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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to “A cellular glass insulation system”, classified in C03C11/00.
II. Claims 11-20, drawn to “A method of insulating a pipe”, classified in C03C27/048.
The inventions of groups II & I are related as a process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the group I cellular glass insulation product as claimed can be made by another and materially different process such as one providing greater than two cellular glass segments, and one which can be positioned about the exterior of vessel types other than strictly a pipe.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Aaron Ryan on 8/25/2026, a provisional election was made without traverse to prosecute the invention of “A cellular glass insulation system”, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 1-10 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. US12252438B2.
Regarding claims 1-4, 7 & 9-10, although the claims at issue are not identical, they are not patentably distinct from each other because the intended use from the instant application, “for insulating a vessel”, and “for insulating a pipe that operates at cryogenic temperatures” from US12252438B2 are not considered patentably distinct. A pipe is a type of vessel; and an intended use cited in the preamble of the instant application is not considered patentably significant for a system/apparatus claim. See MPEP 2111.02(II).
Claim 2 cites “the APAO is on a side joint”, while claim 2 of US12252438B2 cites “the amorphous poly alpha-olefin (APAO) is applied to a side joint”. These differences are patentably indistinct for a system/apparatus claim, and the remaining claim language is otherwise identical.
Claims 3-4, 7 & 9 are identical to claims 3-6 of US12252438B2.
Instant Claim 10 cites the vessel is a pipe, and the intended use of transporting liquid at cryogenic temperatures.
Claims 5, 6 & 8, while not anticipated by claims of U.S. Patent No. US12252438B2, would also be rejected by double patenting for obviousness due to having narrower overlapping ranges of rejected anticipated claims. A prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range. Harris, 409 F.3d at 1341; Peterson, 315 F.3d at 1329-30; Also, MPEP 2144.05 (I)
Allowable Subject Matter
Claims 1-10 would be allowed (pending resolution of the double patenting rejection), as they were found allowable in U.S. Patent No. US12252438B2.
Regarding claim 1, no prior art was found to teach a cellular glass insulation system for insulating a vessel, the system comprising “a plurality of cellular glass insulation segments and an amorphous poly alpha-olefin (APAO) in an interface between adjacent cellular glass insulation segments”; … and “wherein the APAO meets at least one of the following criteria: a) has an onset of melt of from about 20°C to about 75°C; and b) has a differential movement between the adhesive and the cellular glass of from about 10 mm/m to about 25 mm/m”.
The prior art of Parks (US20190331286A1) teaches a cellular glass, or foam glass, insulation system (Fig. 1, item 10; [0050]). Parks teaches the system comprises a plurality of cellular glass insulation segments and an amorphous poly alpha-olefin (APAO) adhesive connecting adjacent cellular glass insulation segments [0051]; wherein each of the cellular glass insulation segments comprise two side joint sections (Fig. 4, items 110) that extend the length of the segment, an inner pipe bore (Fig. 4, concave section of item 110), and two end joint sections (Fig. 4, item 100).
Parks is silent on the specific polyolefin type used as the hot melt APAO adhesive [0051].
Parks also teaches wrapping the APAO along the outer jacket to secure the insulation segments together, not ‘in an interface’ between the segments.
The prior art of Sustic (“Amorphous Poly Alpha Olefin (APAO) Based Hot Melts”) teaches polypropylene can be a hot melt APAO adhesive [P. 5 & 10].
Parks, in view of Sustic, is silent on the onset of melt temperature and coefficient of thermal expansion for polypropylene.
The prior art of Mourad ("Characterisation of Thermally Treated and Untreated Polyethylene–Polypropylene Blends Using DSC, TGA and IR Techniques") teaches 100% polypropylene has a melt onset at around 43°C (Fig. 1a, upper left intersection point of tangential lines at first melt curve on a DSC heating curve [P. 4, DSC], while the prior art of Ineos ("Typical Engineering Properties of Polypropylene") teaches polypropylene has a linear thermal expansion coefficient of (80 to 100) x10-6/K [P. 2].
However, Mourad and Ineos are silent on the type of polypropylene, whether the polypropylene type is an APAO, and whether its properties are suitable for cryogenic operating temperatures.
It would not be considered prima facie obvious to a person of ordinary skill in the art prior to the time of filing that combination of the arts of Parks, Sustic, Mourad, and Ineos would result in an APAO polypropylene with properties suitable for cryogenic operating temperatures.
Parks, Sustic, Mourad, and Ineos, are silent on a specific type of foam glass insulation, and therefore the coefficient of thermal expansion, which is needed to determine the differential movement between the adhesive and the cellular glass.
The prior art of Linton (US4623585A) teaches an adhesive bonding agent can be positioned at an interface between sections of cellular ceramic insulation (Fig. 2, item 16; [Col. 3, lines 58-63]).
Linton also teaches the use of FOAMGLAS® [Col. 6, lines 25-30] as a foam glass thermal insulation material for piping (Fig. 1), which has a thermal expansion coefficient of (5 to 9) x 10-6/K, as evidenced by ‘FOAMGLAS® Technical Newsletter’.
It would have been prima facie obvious to a person of ordinary skill in the art prior to the time of filing to substitute the foam glass FOAMGLAS®, taught by Linton, in place of the generic “foam glass” taught by Parks. This substitution would predictably result in having a known and commonly available foam glass insulation type with known physical properties.
‘Differential movement between the adhesive and the cellular glass’ is determined by the difference between their coefficients of linear thermal expansion, multiplied by the temperature range magnitude, as disclosed in the instant specification [0031, 0032].
The FOAMGLAS® newsletter illustrates a CTE ranging linearly from (5 to 9) x 10-6/K for temperatures from about -165°C to 20°C ambient temperature [Coefficient of Linear Thermal Expansion Graph]. As evidenced by “FOAMGLAS® Technical Newsletter”, for PP and FOAMGLAS, the differential movement in the -165°C to 20°C temperature range is ({90, the PP adhesive average} – {7, the foam CTE average}) x (10-6m/mK) x (1000mm/m) x (185K) = 15.4 mm/m [P. 3, CTE graph].
These arts of record fail to teach an APAO adhesive at an interface between adjacent cellular glass insulation segments with linear thermal expansion coefficient and melt onset temperature properties in the claimed range.
Combination of the six prior arts of record to teach these claim elements would not be considered obvious to a person of ordinary skill in the art prior to the time of filing. These references, alone or in combination with other discovered prior art, do not provide ground for rejection of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY C GROSSO whose telephone number is (571)270-1363. The examiner can normally be reached on M-F 8AM - 5PM.
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, Abbas Rashid can be reached on 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GREGORY C. GROSSO
Examiner
Art Unit 1748
/GREGORY C. GROSSO/Examiner, Art Unit 1748
/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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