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`mwe.com
`
`Takashi Saito
`Attorney at Law
`tsaito@mwe.com
`+1 202 756 8244
`
`February 3, 2023
`
`VIA email
`
`Examiner Peter Choi
`USPTO
`
`Re:
`
`U.S. Patent Application No. 16/228,742
`For:
`INSULATING MATERIAL AND DEVICE USING INSULATING MATERIAL
`Inventors: Kazuma Oikawaetal.
`Our Reference: 083710-2481
`
`Dear Examiner Choi:
`
`Thank you for scheduling an interview for February 7, 2023, at 10:00 am. Attachedplease find
`our proposed amendments and arguments.
`
`mic Dermott
`Wil & Emery
`
`Error! Unknown document property name. Washington DC 20001-1531
`
`Tel +1202 756 8000
`
`Fax +1 202 756 8087
`
`US practice conducted through McDermott Will & Erery LLP.
`
`

`

`For discussion purpose only
`Page 2
`
`Proposed Claim Amendments
`
`1. (Currently Amended) Aninsulating material comprising:
`
`a silica xerogel; and
`
`a nonwoven fabric made of a plurality of nonwoven fabric fibers, wherein:
`
`the silica xerogel is filled in the nonwoven fabric to form a single layer essentially
`
`consisting of the nonwoven fabric and the silica _xerogel,
`
`wherett-each of the plurality of nonwoven fabric fibers contains an oxidized acrylic, and
`
`at least a part of a surface of each of the plurality of nonwoven fabric fibers in the single
`
`layer is modified with a carboxyl group.
`
`2-3. (Cancelled)
`
`4. (Previously Presented) The insulating material according to claim 1, wherein thesilica
`
`xerogel has a content of 30 to 80 weight% in a total weight of the insulating material.
`
`5. (Currently Amended) The insulating material according to claim 1, wherein each of the
`
`plurality of nonwoven fabric fibers have-iameters-ofhas a diameter ranging from 1 to 30 Lum.
`
`6. (Cancelled)
`
`7. (Previously Presented) The insulating material according to claim 1, wherein each of
`
`the plurality of nonwoven fabric fibers has a curved portion.
`
`8. (Original) The insulating material according to claim 1, wherein the silica xerogel is an
`
`organically modified silica xerogel that generates a flammable gas at 300°C or more.
`
`

`

`For discussion purpose only
`Page 3
`
`9. (Currently Amended) The insulating material according to claim 1, further
`
`comprising| :]]
`
`
`
`asilica xerogel layer containiag—that contains only the silica xerogel without containing
`
`the nonwoven fabric[[,]] and islaminated on the eempesite-single layer.
`
`10. (Cancelled)
`
`11. (Original) A device comprising the insulating material of claim 1 installed asa part of
`
`a heat insulating or a cold insulating structure, or installed between a heat-generating part and a
`
`casing.
`
`12-18. (Cancelled)
`
`19. (Previously Presented) The insulating material according to claim 1, wherein the
`
`plurality of nonwoven fabric fibers are capable of generating carbon dioxide by reacting with
`
`atmospheric oxygen at a temperature of 300°C or more.
`
`20. (Previously Presented) The insulating material according to claim 1, wherein the
`
`oxidized acrylic is an oxidized acrylic with a partly remaining nitrile group.
`
`21. (Previously Presented) The insulating material according to claim 1, wherein the
`
`oxidized acrylic is acompletely cyclized oxidized acrylic.
`
`22-23. (Cancelled)
`
`24. (Currently Amended) Aninsulating material comprising:
`
`a silica xerogel; and
`
`anonwoven fabric made ofaplurality of nonwoven fabric fibers, wherein:
`
`

`

`For discussion purpose only
`Page 4
`
`the silica xerogel is filled in the nonwoven fabric to form a single layer essentially
`
`consisting of the nonwoven fabric and the silica _xerogel,
`
`at least_a part of a surface of each of the plurality of nonwoven fabric fibers in the single
`
`layer is modified with a carboxyl group,
`
`at least a part of a surface ofthe silica xerogel is organically modified, and
`
`the plurality of nonwoven fabric fibers are capable of generating carbon dioxide by
`
`reacting with atmospheric oxygen at a temperature of 300°C or more.
`
`25. (Previously Presented) The insulating material according to claim 24, wherein atleast
`
`a part of a surface of each of the plurality of nonwoven fabric fibers is modified with a carboxyl
`
`group.
`
`26. (Previously Presented) The insulating material according to claim 24, wherein each of
`
`the plurality of nonwoven fabric fibers contains an oxidized acrylic.
`
`27. (Previously Presented) The insulating material according to claim 26, wherein the
`
`oxidized acrylic is an oxidized acrylic with a partly remaining nitrile group.
`
`28. (Previously Presented) The insulating material according to claim 26, wherein the
`
`oxidized acrylic is acompletely cyclized oxidized acrylic.
`
`29. (Previously Presented) The insulating material according to claim 24, wherein the
`
`silica xerogel generates a flammable gas at 300°C or more.
`
`30. (New) The insulating material according to claim 24, further comprisingasilica
`
`xerogel layer that contains only the silica xerogel without containing the nonwoven fabric andis
`
`laminated on the single layer.
`
`

`

`For discussion purpose only
`Page 5
`
`Claims 12-18, 22, and 23 are rejected under AIA 35 U.S.C. 112(a) as failing to
`
`comply with the enablement requirement.
`
`Claims 12-18, 22, and 23 are rejected under AIA 35 U.S.C. 112(b) as being
`
`indefinite.
`
`Claims 1, 5, 7, and 9-23 are rejected under AIA 35 U.S.C. 103 as being unpatentable
`
`over Shibata
`
`(WO2014/132652)
`
`in view of Goulet
`
`(US2009/0258180)
`
`and Kobayashi
`
`(US6368712).
`
`Claims
`
`1, 4, 5, 7, and 9-23 are rejected under AIA 35 U.S.C. 103 as being
`
`unpatentable over Shibata (WO2014/132652)
`
`in view of Goulet (US2009/0258180), Kobayashi
`
`(US6368712) and Besselievre (US2014/0252263).
`
`Claims 8 and 24-29 are rejected under AIA 35 U.S.C. 103 as being unpatentable
`
`over Shibata (WO2014/132652)
`
`in view of Goulet (US2009/0258180), Kobayashi (US6368712),
`
`Besselievre (US2014/0252263) and Oh (US2016/0264427).
`
`Argument
`
`The amendments of claims 1 and 24 are supported by, for example, original claims 6 and
`
`9, and paragraphs [0027], [0038] of the published present application (US2019/0145571). New
`
`claim 30 is supported by, for example, original claims 9.
`
`Asfor the rejection under USC 112(a) and 112(b) with regard to claim 12-18, 22, and 23
`
`Since claims 12-18 and 22-23 have been cancelled, the rejection under USC 112(a) and
`
`112(b) with regard to claim 12-18, 22, and 23 has been overcome.
`
`Asfor the patentability with regard to claim 1
`
`As amended, claim | recites, at minimum,
`
`the features,“An insulating material
`
`comprising: a silica xerogel; and a nonwoven fabric made ofa plurality of nonwoven fabric
`
`fibers, wherein:_the silica _xerogelis filled in the nonwoven fabric to form a single layer
`
`essentially consisting of the nonwoven fabric and the silica xerogel, each of the plurality of
`
`nonwoven fabric fibers contains an oxidized acrylic, and atleast a part of a surface of each of the
`
`

`

`For discussion purpose only
`Page 6
`
`plurality of nonwoven fabric fibers in the single layer is modified with a carboxyl group”
`
`(emphasis added).
`
`In the rejection of claim 1 (see, page 6 of the Office Action), the Office Action asserted
`
`that it would have been obvious to one of ordinary skill in the art to make the insulating structure
`
`of Shibata, wherein the carbon fibers are oxidized orpartially oxidized polyacrylonitrile fibers or
`
`substituting the carbon fibers with oxidized or partially oxidized polyacrylonitrile fibers, as
`
`taught by Goulet and Kobayashi, having groups such as carboxyl groups on the fiber surfaces, as
`
`taught by Kobayashi, motivated by the desire of forming a conventional heat insulating structure
`
`comprising fibers known in the art as being predictably suitable for use in insulation materials
`
`which are modified to result in excellent_adhesion properties which are unlikely to cause fluffing
`
`and fiber breakage.
`
`However, Kobayashi is NOT analogous art to the claimed invention by the following
`
`reasons. MPEP 2141.01(a) describes “In order for a reference to be proper for use in an
`
`obviousness rejection under 35 U.S.C. 103, the reference must be analogous art to the claimed
`
`invention.
`
`... areference is analogous art to the claimed invention if: (1) the reference is from the
`
`same field of endeavor as the claimed invention (even if it addresses a different problem); or (2)
`
`the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the
`
`samefield of endeavor as the claimed invention).”
`
`(1) Kobayashi is NOT from the samefield of endeavor as the claimed invention (even if
`
`it addresses a different problem)
`
`As shownin, for example, col.
`
`1 lines 21-41 (reproduced below, emphasis added) of
`
`Kobayashi, carbon fibers of Kobayashi are used as materials for reinforcing structural
`
`components or reinforcing building components or the like. That is, carbon fibers of Kobayashi
`
`are NOT used for the insulating material, which is the field of endeavor as the claimed invention
`
`of the present application.
`
`In other words, Kobayashi is NOT areference from the samefield of
`
`endeavor as the claimed invention.
`
`On the other hand, carbon fibers are being used also as materials for forming energy
`related components such as CNGtanks, fly wheels, wind mills and turbine blades, as
`
`

`

`For discussion purpose only
`Page 7
`
`materials for remforcing structural components of roads, bridge piers, etc. and as
`materials for forming or reinforcing building components such as timbers and curtain
`walls.
`
`In the expansion of application fields of carbon fibers as described above, the matrix
`resins used for producing composite materials containing carbon fibers include a variety
`of resins such as epoxy resins, unsaturated polyester resins, vinyl ester resins and phenol
`resins. Especially unsaturated polyester resins and vinyl ester resins are used for small
`ships, boats, yachts, fishing boats, household waste water treatment tanks, various other
`tanks, etc. because of low material and molding costs. Furthermore, phenol resins are
`often used for interior materials of transport vehicles such as airplanes and for building
`members suchastrusses because of their incombustibility.
`In these situations, carbon
`fibers excellent in adhesion properties to these matrix resins and good in processability
`are being demanded.
`
`(2) Kobayashi is NOT reasonably pertinent to the problem faced by the inventor (even
`
`if it is not in the same field of endeavor as the claimed invention)
`
`As shownin, for example, col. 2 line 50-col. 3 line 21 and col. 3 line 58-col. 4 line 9
`
`(reproduced below, emphasis added) of Kobayashi, the carboxyl groups disclosed in Kobayashi
`
`are used for enhancing the adhesion between the carbon fibers and the polymer as well as the
`
`adhesion between the polymer and the matrix resin.
`
`The carbon fibers of the present invention are characterized in that a polymer having
`polar groups and groups capable of reacting with the matrix resin are deposited on the
`fiber surfaces.
`
`A polar group is a functional group having a polarized charge and a group capable of
`reacting with a matrix resin is a functional group capable of being chemically bonded to
`the matrix resin. In the carbon fibers, on the surfaces of which a polymer having these
`two kinds of functional group is deposited, since the polymer is diffused into a matrix
`resin at a low rate, the polar
`groups are strongly
`combined with the surfaces of carbon
`fibers while the groups capable of reacting with the matrix resin are chemically bonded to
`the matrix resin when the carbon fibers are used to mold _a composite material, so, the
`obtained composite material can have high adhesion properties.
`
`The mechanism by which such effects are manifested is considered to be as follows. If
`functional groups being polarized exist near the surfaces of carbon fibers, the basal planes
`or edge planes of the graphite structure on the carbon fiber surfaces adjacent to the polar
`
`

`

`For discussion purpose only
`Page 8
`
`andelectric attraction occurs between the polar groups and the
`groups are polarized,
`carbon fiber surfaces. The adhesive strength is smaller than that of hydrogen bonds, but
`since the graphite structure exists over the entire carbon fiber surfaces, high adhesion can
`be obtained as a whole. To further enhance the adhesion in combination with hydrogen
`bonds, it is effective that _a certain surface oxygen concentration, especially a certain
`amount of carboxyl groups exist_on the carbon fiber surfaces. In this mechanism, it is
`essentially required that the compound with polar groups is localized on the carbon fiber
`surfaces. Therefore, it is important that the polymer having polar groups is formed asa
`homogeneous film on the carbon fiber surfaces, and that the polymeris not diffused into
`the matrix resin. Thus, the present invention is based on a quite new conceptthat the
`hitherto unheeded dipole-dipole interaction with the graphite structure of carbon fiber
`surfaces is used andfixed on the carbon fiber surfaces, in addition to the chemical
`adhesion with the matrix resin.
`
`The groups capable of reacting with the matrix resin include thoselikely to cause radical
`reaction such as vinyl groups, acryloyl groups, methacryloyl groups, halogen-containing
`groups, azo groups and peroxide groups if a vinyl ester resin or unsaturated polyester
`resin is used as the matrix resin. In the present invention, having regardto the stability
`and industrial handling convenience of the compound in its application to the carbon
`fiber surfaces, and the likelihood to react with the matrix resin, they can be preferably
`selected from vinyl groups, acrylate groups and methacrylate groups respectively having
`unsaturated groups at the ends. Furthermore if a phenol resin is used as the matrix resin,
`the groups capable of reacting with the matrix resin can be structures having
`hydroxybenzyl groups, hydroxyphenoxy groups, phenoxy groups, phenolic hydroxyl
`groups, etc. If an epoxy resin is used as the matrix resin, the groups capable of reacting
`with the matrix resin can be epoxy groups, hydroxyl groups, carboxyl groups, amino
`groups, etc.
`
`Returning to the present application, claim 1, as amended,recites “the silica xerogelis
`
`filled in the nonwoven fabric to form a single layer essentially consisting of the nonwoven fabric
`
`and the silica xerogel,
`
`... at least a part of a surface of each of the plurality of nonwoven fabric
`
`fibers in the single layer is modified with a carboxyl group”. Thatis, the nonwoven fabric fiber
`
`whosesurface is modified with a carboxyl group is disposed in the single layer essentially
`
`consisting of the nonwoven fabric and the silica xerogel. In other words, the nonwoven fabric
`
`fiber whose surface is modified with a carboxyl group is disposed in the layer not containing any
`
`resin or any polymer. Hence,in the insulating material recited in claim 1, there is no problem to
`
`enhance the adhesion of the nonwoven fabric fiber to a polymer or a resin becausethereis no
`
`

`

`For discussion purpose only
`Page 9
`
`resin or no polymer in the single layer in which the nonwoven fabric fiber is disposed. Thatis,
`
`the insulating material recited in claim 1 does not have a problem reasonably pertinent to the
`
`problem of Kobayashi (enhancing the adhesion between the carbon fibers and the polymer as
`
`well as the adhesion between the polymer and the matrix resin). In other words, Kobayashiis
`
`NOTreasonably pertinent to the problem faced by the inventor.
`
`Asdescribed above, Kobayashi is NOT analogous art to the claimed invention. Hence,
`
`Kobayashi is NOT a proper reference for use in an obviousness rejection under 35 U.S.C. 103.
`
`Accordingly, since the rejection of under USC 103 with regard to claim | relies on
`
`Kobayashi, claim 1 and all dependent claims thereon are patentable over the cited references.
`
`In addition to the above argument, it is considered that the carboxyl group in Kobayashi
`
`would not be present on the surface of the fibers by the following reasons.
`
`If an epoxy resin is used as the matrix resin in Kobayashi, the groups capable of reacting
`
`with the epoxy resin, .e., carboxyl group, would react with the epoxy resin and be bondedto the
`
`epoxy resin. When the carboxyl group reacts with the epoxy resin, the following chemical
`
`reaction would happen:
`
`2a
`eeteearn . Se ee ac ee ae CAPE EELS ny
`ge OAERE-CQOfe Gm GC Fer
`
`Aci
`
`In this regard, the carboxyl group in Kobayashi would not be present on the surface of the
`
`fibers (COORis not a carboxyl group). That is, the teaching of Kobayashi as a whole indicates
`
`that no carboxyl group on the surface of fibers. Therefore, the combined references fail to teach
`
`the feature “at least a part of a surface of each of the plurality of nonwoven fabric fibers in the
`
`single layer is modified with a carboxyl group” of claim 1.
`
`Accordingly, even if Kobayashi is a reference for use in an obviousness rejection under
`
`35 U.S.C. 103, claim 1 and all dependent claims thereon are patentable overthe cited references.
`
`

`

`For discussion purpose only
`Page 10
`
`Asfor the patentability with regard to claim 24
`
`As amended, claim 24 recites, at minimum,
`
`the features, “An insulating material
`
`comprising: a silica xerogel; and a nonwoven fabric made ofa plurality of nonwoven fabric
`
`fibers, wherein:_the silica _xerogelis filled in the nonwoven fabric to form a single layer
`
`essentially consisting of the nonwoven fabric andthe silica _xerogel, at least a part of a surface of
`
`each of the plurality of nonwoven fabric fibers in the single layer is modified with a carboxyl
`
`group, at least a part of a surface of the silica xerogel is organically modified, and the plurality of
`
`nonwoven fabric fibers are capable of generating carbon dioxide by reacting with atmospheric
`
`oxygen ata temperature of 300°C or more” (emphasis added).
`
`Asthe same reason described in the argument of claim 1, claim 24 andall dependent
`
`claims thereon are patentable over the cited references.
`
`