pores having a pore diameter of 30 nm or less at 30% to 45% of pore volume of a framework structure of the aerogel . Regarding claims 4-7, the claim is not patentably distinct because claims 2-5 of US 12,162,766 include the limitations of claims 4-7, respectively. Regarding claim 8, the claim is not patentably distinct because claim 13 of US 12,162,766 includes the limitation of claim 8. Regarding claim 9, the claim is not patentably distinct because claim 6 of US 12,162,766 includes the limitation of claim 9. Regarding claim 10, the claim is not patentably distinct because claim 15 of US 12,162,766 includes the limitation of claim 10. Regarding claim 11, the claim is not patentably distinct because claim 8 of US 12,162,766 includes the limitation of claim 11. Regarding claim 12, the claim is not patentably distinct because claim 9 of US 12,162,766 includes the limitation of claim 12. Regarding claims 13-14, the claim is not patentably distinct because claim 17-18 of US 12,162,766 includes the limitation of claims 13-14 . 08-36 AIA Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,162,766 in view of Oikawa (US 2020/0108583 submitted in the IDS filed 11/13/2024). As applied above, claim 7 of US 12,162,766 encompasses an aerogel composite comprising all of the limitations of claim 1. Oikawa teaches a heat insulating material comprising an aerogel composite of silica aerogel and nonwoven fiber wherein the fine pore distribution of the aerogel comprises 7 to 60% macropores from 1 to 10 µm and 15-60% of mesopores from 2 to 50 nm relative to the total fine pore volume (see [0020-0022]). Oikawa teaches that the fine pore distribution in this range allows the macropores to be sacrificed and collapse during compression so that the mesopore distribution survives without collapsing and there is a decrease in the thermal conductivity (see [0022-0024]) . As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed.Cir. 1990). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare an aerogel composite for heat insulation as claimed by US 12,162,766 where the fine distribution comprises macropores and mesopores with pore diameter in any range overlapping with 2 to 50 nm and amount overlapping with 15 to 60% as disclosed by Oikawa including where the mesopore diameters are 30 nm or less and 50% or more as claimed since Oikawa teaches that the range pore diameter and pore volume prevents mesopores from collapsing and prevents decrease in thermal conductivity . 08-36 AIA Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,162,766 in view of Schwertfeger et al (US 2003/0003284). As applied above, claim 7 of US 12,162,766 encompasses an aerogel composite comprising all of the limitations of claim 1 . Regarding claim 3, Schwertfeger teaches multilayer composite material with at least one aerogel-containing layer having very high heat insulating (see [0015-16]. Schwertfeger further teaches that aerogels having porosity over 60% are preferred since thermal conductivity decreases with increasing porosity (see [0034]). It would have been obvious to one of ordinary skill in the art at the time of filing of the invention to prepare an aerogel composite for heat insulation as claimed by US 12,162,766 where the porosity is in any workable or optimum range overlapping with over 60% as taught by Schwertfeger including the claimed range to decrease thermal conductivity and have high heat insulation. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL FORREST whose telephone number is (571)270-5833. The examiner can normally be reached Monday-Friday (10AM-6PM). 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, Sally A Merkling can be reached at (571)272-6297. 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. /MICHAEL FORREST/Primary Examiner, Art Unit 1738 Application/Control Number: 18/926,626 Page 2 Art Unit: 1738 Application/Control Number: 18/926,626 Page 3 Art Unit: 1738 Application/Control Number: 18/926,626 Page 4 Art Unit: 1738 Application/Control Number: 18/926,626 Page 5 Art Unit: 1738 Application/Control Number: 18/926,626 Page 6 Art Unit: 1738 Application/Control Number: 18/926,626 Page 7 Art Unit: 1738
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