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
`
`12/05/2022
`
`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 19 August 2022.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`2a)[¥) This action is FINAL.
`2b) (J 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 and 7-29 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C) Claim(s)__ is/are allowed.
`Claim(s) 1,4-5 and 7-29 is/are rejected.
`1) Claim(s)__is/are objectedto.
`Cj} Claim(s)
`are subjectto restriction and/or election requirement
`* 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 20221129
`
`

`

`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.
`
`Claim Rejections - 35 USC § 112
`
`2.
`
`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 whichit pertains, or with whichit is most nearly connected, to
`make and use the same, and shall set forth the best mode contemplated by the inventoror 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 whichit 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.
`
`3.
`
`Claims 12-18, 22 and 23 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 enablement requirement. The claim(s) contains
`
`subject matter which was not described in the specification in such a wayasto enable oneskilled
`
`in the art to which it pertains, or with which it is most nearly connected, to make and/or use the
`
`invention.
`
`Regarding claims 12-18, 22 and 23, claim 12 recites a nonwoven fabric made of a
`
`plurality of nonwovenfabric fibers, wherein the plurality of nonwoven fabric fibers do not
`
`contact each other. A nonwovenfabric is ordinarily known in the art as an assembly oftextile
`
`fibers held together by mechanical interlocking in arandom web or mat. Although Applicants’
`
`specification teaches that Fig. 5A shows a fiber with a hairpin loop structure wherein the
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 3
`
`nonwoven fabric fiber does not contact other nonwoven fabric fibers, it is unclear how sucha
`
`structure necessarily results in a nonwoven fabric. If the fibers do not contact each other, then the
`
`fibers do not forma nonwoven.
`
`It is unclear how oneofordinary skill
`
`in the art could make
`
`and/or use a product which is a nonwoven fabric where the fibers do not contact each other as
`
`claimed.
`
`4.
`
`The following is a quotation of 35 U.S.C. 112(b):
`(b) CONCLUSION.—Thespecification shall conclude with one or more claims particularly pointing
`out and distinctly claiming the subject matter which the inventoror a joint inventor regards as the
`invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph:
`Thespecification shall conclude with one or more claims particularly pointing outand distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`5.
`
`Claims 12-18, 22 and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
`
`second paragraph, as being indefinite for failing to particularly point out and distinctly claim the
`
`subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA
`
`35 U.S.C. 112, the applicant), regards as the invention.
`
`Regarding claims 12-18, 22 and 23, claim 12 recites anonwoven fabric made of a
`
`plurality of nonwovenfabric fibers, wherein the plurality of nonwoven fabric fibers do not
`
`contact each other. A nonwoven fabric is ordinarily known in the art as an assembly oftextile
`
`fibers held together by mechanical interlocking in arandom web or mat. Itis unclear how the
`
`claimed nonwoven fabric comprisesaplurality of fibers, where the fibers do not contact each
`
`other as claimed. If the fibers do not contact each other, then the fibers do not form a nonwoven.
`
`Regarding claims 14-18, the claims recites that each of the fibers has a hairpin loop
`
`structure, a pseudoknot structure, an internal loop structure, a bulged loop structure, or a
`
`branched loop structure. It is unclear exactly what the scope of the fibers necessarily entails.
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 4
`
`For example, Applicants’ specification at Figures 5A and 5B showafiber with a hairpin loop
`
`structure and a pseudoknot structure which is a continuous structure of hairpin loop structures
`
`joined together. However, the scope of the claimed fiber is indefinite, as it is unclear exactly
`
`whatstructures would be within the scope and outside the scope of the claimed fiber structures.
`
`Note that the hairpin loop structure appearsto indicate the fiber structure prior to being formed
`
`into anonwoven, as Applicants’ specification describes Fig. 5A as showing that the fiber does
`
`not contact other nonwoven fabric fibers. Applicants’ specification is indicating that both the
`
`fiber with the hairpin loop structure and the other nonwoven fabric fibers are referencing the
`
`same structure 119. For purposes of examination, any fiber with acurved portion whichis
`
`formed into a nonwoven will be interpreted as being within the scope of the claimed fiber
`
`structures.
`
`Claim Rejections - 35 USC § 103
`
`6.
`
`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.
`
`7.
`
`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 5
`
`8.
`
`Claims 1, 5, 7, and 9-23 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, and 9-23, Shibata teaches a heatinsulating structure which is
`
`excellent in thermal insulating properties and higher in strength, including an aerogellayer
`
`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 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 besilica. 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 epoxy resin (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
`
`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
`
`

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`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 6
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`to withstand direct exposure to a flame or another heat source having a temperatureofatleast
`
`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
`
`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 claims 7 and 13-18, the prior art combination teaches that a part ofa fiber
`
`material may project out in a loop-like mannersuchthat at least one curved middle portion of a
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 7
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`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 9, the prior art combination teaches that parts of some fiber material
`
`project from the retainer into the aerogel layer so as to be included in the aerogel layer as the
`
`fibers to strengthen the bonding betweenthe layers (Shibata, column 11 lines 34-50, Figure 2).
`
`Additionally,
`
`the prior art combination teaches that the aerogel layer may be composed of
`
`multiple layers (Id., column 16 lines 10-28).
`
`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 the fibers and aerogel layer in addition to a separate laminated
`
`aerogel layer, as suggested by Shibata, motivated by the desire of forming a conventional heat
`
`insulating structure having the desired structure and properties suitable for the intended
`
`application.
`
`Regarding claim 10, the prior art combination teaches that the layered aerogel composites
`
`comprise alternating layers of oriented fibrous sheets and aerogel material. The prior art
`
`combination teaches that the heat insulating structure includes anaerogel layer 1 including the
`
`aerogel particles and an adhesive, wherein a retainer 2 is placed on one face of the aerogel layer
`
`(Shibata, column 8 lines 14-63, Figure 1), wherein the adhesive is an inorganic adhesive (Id.,
`
`column 10 line 60 to column 11 line 31).
`
`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 12, as set forth above, it is how the fabric is a nonwoven fabric
`
`comprising a plurality of fibers wherein the plurality of fibers do not contact eachother. If the
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 8
`
`claim is requiring multiple pluralities of fibers, then it is reasonable for one of ordinary skill to
`
`expect that a plurality of fibers would not contact another random plurality offibers.
`
`Regarding claim 19, although the prior art combination does not appear to 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 20-23, 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.
`
`9,
`
`Claims 1, 4, 5, 7, and 9-23 are 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, and 9-23 above, and US
`
`Pub. No. 2014/0252263 to Besselievre.
`
`Regarding claims 1, 5, 7, and 9-23, the teachings of the prior art combination set forth
`
`above are incorporated herein. As set forth above, the xerogel appears to be comprisesilica.
`
`Alternatively, Besselievre teaches the use of xerogels for the manufacture of building 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%
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 9
`
`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 xerogel is preferablysilica
`
`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).
`
`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 amount of 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.
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 10
`
`10.
`
`Claims 8 and 24-29 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, and 9-23 above, and further in view
`
`of either WO 2015/119430 or US Pub. No. 2016/0264427 to Oh, which are equivalent
`
`publications.
`
`Prelimmnarily, note that the sections cited below are based on the USpublication.
`
`Regarding claims 8 and 24-29, the prior art combination does not appear to teach the
`
`xerogel modified as claimed. However, based on Applicants’ specification at pages 9 and 10, the
`
`modification rendering the xerogel hydrophobic appears to be responsible for the claimed
`
`property.
`
`Oh teaches a method for preparing a hydrophobic silica aerogel having low tap density
`
`and high specific surface area (Oh, Abstract). Oh teaches that modifying the surface ofthesilica
`
`aerogel into hydrophobic maintains low thermal conductivity (Id., paragraph 0029). Oh teaches
`
`that the surface modifier may be an organosilicon compound, such as trimethylsilanol (Id.,
`
`paragraphs 0040, 0043, Example 9). Oh teaches that the silica aerogel has low tap density and
`
`high specific surface areas as well as high hydrophobicity which may be usedin insulation
`
`materials, as the aerogel has low thermal conductivity (Id., paragraph 0081).
`
`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 xerogel is organically modified with a trimethylsilanol, as taught by Oh, motivated
`
`by the desire of forming aconventional heat insulating structure comprising an organically
`
`modified xerogel known in the art as being predictably suitable for insulation material, based on
`
`the desired thermal conductivity.
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 11
`
`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 sametrimethylsilanol
`
`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.
`
`11.
`
`Claims 8 and 24-29 are rejected under 35 U.S.C. 103 as being unpatentable over Shibata
`
`in view of Goulet and Kobayashi and Besselievre, as applied to claims 1, 4, 5, 7, and 9-23 above,
`
`and further in view of either WO 2015/119430 or US Pub. No. 2016/0264427 to Oh, which are
`
`equivalent publications.
`
`Prelimmnarily, note that the sections cited below are based on the USpublication.
`
`Regarding claims 8 and 24-29, the prior art combination does not appear to teach the
`
`xerogel modified as claimed. However, based on Applicants’ specification at pages 9 and 10, the
`
`modification rendering the xerogel hydrophobic appears to be responsible for the claimed
`
`property.
`
`Oh teaches a method for preparing a hydrophobic silica aerogel having low tap density
`
`and high specific surface area (Oh, Abstract). Oh teaches that modifying the surface ofthesilica
`
`aerogel into hydrophobic maintains low thermal conductivity (Id., paragraph 0029). Oh teaches
`
`that the surface modifier may be an organosilicon compound, such as trimethylsilanol (Id.,
`
`paragraphs 0040, 0043, Example 9). Oh teaches that the silica aerogel has low tap density and
`
`

`

`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 12
`
`high specific surface areas as well as high hydrophobicity which may be usedin insulation
`
`materials, as the aerogel has low thermal conductivity (Id., paragraph 0081).
`
`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 xerogel is organically modified with a trimethylsilanol, as taught by Oh, motivated
`
`by the desire of forming aconventional heat insulating structure comprising an organically
`
`modified xerogel known in the art as being predictably suitable for insulation material, based on
`
`the desired thermal conductivity.
`
`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 sametrimethylsilanol
`
`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.
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`Response to Arguments
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`12.
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`Applicant's arguments filed August 19, 2022, have been fully considered but they are not
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`persuasive. Regarding the 35 U.S.C. 112(b) rejection of claims 14-18, Applicant argues that the
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`specification does not limit
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`the hairpin loop structure to prior to forming the nonwoven.
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`Examiner respectfully disagrees. As shown at Fig. 5A, the Figure showsa singular fiber and not
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`a plurality of fibers. Although Applicant’s specification teaches that the nonwoven fabric fiber
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`

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`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 13
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`does not contact other fibers thereby reducing binding of the fibers, the specification is unclear as
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`to whetherthe loop structure reduces binding such that the fibers in the nonwoven fabric remain
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`in the loop structure, or whether the loop structure necessarily results in the nonwoven fabric.
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`Based on the ambiguity and Applicant’s Fig. 5A, the loop structure only appears to be required
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`by the fibers prior to forming the nonwoven, as a nonwoven requires fibers to be in contact in
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`order to be a nonwoven fabric.
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`Applicant’s remaining arguments have been considered but are moot based on the new
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`ground of rejection.
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`Conclusion
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`Applicant's amendment necessitated the new ground(s) of rejection presented in this
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`Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP§ 706.07(a).
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`Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`
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`MONTHSfrom the mailing date of this action. In the eventafirst reply is filed within TWO
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`MONTHSof the mailing date of this final action and the advisory action is not mailed until after
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`the end of the THREE-MONTHshortenedstatutory period, then the shortened statutory period
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`will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
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`CFR 1.136(a) will be calculated from the mailing date of the advisory action.
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`In no event,
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`however, will the statutory period for reply expire later than SIX MONTHSfrom the date of this
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`final action.
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`

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`Application/Control Number: 16/228,742
`Art Unit: 1786
`
`Page 14
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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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`examiner cannormally be reached M-F 8:00 AM - 3:00 PM.
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`encouraged to use the USPTO Automated Interview Request (AIR) at
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`http://www.uspto. gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Jennifer Chriss can be reached on 571-272-7783. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of published or unpublished applications may be
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`obtained from Patent Center. Unpublished application mformation in Patent Center is available
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`to registered users. To file and manage patent submissions in Patent Center, visit:
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`https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more
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`/PETER Y CHOI/
`Primary Examiner, Art Unit 1786
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`