DETAILED ACTION
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 § 103
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-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 62-74 and 77-81 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2013/0289191 to Williamson in view of US Pub. No. 2011/0003522 to Chen.
Regarding claims 62-74 and 77-81, Williamson teaches composite products made with binder compositions that include one or more tannins, and at least partially curing the binder composition to produce a composite product (Williamson, Abstract). Williamson teaches that the binder compositions can include hydrolyzable tannins, condensed tannins, or a combination of hydrolyzable tannins and condensed tannins (Id., paragraph 0012). Williamson teaches that the binder compositions can be used to make a variety of products including inorganic based substrates comprising mineral fibers (Id., paragraphs 0062-0063, 0079) in the form of a non-woven mat (Id., paragraph 0066). Williamson teaches that applying heat and/or pressure can accelerate the curing of the binder, wherein the binder composition can cure at temperatures from a low of about 20ºC to a high of about 150ºC (Id., paragraphs 0040, 0074).
Williamson teaches that the binder composition can be combined with one or more additional or second binder to produce a binder or adhesive system (Williamson, paragraph 0082), wherein the plurality of substrates is contacted with the binder system (Id., claim 15). Williamson teaches that illustrative additional or second binder compositions can include protein and be free from at least one of the tannins, multifunctional compound, and Lewis acid (Id., paragraphs 0082, 0083), wherein suitable proteins include corn flour, soy flour, wheat flour, spray dried blood, or any combination or mixture thereof (Id., paragraph 0106). Williamson teaches that the second binder composition in the binder system can range from about 0.1 wt.% to about 99 wt.% based on the combined solids weight of the first and second binder compositions (Id., paragraph 0112). Williamson teaches that the plurality of substrates contacted with the binder composition can be formed into a desired shape before, during, and/or after partial curing of the binder composition (Id., paragraph 0066). Since Williamson teaches that the first and second binder compositions comprise similar compositions, and since Williamson suggests that the binder system can be applied to the substrate prior to curing, it is reasonable for one of ordinary skill to expect that the protein and tannin are crosslinked as claimed.
Williamson does not appear to teach that the protein is of animal origin. However, Chen teaches a bio-based aqueous binder for fiberglass insulation materials and non-woven mats, including a protein-containing biomass and a pH adjuster, wherein the biomass is natural in origin and may be derived from plant or animal sources (Chen, Abstract). Chen teaches that the protein may be derived from plant sources such as soy and kidney beans, or may come from animal sources such as eggs, blood, meat, and fish (Id., paragraph 0032). Chen teaches that the protein-containing biomass may be present in the binder composition in an amount from about 25% to about 99% by weight of the binder composition (Id.). Chen teaches that the binder composition is used to form an insulation product formed of matted inorganic fibers bonded together by a cured thermoset polymeric material, wherein suitable inorganic fibers include glass fibers and wool glass fibers (Id., paragraph 0044).
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 composite product of Williamson, wherein the binder comprises a protein, such as a protein from an animal source as claimed, as taught by Chen, motivated by the desire of forming a conventional composite product comprising a protein known in the art as being predictably suitable for use as a binder for inorganic fiber products.
Regarding claims 63-69, the prior art combination teaches that the protein may at least be sourced from meat and fish. Proteins from meat and fish are known in the art to include collagens, as collagens are protein-rich. Alternatively, 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 composite product of the prior art combination, wherein the fish or meat protein comprises collagen, as one of ordinary skill in the art would recognize that fish or meat high in proteins include collagen.
Additionally, note that the source or origination of the protein is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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 does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claims 70-73, the prior art combination teaches that the phenol is a hydrolyzable tannin or a condensed tannin, including extracts from oak (Williamson, paragraphs 0012-0015).
Regarding claim 74, the prior art combination teaches that the binder composition can include the tannin in an amount ranging from a low of about 60 wt% to about 70 wt% (Williamson, paragraph 0041) having about 70 wt% to about 80 wt% active phenolic ingredients (Id., paragraph 0014). Williamson teaches that the second binder may comprise protein having about 20-95% protein (Id., paragraph 0106), and that the second binder composition in the binder system can range from about 0.1 wt% to about 99 wt% (Id., paragraph 0112).
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 composite product of the prior art combination, and adjusting and varying the amount of phenol in the composition, such as within the claimed range, as taught by Williamson, motivated by the desire of forming a conventional composite product based on the totality of the teachings of the prior art.
Regarding claim 77, the prior art combination teaches that the binder composition may have a pH ranging from about 4 to about 14 (Williamson, paragraph 0038). Note that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 78, the prior art combination teaches that the composition may include amines (Williamson, paragraph 0036).
Regarding claims 79 and 80, the prior art combination teaches applying heat and/or pressure to accelerate the curing of the binder, wherein the binder composition can cure at temperatures from a low of about 20ºC to a high of about 150ºC (Williamson, paragraphs 0040, 0074). Note that in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Regarding claim 81, the prior art combination teaches fiber products including insulation batts or rolls, composite flooring, siding, and gypsum wall boards (Williamson, paragraph 0081).
Claim 75 is rejected under 35 U.S.C. 103 as being unpatentable over Williamson in view of Chen, as applied to claims 62-74 and 77-81 above, as evidenced by “Soy Beans: Properties and Analysis” to Nill.
Regarding claim 75, Applicants’ Reply Brief of February 13, 2023, at page 6 recites that in order to determine the mass ratio, one has to determine (i) the concentration of protein, (ii) the concentration of phenol and/or quinone containing compound, (iii) the concentration of lysine and cysteine in the protein, and (iv) the concentration of phenol and/or quinone in the phenol and/or quinone containing compound.
As set forth above, Chen teaches that the protein may be derived from plant sources such as soy and kidney beans, or may come from animal sources such as eggs, blood, meat, and fish. Note that one of ordinary skill would recognize that protein from meat and fish includes collagen. Williamson teaches that the binder composition can include the tannin in an amount ranging from a low of about 60 wt% to about 70 wt% (Williamson, paragraph 0041) having about 70 wt% to about 80 wt% active phenolic ingredients (Id., paragraph 0014). Williamson teaches that the second binder may comprise protein having about 20-95% protein (Id., paragraph 0106), and that the second binder composition in the binder system can range from about 0.1 wt% to about 99 wt% (Id., paragraph 0112).
As evidenced by Nill, a suitable protein comprises 6.8% lysine and 2.5% cysteine. Additionally, Williamson teaches that the tannin comprises about 70 wt% to about 80 wt% active phenolic ingredients. Based on the amount of lysine and cysteine in an exemplary protein (6.8% + 2.5%) and the amount of phenol in the phenol compound (about 70-80%), it is reasonable for one of ordinary skill in the art to expect that the proteins set forth in the prior art comprise substantially similar properties and therefore, would similarly comprise a mass ratio within the claimed range.
Additionally, note that Applicants’ specification recites a variety of proteins, a substantial amount which overlap with those proteins disclosed by the prior art. Applicants’ specification does not provide any guidance as to whether specific proteins are only compatible with specific phenol and/or quinone containing compounds. Additionally, the lysine and cysteine mass ratios of each of the proteins do not appear to be widely known, nor do Applicants provide any information regarding those proteins set forth in the application. Therefore, a reasonable interpretation of Applicants’ specification, as evidenced by at least Nill, would be that the lysine and cysteine amounts in the proteins are substantially similar, absent evidence to the contrary.
The Patent and Trademark Office can require Applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on Applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection, In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). Therefore, for purposes of examination, it is presumed that any of the proteins in combination with any of the phenol and/or quinone containing compounds would necessarily result in the claimed mass ratio, as Applicants’ specification does not establish to the contrary. Note that in response, Applicants can rebut the presumption by establishing lysine and cysteine values for each of the proteins recited in the specification.
Claim 76 is rejected under 35 U.S.C. 103 as being unpatentable over Williamson in view of Chen, as applied to claims 62-74 and 77-81 above, and further in view of US Pub. No. 2014/0134497 to Lester.
Regarding claim 76, the prior art does not appear to teach that the binder further comprises iron ions. However, Lester teaches a similar protein binder composition useful to adhere together fibers, such as glass fibers, in making binder-containing composites (Lester, Abstract, paragraph 0002). Lester teaches that crosslinking agents include amines (Id., paragraphs 0041-0045). Lester teaches the inclusion of catalysts to increase the rate of crosslinking reactions, wherein exemplary catalysts include metallic cations such as iron (Id., paragraph 0051).
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 composite product of the prior art combination, wherein the binder additionally includes iron ions, as taught by Lester, motivated by the desire of forming a conventional composite product of the prior art combination having the desired controlled rate of crosslinking.
Claims 82 and 83 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2007/0027283 to Swift in view of US Pub. No. 2011/0200814 to Hernandez-Torres and “When quinones meet amino acids: chemical, physical and biological consequences” to Bittner.
Regarding claims 82 and 83, Swift teaches binders to produce or promote cohesion in non or loosely assembled matter, wherein the binders are formaldehyde free for use with fiberglass (Swift, Abstract, paragraphs 0008, 0049, 0103). Swift teaches that proteins including collagen, casein, and gelatin, react with a reducing sugar or non-carbohydrate carbonyl component, such as a quinone as a product of a Maillard reaction (Swift, Fig. 1). Swift teaches that the binder made from the reactants of a Maillard reaction is cured (Id., paragraphs 0015-0020).
Swift does not appear to teach the claimed quinone. However, Hernandez-Torres teaches biocides for curable bio-based binder compositions in a fiberglass insulation manufacturing process (Hernandez-Torres, Abstract, paragraph 0012). Hernandez-Torres teaches controlling the growth of unwanted organisms in the process of manufacturing mineral fiber products (Id., paragraph 0008). Hernandez-Torres teaches that the binder composition includes at least one protein-containing biomass (Id., paragraph 0052) and a crosslinking agent (Id., paragraph 0054). Hernandez-Torres teaches that the presence of the nutrient used in the binder composition along with water, dust, and other potential carbon sources may support the growth and proliferation of organisms, causing disease, malodorous fragrance, discoloration, and/or deterioration of the binder composition, insulation product, or washwater (Id., paragraphs 0061-0062). Hernandez-Torres teaches that the biocides are agents that reduce, kill or suppress the growth of unwanted organisms (Id., paragraphs 0060-0064).
Additionally, Bittner teaches that the formation and activity of quinone-amino acid conjugates influences physical and physiological phenomena including germicidal activity and cytotoxicity (Bittner, Summary). Bittner teaches that the mechanism of the germicidal activity of quinones as compared with that of phenols was previously studied, as quinone reacts with casein or protein, wherein quinones include benzoquinone, naphthoquinone and anthraquinone (Id., pages 218-219).
Swift teaches a binder for fibrous insulation comprising a protein and a quinone. Hernandez-Torrez teaches a similar binder for fibrous insulation, comprising a protein and a crosslinker, wherein a biocide is known to be beneficial to prevent the growth and proliferation of organisms, causing disease, malodorous fragrance, discoloration, and/or deterioration of the binder composition and insulation product. Bittner teaches that protein and quinone conjugates, such as benzoquinone, naphthoquinone and anthraquinone, were known in the art to influence physical and physiological phenomena including germicidal activity and cytotoxicity.
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 mineral fiber product of Swift, wherein the quinone is benzoquinone, naphthoquinone or anthraquinone, such as claimed, as taught by Bittner, motivated by the desire of forming a conventional mineral fiber product comprising a crosslinking agent known in the art as being predictably suitable for crosslinking proteins while additionally providing beneficial germicidal and cytotoxicity properties, as taught by Hernandez-Torrez.
Response to Arguments
Applicant's arguments filed October 30, 2025, have been fully considered but they are not persuasive. Applicant argues that while Chen discloses the use of protein from plant and animal sources, the Examples of Chen exclusively use soy flour, which strong suggests to one of ordinary skill in the art that plant-based protein is the most suitable protein for use in binder compositions. Examiner respectfully disagrees. The use of references is not limited to what is described as the inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. MPEP 2123.
As set forth above, Williamson teaches that illustrative additional or second binder compositions can include protein, wherein suitable proteins include corn flour, soy flour, wheat flour, spray dried blood, or any combination or mixture thereof. Chen similarly teaches a bio-based aqueous binder, including a protein-containing biomass, wherein the biomass is natural in origin and may be derived from plant or animal sources, such as soy and kidney beans, or may come from animal sources such as eggs, blood, meat, and fish. Therefore, based on the teachings of Chen, it is reasonable for one of ordinary skill to expect that using a protein binder includes suitable sources of the protein, including plant or animal sources. Applicants have not provided evidence to the contrary.
Applicants argue that in the Declaration of December 12, 2024, the binder systems disclose in the Examples of Chen are unsuitable for binding mineral wool fibers. The Declaration recites that the binder formulations based on soybean flour do not yield suitable binders for mineral wool applications, whereas the binder using protein of an animal source has higher mechanical properties.
Regarding Applicants’ arguments, Examiner respectfully disagrees. Chen teaches a bio-based aqueous binder for fiberglass insulation materials, wherein the suitable protein may be derived from plant or animal sources. Therefore, Chen establishes to one of ordinary skill that the protein source may be plant or animal for use as a binder in fiberglass insulation materials.
Additionally, although the Declaration argues against using plant proteins for binding mineral wool fibers, Applicants’ specification at pages 8 and 9 teaches the suitability of proteins from vegetable sources, including soybeans, which is now discouraged by the Declarant. Such arguments entail that the Declarant, who is also the inventor of the current application, argues that Applicants’ invention is not enabled or suitable for its intended purpose, as disclosed in Applicants’ specification. Applicants are invited to clarify the conclusion reached in the Declaration.
Regarding claim 74, Applicants argue that Williamson does not provide any information regarding the percentage of protein in the binder composition. Examiner respectfully disagrees. As set forth above, the prior art combination teaches that the binder composition can include the tannin in an amount ranging from a low of about 60 wt% to about 70 wt% having about 70 wt% to about 80 wt% active phenolic ingredients. Williamson teaches that the second binder may comprise protein having about 20-95% protein, and that the second binder composition in the binder system can range from about 0.1 wt% to about 99 wt%. Therefore, the prior art establishes both the amount of the second binder and the amount of protein in the second binder, thereby rendering the amount of protein obvious to one of ordinary skill.
Regarding claim 77, Applicants argue that Williamson fails to teach or suggest an advantage of employing a high pH of above 9, as curing of the binder is strongly accelerated under alkaline conditions. Examiner respectfully disagrees. The prior art combination teaches that the binder composition may have a pH ranging from about 4 to about 14, including a high of about 9, about 10, about 11, about 12, about 13, or about 14 (Williamson, paragraph 0038), thereby rendering obvious the claimed pH. Additionally, similar to Applicants’ reasoning, Williamson expressly teaches that the pH of the binder composition can be used to adjust, control, alter, or otherwise affect the amount of time required for the binder composition to at least partially cure (Id.). Since the prior art combination teaches modifying the pH to predictably alter the cure time, the prior art combination renders obvious the claimed invention.
Regarding claim 78, Applicants argue that Williamson fails to disclose the use of amines as crosslinkers. Examiner respectfully disagrees. As set forth above, the prior art combination teaches that the composition may include amines.
Regarding claims 79 and 80, Applicants argue that the experiments performed by Williamson disregarding the curing and mechanical strength of the cured binder. Additionally, Applicants argue that the Declaration of December 12, 2024, shows that curing the binder at low temperatures result in physical properties and mechanical strength that is not suitable for use in mineral wool products.
Regarding Applicants’ arguments, Examiner respectfully disagrees. The claimed invention recites a curing at a temperature from 5ºC to 95ºC and curing under pressure. Note that the claims are not dependent from each other. As set forth above, the prior art combination teaches applying heat and/or pressure to accelerate the curing of the binder, wherein the binder composition can cure at temperatures from a low of about 20ºC to a high of about 150ºC, which substantially overlaps with the claimed range. Therefore, the prior art renders obvious the claimed temperature and pressure.
Regarding the Declaration, it is noted that the invention of the prior art is not limited to or defined by only those embodiments disclosed in the Examples. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 424 (CCPA 1971). As set forth above, the prior art renders obvious the claimed range, although as shown in the Table provided by Declarant, Example C does suggest a curing temperature within the claimed range.
Regarding claims 75 and 76, Applicants reiterate that the prior art does not cure the deficiencies of the prior art. Examiner respectfully disagrees. As set forth above, the prior art renders obvious the claimed invention.
Regarding claim 76, Applicants argue that Lester does not mention the use of any phenol containing compound. Examiner respectfully disagrees. Lester is not relied on to the inclusion of a phenol. Additionally, Lester teaches as similar crosslinked protein for a similar binding purpose, wherein the inclusion of metallic cation catalysts, such as iron, increases the rate of crosslinking reactions.
Regarding claims 82 and 83, Applicants argue that Bittner relates to activities that occur when quinones encounter amino acids in living systems, and that Bittner is non-analogous art. Examiner respectfully disagrees. As set forth above, Swift teaches binders for use with fiberglass including proteins reacting with a quinone, which is cured. Hernandez-Torrez teaches a similar binder for fibrous insulation, comprising a protein and a crosslinker, wherein a biocide is known to be beneficial to prevent the growth and proliferation of organisms, causing disease, malodorous fragrance, discoloration, and/or deterioration of the binder composition and insulation product. Bittner teaches that protein and quinone conjugates, such as benzoquinone, naphthoquinone and anthraquinone, were known in the art to influence physical and physiological phenomena including germicidal activity and cytotoxicity.
Based on the combined teachings of the prior art, it would have been obvious to one of ordinary skill to make the mineral fiber product of Swift, wherein the quinone is benzoquinone, naphthoquinone or anthraquinone, such as claimed, as taught by Bittner, to form a mineral fiber product comprising a crosslinking agent known in the art as being predictably suitable for crosslinking proteins while additionally providing beneficial germicidal and cytotoxicity properties, as taught by Hernandez-Torrez. Applicants have not provided evidence to the contrary.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786