www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/228,742
`
`12/20/2018
`
`Kazuma OIKAWA
`
`083710-2481
`
`1075
`
`McDermott Will and Emery LLP
`The McDermott Building
`500 North Capitol Street, N.W.
`Washington, DC 20001
`
`CHOI, PETER Y
`
`1786
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`04/26/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`mweipdocket@mwe.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/228,742
`Examiner
`PETER Y CHOI
`
`Applicant(s)
`OIKAWAetal.
`Art Unit
`1786
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 15 February 2023.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1,4-5,7-9,11,19-21 and 24-30 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`Cj] Claim(s)
`is/are allowed.
`Claim(s) 1,4-5,7-9,11,19-21 and 24-30 is/are rejected.
`S)
`) © Claim(s)___is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s) filed on 20 December 2018 is/are: a)¥) accepted or b)L) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2 Certified copies of the priority documents have been received in Application No.
`3.4.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20230420
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013,
`
`is being examined underthe
`
`first inventor to file provisions of the AIA.
`
`Continued Examination Under 37 CFR 1.114
`
`2.
`
`A request for continued examination under 37 CFR 1.114, including the fee set forth in
`
`37 CFR 1.17(e), was filed in this application after final rejection. Since this application is
`
`eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e)
`
`has been timely paid, the finality of the previous Office action has been withdrawn pursuant to
`
`37 CFR 1.114. Applicant's submission filed on February 15, 2023, has been entered.
`
`Claim Rejections - 35 USC § 112
`
`3.
`
`The following is a quotation ofthe first paragraph of 35 U.S.C. 112(a):
`
`(a) INGENERAL.—Thespecification shall contain a written description of the invention, and
`of the manner and process of making and usingit, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with whichit is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor
`of carrying out the invention.
`
`The following is a quotation ofthe first paragraph of pre-AJA 35 U.S.C. 112:
`
`Thespecification shall contain a written description of the invention, and of the manner and
`process of making andusingit, in such full, clear, concise, and exact terms as to enable any person
`skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the
`same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
`
`4,
`
`Claims 1, 4, 5, 7-9, 11, 19-21, and 24-30 are rejected under 35 U.S.C. 112(a) or
`
`35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description
`
`requirement. The claim(s) contains subject matter which wasnot described in the specification in
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 3
`
`such a way as to reasonably conveyto one skilled in the relevant art that the inventor or a joint
`
`inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the
`
`application was filed, had possession of the claimed invention.
`
`Regarding claims 1, 4, 5, 7-9, 11, 19-21, and 24-30, claims 1 and 24 recites thatat least a
`
`part of a surface of each ofthe fibers is modified with a carboxyl group “such that the plurality
`99
`of nonwoven fabric fibers comprises the carboxyl group.” Applicants’ specification teaches that
`
`the fiber has a surface modified with a carboxyl group but does not appear to require that the
`
`carboxyl group is present in the final product as claimed. Note that Applicants’ Published
`
`specification at paragraphs 0046-0051 appearsto indicate acid modifying the surface of the fiber
`
`followed by adehydrocondensation reaction in the process of forming thesilica xerogel. Sucha
`
`disclosure appears to indicate that the carboxyl group is present during the formation ofthe fiber
`
`but is not present in the final product.
`
`Claim Rejections - 35 USC § 103
`
`5.
`
`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-AJA 35 U.S.C. 102 and 103) is incorrect, any correction of the
`
`statutory basis for the rejection will not be considered a new ground ofrejection if the prior art
`
`relied upon, and the rationale supporting the rejection, would be the same undereither status.
`
`6.
`
`The following is a quotation of 35 U.S.C. 103 which formsthe basis for all obviousness
`
`rejections set forth in this Office action:
`
`A patent fora 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 obviousbefore the effective
`filing date of the claimed invention toa 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.
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 4
`
`7.
`
`Claims 1, 5, 7, 11, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`WO 2014/132652 to Shibata, with USPN 10,520,126 cited as the English equivalent,
`
`in view of
`
`US Pub. No. 2009/0258180 to Goulet and USPN 6,368,712 to Kobayashi.
`
`Regarding claims 1, 5, 7, 11, and 19-21, Shibata teaches a heat insulating structure which
`
`is excellent in thermal insulating properties and higher in strength, including an aerogel layer
`
`including aerogel particles, adhesive and fibers, and a retainer which is provided to at least one
`
`face of the aerogel layer and includes fiber materials and binder resin (Shibata, Abstract).
`
`Shibata teaches that parts of some fiber material project from the retainer into the aerogel layer
`
`so as to be included in the aerogel layer asthe fibers to strengthen the bonding between the
`
`layers (Id., column 11 lines 34-50, Figure 2). As shown in atleast Fig. 2, the structure appears to
`
`be within the scope of a single layer. Shibata teaches that a silica aerogel is preferably used, and
`
`that the aerogel may include xerogel (Id., column 3 lines 47-59). Note that since the aerogelis
`
`silica, one of ordinary skill would expect the xerogel to be silica. Shibata teaches that the fiber
`
`materials comprise a fiber diameter preferably within a diameter range of 3 to 20 um (Id.,
`
`column 9 lines 32-41).
`
`Regarding the claimed fiber, Shibata teaches that the fiber materials may be carbon
`
`fibers, organic fibers and synthetic fibers (Shibata, column 9 lines 42-50) and that the binder
`
`resin may be an epoxyresin (Id., column 9 lines 51-64). Additionally, Shibata teaches that the
`
`aerogel layer may be composed of multiple layers (Shibata, column 16 lines 10-28). Shibata
`
`does not appear to teach the claimed oxidized acrylic.
`
`Goulet teaches a composite fire-resistant and heat blocking article includingafire-
`
`retardant and heat-resistant fabric with a heat-barrier and/or heat-absorbing core material
`
`(Goulet, Abstract), which is a silica aerogel (Id., paragraph 0016). Goulet teaches that suitable
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 5
`
`examples of fire-retardant and heat-resistant fabric that can be used include oxidized
`
`polyacrylonitrile, partially oxidized polyacrylonitriles, flame retardant viscose rayons, and
`
`modacrylics among others (Id., paragraph 0018), wherein the fabric may be a non-woven
`
`material (Id., paragraph 0020). Goulet teaches that the composite is characterized by the ability
`
`to withstand direct exposure to a flame or another heat source having a temperature of atleast
`
`about 1500°C (Id., paragraph 0015). Goulet teaches that the composite provides durability,
`
`fire
`
`resistance, and the ability to withstand high heat exposure on one face without transferring
`
`significant heat to the opposite face (Id., Abstract).
`
`Additionally, Kobayashi teaches carbon fibers having polar groups produced by
`
`depositing a monomer having polar groups and groups capable of reacting with matrix resin,
`
`onto the fiber surface, wherein the resulting fibers have excellent adhesion properties and are
`
`unlikely to cause fluffing and fiber breakage (Kobayashi, Abstract, column 25 line 25 to column
`
`26 line 6). Kobayashi teaches that if an epoxy resin is used as the matrix resin, the groups
`
`capable of reacting with the matrix resin can be carboxyl groups (Id., column 3 line 58 to column
`
`4 line 9). Kobayashi teaches that the raw carbon fibers which can be used include acrylic carbon
`
`fibers, such as polyacrylonitrile polymers which are oxidized (Id., column 12 lines 1-34).
`
`It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
`
`date of the claimed invention to make the insulating structure of Shibata, wherein the carbon
`
`fibers are oxidized or partially 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 aconventional heat insulating structure comprising fibers known in the
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 6
`
`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.
`
`Regarding claim 7, the prior art combination teaches that a part of a fiber material may
`
`project out in a loop-like manner suchthat at least one curved middle portion of a fiber material
`
`projects out (Shibata, column 12 lines 19-39). Note that a fiber will be inherently symmetric
`
`about a point on the fiber and have line symmetry.
`
`Regarding claim 11, the prior art combination teaches that the heat insulating structure
`
`can be attached to a structure such as a vehicle body (Shibata, column 16 lines 35-60).
`
`Regarding claim 19, although the prior art combination does not appearto specifically
`
`teach the claimed property, the prior art combination teaches an oxidized acrylic fiber fabric,
`
`such as an oxidized orpartially oxidized polyacrylonitrile, having the claimed modification.
`
`Therefore, the claimed property appears to naturally flow from the teachings of the prior art
`
`combination. Products of identical structure cannot have mutually exclusive properties. The
`
`burden is on Applicants to prove otherwise.
`
`Regarding claims 20 and 21, as set forth above, the prior art combination teaches that the
`
`fibers are oxidized or partially oxidized polyacrylonitrile fibers. Note that partially oxidized
`
`polyacrylonitrile fibers comprise a partly remaining nitrile group.
`
`8.
`
`Claims 1, 4, 5, 7, 9, 11, and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Shibata in view of Goulet, Kobayashi, and US Pub. No. 2014/0252263 to Besselievre.
`
`Regarding claims 1, 4, 5, 7, 9, 11, and 19-21, the teachings of the prior art combination
`
`set forth above are incorporated herein. As set forth above, the xerogel appears to be comprise
`
`silica. Alternatively, Besselievre teaches the use of xerogels for the manufacture of building
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 7
`
`materials (Besselievre, paragraphs 0025, 0026). Besselievre teaches that a fibrous reinforcement
`
`material is used to structure the xerogel to improve the properties of mechanical strength and
`
`resistance thereof whilst maintaining its thermally insulating properties, wherein the fibrous
`
`reinforcement material may comprise organic or inorganic battings (Id., paragraphs 0072-0074).
`
`Besselievre teaches that a self-supporting,
`
`insulating, single-layer composite panel comprises
`
`between 50% and 90% by weight of xerogel relative to the weight of the panel, based on the
`
`desired thermal conductivity (Id., paragraph 0093). Besselievre teaches that the xerogelis
`
`preferably silica xerogel (Id., paragraph 0079). Besselievre suggest that although aerogels and
`
`xerogels are formed by different processes, both have heat and sound insulating qualities and low
`
`density, wherein xerogels are preferred based on manufacturing efficiency (Id., paragraphs 0009-
`
`0012, 0020).
`
`It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
`
`date of the claimed invention to make the insulating structure of the prior art combination,
`
`substituting the silica aerogel with silica xerogel, as suggested by Besselievre, motivated by the
`
`desire of forming a conventional heat insulating structure comprising a xerogel known in the art
`
`as being predictably suitable for similar insulating panels.
`
`Regarding claim 4, the prior art combination does not appear to teach the weight
`
`percentage of the xerogel. However, Besselievre teaches the use of xerogels for the manufacture
`
`of building materials (Besselievre, column 3 lines 4-19). Besselievre teaches that a self-
`
`supporting,
`
`insulating, single-layer composite panel comprises between 50% and 90% by weight
`
`of xerogel relative to the weight of the panel, based on the desired thermal conductivity (Id.,
`
`column 8 lines 28-38).
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 8
`
`It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
`
`date of the claimed invention to make the insulating structure of the prior art combination,
`
`wherein the structure includes an amountof xerogel, such as within the claimed range, as taught
`
`by Besselievre, motivated by the desire of forming a conventional heat insulating structure
`
`comprising an amount of xerogel known in the art as being predictably suitable for such
`
`structures, based on the desired thermal conductivity.
`
`9.
`
`Claims 8, 9 and 24-30 rejected under 35 U.S.C. 103 as being unpatentable over Shibata in
`
`view of Goulet and Kobayashi, as applied to claims 1, 5, 7, 11, and 19-21 above, and further in
`
`view of USPN 5,948,314 to Geiss.
`
`Regarding claims 8, 9 and 24-30, Shibata teaches an aerogel layer 1 provided on one
`
`surface of the structure and a retainer 2 provided on one face of the aerogel layer, wherein the
`
`retainer layer includes fiber materials and a binder (Shibata, column 8 lines 14-45), suchasa
`
`vinyl acetate resin composition (Id., column 8 line 64 to column 9 line 10). Shibata teaches that
`
`the aerogel layer is composed of multiple aerogel particles bonded to each other with adhesive
`
`(Id., column 8 line 64 to column 9 line 10). Shibata teaches that parts of some fiber material
`
`project from the retainer into the aerogel layer so as to be included in the aerogellayer as the
`
`fibers to strengthen the bonding betweenthe layers (Id., column 11 lines 34-50, Figure 2). As
`
`shownin at least Fig. 2, the structure appears to be within the scope of a single layer.
`
`Additionally, Shibata teaches that the aerogel layer may be composed of multiple layers (Id.,
`
`column 16 lines 10-28).
`
`Shibata does not appear to teach the xerogel modified as claimed, and the additional
`
`silica xerogel layer laminated on the single layer. However, Geiss teaches a composition
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 9
`
`containng an aerogel comprising aerogel particles and an aqueous binder, where the particle
`
`diameter of the aerogelparticles is less than 0.5 mm, preferably less than 0.2 mm, and the
`
`aerogel particles preferably have hydrophobic surface groups (Geiss, Abstract, column 3 lines
`
`22-33). Geiss teaches that the aerogels comprise silicon compounds and are very particularly
`
`preferably SiOz xerogels (Id., column 3 lines 39-55). Geiss teaches thatit is advantageous for
`
`stabilizing the aqueous suspension if hydrophobic groups which are not removedby the action of
`
`water are covalently bonded to the internal surface of the aerogels (Id., column 3 line 63 to
`
`column 4 line 58). Geiss teaches that suitable groups for permanent hydrophobization are
`
`trisubstituted silyl groups, wherein the R groups are particularly preferably C-C¢ alkyl, wherein
`
`suitable binders include vinyl acetate dispersions (Id.). Geiss teaches that the flammability
`
`classification of the article is determined by the flammability classification of the aerogel and of
`
`the binder (Id., column 5 lines 7-15). Geiss teaches that after drying,
`
`the compositions are
`
`suitable, because of their low thermal conductivity, as heat insulation materials (Id., column 5
`
`lines 57-61). Geiss teaches thatit is possible to apply the composition onto surfaces as a coating,
`
`as the composition can be used as sound absorption materials, since they have a low sound
`
`transmission velocity anda higher sound insulation effect (Id., column 6 lines 7-25).
`
`It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
`
`date of the claimed invention to make the insulating structure of the prior art combination,
`
`wherein the structure further includes multiple coating layers comprising organically
`
`hydrophobized silica xerogel particles and a binder, as suggested by Shibata, motivated by the
`
`desire of forming a conventional heat insulating structure having improved properties including
`
`low sound transmission velocity and a higher sound insulation effect suitable for the intended
`
`application.
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 10
`
`Regarding the claimed property of the xerogel, although the prior art combination does
`
`not appearto specifically teach the claimed property, the prior art combination teaches an
`
`organically modified xerogel as claimed. Additionally, Applicants’ specification does not appear
`
`to teach any specific organic modification in order to specifically attain the claimed property,
`
`although Applicants’ specification and the prior art combination teach the same organic
`
`modification. Therefore, the claimed property appears to naturally flow from the teachings of
`
`the prior art combination. Products of identical structure cannot have mutually exclusive
`
`properties. The burden is on Applicants to prove otherwise.
`
`10.
`
`Claims 8, 9 and 24-30 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Shibata in view of Goulet, Kobayashi and Besselievre, as applied to claims 1, 4, 5, 7, 9, 11, and
`
`19-21 above, and further in view of Geiss.
`
`Regarding claims 8, 9 and 24-30, Shibata teaches an aerogel layer 1 provided on one
`
`surface of the structure and a retainer 2 provided on one face of the aerogel layer, wherein the
`
`retainer layer includes fiber materials and a binder (Shibata, column 8 lines 14-45), suchasa
`
`vinyl acetate resin composition (Id., column 8 line 64 to column 9 line 10). Shibata teaches that
`
`the aerogel layer is composed of multiple aerogel particles bonded to each other with adhesive
`
`(Id., column 8 line 64 to column 9 line 10). Shibata teaches that parts of some fiber material
`
`project from the retainer into the aerogel layer so as to be included in the aerogellayer as the
`
`fibers to strengthen the bonding betweenthe layers (Id., column 11 les 34-50, Figure 2). As
`
`shownin at least Fig. 2, the structure appears to be within the scope of a single layer.
`
`Additionally, Shibata teaches that the aerogel layer may be composed of multiple layers (Id.,
`
`column 16 lines 10-28).
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 11
`
`Shibata does not appear to teach the xerogel modified as claimed, and the additional
`
`silica xerogel layer laminated on the single layer. However, Geiss teaches a composition
`
`containng an aerogel comprising aerogel particles and an aqueous binder, wherethe particle
`
`diameter of the aerogel particles is less than 0.5 mm, preferably less than 0.2 mm, and the
`
`aerogel particles preferably have hydrophobic surface groups (Geiss, Abstract, column 3 lines
`
`22-33). Geiss teaches that the aerogels comprise silicon compounds and are very particularly
`
`preferably SiOz xerogels (Id., column 3 lines 39-55). Geiss teaches thatit is advantageous for
`
`stabilizing the aqueous suspension if hydrophobic groups which are not removedby the action of
`
`water are covalently bonded to the internal surface of the aerogels (Id., column 3 line 63 to
`
`column 4 line 58). Geiss teaches that suitable groups for permanent hydrophobization are
`
`trisubstituted silyl groups, wherein the R groups are particularly preferably C,-C¢ alkyl, wherein
`
`suitable binders include vinyl acetate dispersions (Id.). Geiss teaches that the flammability
`
`classification of the article is determined by the flammability classification of the aerogel and of
`
`the binder (Id., column 5 lines 7-15). Geiss teaches that after drying,
`
`the compositions are
`
`suitable, because of their low thermal conductivity, as heat insulation materials (Id., column 5
`
`lines 57-61). Geiss teaches thatit is possible to apply the composition onto surfaces as a coating,
`
`as the composition can be used as sound absorption materials, since they have a low sound
`
`transmission velocity anda higher sound insulation effect (Id., column 6 lines 7-25).
`
`It would have been obvious to one of ordinary skill
`
`in the art before the effective filing
`
`date of the claimed invention to make the insulating structure of the prior art combination,
`
`wherein the structure further includes multiple coating layers comprising organically
`
`hydrophobized silica xerogel particles and a binder, as suggested by Shibata, motivated by the
`
`desire of forming a conventional heat insulating structure having improved properties including
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 12
`
`low sound transmission velocity and a higher sound insulation effect suitable for the intended
`
`application.
`
`Regarding the claimed property of the xerogel, although the prior art combination does
`
`not appearto specifically teachthe claimed property, the prior art combination teaches an
`
`organically modified xerogel as claimed. Additionally, Applicants’ specification does not appear
`
`to teach any specific organic modification in order to specifically attain the claimed property,
`
`although Applicants’ specification and the prior art combination teach the sameorganic
`
`modification. Therefore, the claimed property appears to naturally flow from the teachings of
`
`the prior art combination. Products of identical structure cannot have mutually exclusive
`
`properties. The burden is on Applicants to prove otherwise.
`
`Response to Arguments
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`11.
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`Applicant's arguments filed February 15, 2023, have been fully considered but they are
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`not persuasive. Applicant argues that the insulating material as a single layer is formed poring a
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`sol solution onto anonwoven fabric. Examiner respectfully disagrees. Although Applicant is
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`entitled to be their own lexicographer, a “single layer” is neither defined or claimed in the
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`manner argued. Asset forth above, Shibata teaches that parts of some fiber material project from
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`the retainer into the aerogel layer so as to be included in the aerogellayeras the fibers to
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`strengthen the bonding between the layers. As shownin atleast Fig. 2, the structure appears to
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`be within the scope of a single layer.
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`Applicant argues that the carboxyl group in Kobayashi would not be present on the
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`surface of the fibers, as the carboxyl group would react with the epoxy resin and not be present
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`on the surface of the fibers. Examiner respectfully disagrees. As shown in the prior art, the
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`

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`Application/Control Number: 16/228,742
`Art Unit: 1786
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`Page 13
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`surface of the fibers have been modified with a carboxyl group. Additionally,
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`the fibers appear
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`to comprise the carboxyl group as interpreted by Applicants’ specification.
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`Conclusion
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`The following prior art is made of record and not relied upon, but is considered pertinent
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`to Applicant’s disclosure: “Surface Modification of Carbon Fibres Using Plasma Technique” to
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`Kappler is cited to show increasing the wettability of carbon fibers to improve bonding of fiber
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`to a matrix or adhesive, wherein the acidity of carbon fibers is due to the presence of carboxyl
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`groups.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to PETER Y CHOI whosetelephone numberis (571)272-6730. The
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 14
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`information about Patent Center and https://www.uspto.gov/patents/docx for information about
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`/PETER Y CHOI/
`Primary Examiner, Art Unit 1786
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`