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 § 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.
Claim(s) 1, 3, 7-8, 22-23 & 34 and is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gardner, JR. et al. (US PG. Pub. 2004/0057977).
Regarding claim 1 – Gardner teaches a composition, comprising: a mixture of a boron-containing material (“boric acid”) at a percent by weight in a range from 45% to 60% ([paragraph 0018] Gardner states, “5 to about 50wt% boric acid”) and metal oxide nanoparticles ([paragraph 0041 & 0063] Gardner states, “adding a nanoparticle component to the composition, alone or in combination with boric acid…Nanoparticles suitable for use in the present invention can include, but are not limited to, one or more of the following including mixtures thereof: alkali and alkaline earth oxides, hydroxides, halides or sulfides, such as CaO, MgO”) at a percent by weight in a range from 12% to 18% ([claim 23] Gardner states, “a nanoparticle component in an amount of from about 0.1 to about 50 wt-%”) in a liquid ([paragraph 0011] Gardner states, “composition is in the form of a pourable liquid.”).
Regarding claim 3 – Gardner teaches the composition of claim 1, wherein the boron-containing material comprises any of kernite (Na2B407.4H20), tincalconite (Na2B407.5H20), tincal (Na2B407.10H20), probertite (NaCaB5O9.5H20), ulexite (NaCaB5O9.8H20), colemanite (Ca2B6O1n.5H20), meyerhofferite (Ca2B6O1n.7H20), inyoite (Ca2B6O11.13H20), pandermite (Ca4BioO19.7H20), inderite (Mg2B6O11.15H20), hydroboracite (CaMgB6O11.6H20), boracite (Mg3B7013Cl), ascharite (Mg2B205.H20), datolite (Ca2B2Si2O9.H20), or boric acid (H3B03) ([paragraph 0018] Gardner states, “5 to about 50wt% boric acid”).
Regarding claim 7 – Gardner teaches the composition of claim 1, wherein the metal oxide nanoparticles comprise any one of Fe203, SiO2, A1203, MgO, ZrO2, CeO2, TiO2, and ZnO ([paragraph 0041 & 0063] Gardner states, “adding a nanoparticle component to the composition, alone or in combination with boric acid…Nanoparticles suitable for use in the present invention can include, but are not limited to, one or more of the following including mixtures thereof: alkali and alkaline earth oxides, hydroxides, halides or sulfides, such as CaO, MgO”).
Regarding claim 8 – Gardner teaches the composition of claim 7, wherein the metal oxide nanoparticles have a particle size in a range from 0.01 to 1000 nm ([paragraph 0069] Gardner states, “the nanoparticles preferably can have an average primary particle size of from about 1 nanometer to about 1000 nanometers”).
Regarding claim 23 – Gardner teaches the composition of claim 1, wherein the mixture comprises the boron-containing material at a percent by weight in a range from 45% to 60% ([paragraph 0018] Gardner states, “5 to about 50wt% boric acid”), the metal oxide nanoparticles at a percent by weight in a range from 12% to 18% ([claim 23] Gardner states, “a nanoparticle component in an amount of from about 0.1 to about 50 wt-%”), and the liquid at a percent by weight in a range from 30% to 34% ([claim 15] Gardner states, “comprises from about 3 to about 40 wt-% water.”).
Regarding claim 34 – Gardner teaches a composition comprising a mixture of a boron-containing material (“boric acid”) at a percent by weight in a range from 45% to 60% ([paragraph 0018] Gardner states, “5 to about 50wt% boric acid”), metal oxide nanoparticles ([paragraph 0041 & 0063] Gardner states, “adding a nanoparticle component to the composition, alone or in combination with boric acid…Nanoparticles suitable for use in the present invention can include, but are not limited to, one or more of the following including mixtures thereof: alkali and alkaline earth oxides, hydroxides, halides or sulfides, such as CaO, MgO”) at a percent by weight in a range from 12% to 18% ([claim 23] Gardner states, “a nanoparticle component in an amount of from about 0.1 to about 50 wt-%”), and a liquid (“water”) at a percent by weight in a range from 30% to 34% ([claim 15] Gardner states, “comprises from about 3 to about 40 wt-% water.”).
Claim(s) 1, 10 and 29 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ryang (US Patent 7645436).
Regarding claim 1 – Ryang teaches a composition ([title] Ryang states, “tractable metal oxide sols and nanocomposites therefrom”), comprising: a mixture of a boron-containing material at a percent by weight in a range from 45% to 60% ([claim 1] Ryang states, “from about 0.5 to about 80% by weight with regard to the weight of the nanocomposite, of at least one boron oxide compound”) and metal oxide nanoparticles at a percent by weight in a range from 12% to 18% ([claim 1] Ryang states, “adding from about 0.001% to about 80% by weight with regard to the nanocomposite, of at least one of guest metal nanoparticle, guest metal phosphate nanoparticle, guest metal oxide nanoparticle”) in a liquid ([claim 1] Ryang states, “and a liquid to provide a host metal oxide sol”).
Regarding claim 10 - Ryang teaches the composition of claim 1, wherein the composition is used as a protective coating material to provide one or both of thermal protection ([column 1 lines 58-62] Ryang states, “The subject invention thus also provides polymer systems with one or more of improved strength, improved corona resistance, improved plasma resistance, improved resistance to organic solvents, improved high temperature stability, improved flame retardancy”) and physical protection.
Regarding claim 29 – Ryang teaches the composition of claim 1, wherein the boron-containing material comprises a boron mineral ([column line ] Ryang states, “Specific examples of boron oxide compounds include boric acid”; boric acid is considered a boron mineral as understood by the instant application).
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryang in view of Endres et al. (US PG. Pub. 2007/0082190).
Regarding claim 11 – Ryang teaches the composition of claim 10, but fails to explcilty teach wherein the protective coating material is applied to a wire, a cable, a vehicle, an article of clothing, or a piece of armor.
Endres teaches a composition ([title] Endres states, “insulation material”) comprising a mixture of a boron-containing material ([paragraph 0050] Endres states, “examples of hydrolysable compounds of elements M which can be used are…boric acid”) and a metal oxide nanoparticles ([paragraph 0057] Endres states, “examples of refractory components in the form of nanoparticles are titanium oxide”) in a liquid ([paragraph 0061] Endres states, “Solvents which can be used for the composition include both water and organic solvents or mixtures”) used as a protective coating material wherein the protective coating material is applied to a wire, a cable ([paragraph 0092] Endres states, “Specific possible applications are insulation against heat and cold, e.g. for refrigerators, ovens, laboratory equipment and for industrial purposes as in metallurgy or in the glass industry, a combination of insulation and fire protection, thermal encapsulation of heat-sensitive components in the electronics sector and of cables”), a vehicle, an article of clothing, or a piece of armor.
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the composition of boron-containing material, metal oxide nanoparticles and water in particular amounts used as a protective coating as taught by Ryang with the protective coating being applied to a cable as taught by Endres because Endres states, “The moldings and coatings obtained therefrom display excellent insulation against heat and cold and can be used over a wide temperature range.” [Abstract].
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endres et al. in view of Wiklund et al. (US PG. Pub. 2018/0079888).
Regarding claim 4 – Endres teaches the composition of claim 1, but fails to teach wherein the boron-containing material comprises a mixture of colemanite and boric acid.
Wiklund teaches wherein the boron-containing material comprises a mixture of colemanite and boric acid ([paragraph 0049] Wiklund states, “at least one further boron containing compound selected from…Colemanite…boric acid”).
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the composition having a boron-containing material comprising a boron mineral as taught by Endres with the boron-containing material comprises a mixture of colemanite and boric acid as taught by Wiklund because Wiklund states regarding this composition will, “increase fire resistance of a material and/or reduce heat transfer in the material” [paragraph 0096].
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endres et al. in view of Dastjerdi (US PG. Pub. 2022/0347597).
Regarding claim 5 – Endres teaches the composition of claim 1, but fails to teach wherein the boron-containing material comprises borophene particles.
Dastjerdi teaches a composition ([claim 1] Dastjerdi states, “self-assembled inorganic nanostructures”) wherein the boron-containing material comprises borophene particles ([claim 1] Dastjerdi states, “adding a first plurality of inorganic nanostructures of…borophene”).
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the composition having a boron-containing material comprising a boron mineral and a metal oxide nanoparticles in a liquid as taught by Endres with the boron-containing material further comprising borophene particles as taught by Dastjerdi because Dastjerdi states, “The nanocomposite layer formed on the fabrics may function as a protective layer. Nanostructures can absorb the sun light and protect fabrics form harmful effects of the light radiation” [paragraph 0098]. Borophene is known to have high mechanical strength and provide superior protection from heat, oxidation and UV rays.
Regarding claim 6 – Endres in view of Dastjerdi teach the composition of claim 5, wherein the borophene particles have a particle size in a range from 0.001 to 2 um ([paragraph 0054] Dastjerdi states, “borophene…with at least one dimension with a size of less than about 100 nm”; this range is between 1nm to 2000nm).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Endres et al. in view of Tahmouresinia (US PG. Pub. 2018/0327670).
Regarding claim 9 – Endres teaches the composition of claim 1, but fails to explicitly teach wherein the liquid comprise an aqueous boric acid solution.
Tahmouresinia teaches a composition ([title] Tahmouresinia states, “flame or fire retarding agents”) having a liquid wherein the liquid comprise an aqueous boric acid solution ([Abstract] Tahmouresinia states, “aqueous solvent, in particular for 1 Lof water, contains borax in an amount of 30 to 70 wt-%, boric acid of 30 to 79 wt-%”).
It would have been obvious to a person having ordinary skill in the art before the effective filling date of the claimed invention to modify the composition having a boron-containing material comprising a boron mineral and a metal oxide nanoparticles in a liquid as taught by Endres with the liquid comprising an aqueous boric acid solution as taught by Tahmouresinia because Tahmouresinia states, “the manufacture of the composition and methods of using the agent and/or the corresponding combination of its constituents to reduce combustibility and flammability” [Abstract].
Claim(s) 27-28 & 30-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ryang.
Regarding claim 27 – Ryang teaches a composition comprising a mixture of a boron-containing material at a percent by weight in a range from 45% to 60% ([claim 1] Ryang states, “from about 0.5 to about 80% by weight with regard to the weight of the nanocomposite, of at least one boron oxide compound”) and metal oxide nanoparticles ([claim 1] Ryang states, “adding from about 0.001% to about 80% by weight with regard to the nanocomposite, of at least one of guest metal nanoparticle, guest metal phosphate nanoparticle, guest metal oxide nanoparticle”) in a liquid ([claim 1] Ryang states, “and a liquid to provide a host metal oxide sol”).
Ryang does not explicitly teach wherein the mixture, upon drying, forms a material having a density lower than that of water.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. “composition comprising a mixture”, does not depend on its method of production, i.e. “wherein the mixture, upon drying, forms a material having a density lower than that of water”. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Additionally please note that the claims are directed to apparatus which must be distinguished from the prior art in term of structure rather function [MPEP 2144]. Hence, the functional limitations “forms a material having a density lower than that of water“ which are narrative in form have not been given any patentable weight. In order to be given patentable weight, a functional recitation must be supported by recitation in the claim of sufficient structure to warrant the presence of the functional language. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Additionally the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However the reference(s) teach all of the claimed ingredients and claimed amount. Therefore, the claimed effects and physical properties, i.e. “a material having a density lower than that of water” would appear to be achieved by a composition with all the claimed ingredients and claimed amounts. See MPEP 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is not teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Regarding claim 28 – Ryang teaches the composition of claim 27, wherein the boron-containing material comprises a boron mineral ([column line ] Ryang states, “Specific examples of boron oxide compounds include boric acid”; boric acid is considered a boron mineral as understood by the instant application).
Regarding claim 30 – Ryang teaches the composition of claim 1, but fails to explicitly teach wherein the mixture, upon drying, forms an electrically conductive material.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. “the mixture”, does not depend on its method of production, i.e. “the mixture, upon drying, forms an electrically conductive material”. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Additionally please note that the claims are directed to apparatus which must be distinguished from the prior art in term of structure rather function [MPEP 2144]. Hence, the functional limitations “forms an electrically conductive material “ which are narrative in form have not been given any patentable weight. In order to be given patentable weight, a functional recitation must be supported by recitation in the claim of sufficient structure to warrant the presence of the functional language. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Additionally the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However the reference(s) teach all of the claimed ingredients and claimed amount. Therefore, the claimed effects and physical properties, i.e. “forms an electrically conductive material” would appear to be achieved by a composition with all the claimed ingredients and claimed amounts. See MPEP 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is not teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Regarding claim 31 – Ryang teaches the composition of claim 1, but fails to explicitly teach wherein the mixture, upon drying, forms a material having a density lower than that of water.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. “the mixture”, does not depend on its method of production, i.e. “the mixture, upon drying, forms a material having a density lower than that of water”. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Additionally please note that the claims are directed to apparatus which must be distinguished from the prior art in term of structure rather function [MPEP 2144]. Hence, the functional limitations “forms a material having a density lower than that of water“ which are narrative in form have not been given any patentable weight. In order to be given patentable weight, a functional recitation must be supported by recitation in the claim of sufficient structure to warrant the presence of the functional language. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Additionally the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However the reference(s) teach all of the claimed ingredients and claimed amount. Therefore, the claimed effects and physical properties, i.e. “a material having a density lower than that of water” would appear to be achieved by a composition with all the claimed ingredients and claimed amounts. See MPEP 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is not teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Regarding claim 32 – Ryang teaches the composition of claim 1, forms a heat resistant material ([column 1 lines 58-62] Ryang states, “The subject invention thus also provides polymer systems with one or more of improved strength, improved corona resistance, improved plasma resistance, improved resistance to organic solvents, improved high temperature stability, improved flame retardancy”) but fails to explicitly teach wherein the mixture, upon drying, forms a heat resistant material.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. “the mixture”, does not depend on its method of production, i.e. “the mixture, upon drying, forms a heat resistant material”. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Additionally please note that the claims are directed to apparatus which must be distinguished from the prior art in term of structure rather function [MPEP 2144]. Hence, the functional limitations “forms a heat resistant material“ which are narrative in form have not been given any patentable weight. In order to be given patentable weight, a functional recitation must be supported by recitation in the claim of sufficient structure to warrant the presence of the functional language. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 33 - Ryang teaches the composition of claim 1, but fails to explicitly teach wherein the mixture, upon drying, forms a bulletproof material.
In accordance to MPEP 2113, the method of forming the device is not germane to the issue of patentability of the device itself. Therefore, this limitation has not been given patentable weight. Please note that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product, i.e. “the mixture”, does not depend on its method of production, i.e. “wherein the mixture, upon drying, forms a bulletproof material”. In re Thorpe, 227 USPQ 964, 966 (Federal Circuit 1985).
Additionally please note that the claims are directed to apparatus which must be distinguished from the prior art in term of structure rather function [MPEP 2144]. Hence, the functional limitations “forms a bulletproof material“ which are narrative in form have not been given any patentable weight. In order to be given patentable weight, a functional recitation must be supported by recitation in the claim of sufficient structure to warrant the presence of the functional language. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Additionally the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However the reference(s) teach all of the claimed ingredients and claimed amount. Therefore, the claimed effects and physical properties, i.e. “forms a bulletproof material” would appear to be achieved by a composition with all the claimed ingredients and claimed amounts. See MPEP 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is not teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive.
The Applicant argues regarding the Gardner, JR. et al. reference, “The components identified by the Examiner in Gardner serve different functions for the component recited in amended claim 1…Gardner does not disclose a single materials-composition embodiment having the claimed boron-containing material and metal oxide nanoparticle ranges in a liquid as recited in amended claim 1” [REMARKS pages 6-7].
Examiner disagrees. Gardner in paragraph 0018 discusses the range of boric acid (5-50wt%) and water (10-30wt%) and then in paragraph 0041 Gardner states, “adding a nanoparticle component to the composition, alone or in combination with boric acid” with the specific range (.1-50wt%) given in claim 23. Therefore the claimed combination is taught by Gardner in a single materials-composition embodiment. Even though different portions of the specification discuss different aspects the overall materials and amounts appears completely within a single embodiment.
Applicant further argues, “Gardner states that when boric acid is at 30-50 wt%, the bait is less readily accepted by cockroaches, even if the acephate is more stable. See Gardner at [0058]. This constitutes a teaching away from the claimed high-boron composition” [REMARKS page 7].
Examiner disagrees. Paragraph 0058 states, “about 5 to about 60 wt% of boric acid… Although not desired to be limited by theory, the most preferable boric acid ratio and range with respect to acephate appeared to be the result of an optimal balance between high stability of the water-sensitive acephate insecticide in the formulation and a high acceptance or attractancy levels for cockroaches”. Gardner gives the claimed range and points out the best mode is determined by stability, lethality and acceptance/attractancy levels [paragraph 0058]. As Gardner discloses the range it is reasonable that this range is considered within the context of the composition.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN T SAWYER whose telephone number is (571)270-5469. The examiner can normally be reached M-F 8:30 am - 5pm.
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/STEVEN T SAWYER/Primary Examiner, Art Unit 2847
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