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 .
This Office action is in response to the amendment filed 8/25/2026. Claims 1, 17, 20. 23-27 and 30 are amended; claims 2-12, 15, and 19 are cancelled; and claim 16 is withdrawn from consideration as being drawn to non-elected invention. Accordingly, claims 1, 13-14, 16-18, 20-30 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, 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 or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, 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.
Claim 30 is 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 was not described in the specification in such a way as to reasonably convey to 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. Claim 30 recites “wherein a weight ratio of the maltitol to the citric acid is 0.818 : 1 to 1 : 1.083” and does not find support either in the general disclosure or examples in Table 1 as alleged in the amendment filed 8/25/2026. Specifically, all inventive examples (examples 1-2 and 6-8) include maltitol and citric acid in amounts of 48 parts by weight and 52 parts by weight, respectively.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 13-14, 16-18, and 20-30 are rejected under 35 U.S.C. 103 as being unpatentable over Jaffrennou (US 2011/0210280 A1) in view of Hjelmgaard et al (US 2016/0177057 A1) and Brehmer et al (EP 2 093 266 A1).
Regarding claims 1, 18, 20, and 23, Jaffrennou discloses a method comprising applying sizing composition to mineral fibers (paragraph 0068) which reads on applying binding composition to mineral fibers in present claim 1. It is subsequently treated at a temperature which makes possible crosslinking of the size and formation of an infusible binder (i.e., reads on the thermal curing of the nonvolatile residue of the composition in present claim 1, and mineral fibers bonded by an organic binder in present claim 1). The crosslinking takes place at a temperature greater than or equal to 1100C (paragraph 0069). Sizing compositions to be projected onto the mineral wool is generally provided in the form of an aqueous solution (paragraph 0007) (i.e., reads on the aqueous binding composition in present claim 1) and has a solids content of 40% (foot notes of Table 1). It is the Office’s position that evaporation of solvent (i.e., water) of the aqueous binding composition to obtain a nonvolatile residue is implicit in the thermal curing at temperature above the boiling point of water (i.e., 1000C). See example 1 (Table 1), wherein the sizing composition comprises 58 parts by weight of hydrogenated sugar (i.e., reads on the amount of maltitol relative to a weight of mixture consisting of maltitol and polyfunctional crosslinking agent in present claim 1), 42 parts by weight of citric acid (i.e., reads on the polyfunctional crosslinking agent comprising a citric acid as a polycarboxylic organic acid in present claims 1, 20 and 23) and sodium hypophosphite (i.e., a catalyst, see paragraph 0055). Examples of hydrogenated sugars include maltitol (paragraph 0037) which reads on maltitol in present claims 1. The catalyst represents up to 20% of total weight of hydrogenated saccharides, and polyfunctional crosslinking agent (paragraph 0073) which overlaps with the amount of sodium hypophosphite in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It is noted that the composition is free of reducing sugars (i.e., reads on at most 10% by weight of reducing sugar). Examples of mineral fibers include glass or rock wool (paragraph 0071) which read on mineral fibers in present claim 1. The sizing composition comprises hydrogenated sugar, citric acid (polyfunctional crosslinking agent) and catalyst (sodium hypophosphite) and has a solids content of 40% (Table 1) which reads on hydrogenated sugar, polyfunctional crosslinking agent, and catalyst making at least 70% and 80% of the solids of the binding composition in present claims 1 and 18, respectively).
Jaffrennou fails to disclose a composition comprising hypophosphorus acid and differs with respect to solids content of binding composition.
However, regarding composition comprising hypophosphorus acid, Hjelmgaard et al in the same field of endeavor teach an aqueous binder composition for mineral fiber which comprises one or more carbohydrates (abstract). By including hypophosphorus acid in the binder composition, the temperature of curing onset and curing endset can be strongly reduced (paragraphs 0096 and 0107). Therefore, in light of the teachings in Hjelmgaard et al, it would have been obvious to one skilled in art prior to the filing of present application, to include hypophosphorus acid, of Hjelmgaard et al, in the sizing composition, of Jaffrennou, for above mentioned advantages.
Regarding solids content of binding composition, Brehmer et al in the same field of endeavor teach an aqueous binder composition comprising a reaction product of polyhydroxy compound and polycarboxylic acid (abstract). The aqueous binder composition may be applied to mineral fibers by conventional techniques that include spraying (paragraph 0091). The aqueous binder composition preferably has a solids content of 1 to 20 wt% in order to achieve adequate application properties, and in particular spraying properties, the viscosity of the binder composition may be adjusted (paragraph 0089). Therefore, in light of the teachings in Brehmer et al in the same field of endeavor, it would have been obvious to one skilled in art prior to the filing of present application, to adjust the solids content of aqueous binder composition, of Jaffrennou in view Hjelmgaard et al, in overlapping ranges (such as in present claims 1 and 18), for above mentioned advantages.
Regarding claim 13, see example 1 (Table 1) of Jaffrennou, wherein the catalyst (sodium hypophoshite) is present in amounts of 5 parts by weight based on 100 parts by weight of the hydrogenated sugar and polyfunctional crosslinking agent (i.e., citric acid). Examples of hydrogenated sugars include maltitol (paragraph 0037). The hypophosphorous acid is present in amounts of 1 to 5% by weight based on the carbohydrates (paragraph 0105 of Hjelmgaard et al).
Regarding claim 14, see example 2 and example 3 (Table 1), of Jaffrennou, wherein the composition comprises 10 parts by weight of glycerol, and 1 part by weight of silicone, respectively. Additionally, silane and oil may be present in amounts of 0 part by weight.
Regarding claim 17, examples of mineral fibers, in Jaffrennou, include rock wool (paragraph 0071).
Regarding claim 21, Jaffrennou teaches that sizing composition can comprise an acid or basic catalyst which has a role of adjusting the temperature at which crosslinking begins (paragraph 0051). The catalyst can be a phosphorus-containing compound such as phosphoric acid (paragraph 0053). Additionally, Hjelmgaard et al teach that by including hypophosphorus acid in the binder composition, the temperature of curing onset and curing endset can be strongly reduced (paragraphs 0096 and 0107). Therefore, in light of the teachings in Hjelmgaard et al and given that phosphorus containing acid catalyst may be used in crosslinking the aqueous binder composition, of Jaffrennou, to adjust the temperature at which crosslinking begins, it would have been obvious to one skilled in art prior to the filing of present application, to replace one phosphorus-based catalyst, such as sodium hyphophosphite, with another phosphorus based catalyst such as hypophosphorus acid, of Hjelmgaard et al, for providing the same functionality (i.e., adjust the curing onset temperatures), absent evidence to the contrary.
Regarding claim 22, 26, 27, 28 and 29, Hjelmgaard et al teach that by including hypophosphorus acid in the binder composition, the temperature of curing onset and curing endset can be strongly reduced (paragraphs 0096 and 0107). Examples of component “vi” include sodium hypophosphite (paragraph 0088) and hypophosphorus acid (paragraph 0096). The component “vi” is present in amounts of 1 to 8% by weight based on mass of component “i” (paragraph 0097) which is in the form of one or more carbohydrates (paragraph 0031) and obtained from sugars (paragraph 0033). See example 1, of Jaffrennou, wherein the composition comprises sodium hypophosphite in amounts of 5 parts by weight based on 100 parts by weight of total of hydrogenated sugar and polyfunctional crosslinking agent citric acid (Table 1). Therefore, in light of the teachings in Hjelmgaard et al, it would have been obvious to one skilled in art prior to the filing of present application, to include hypophosphorus acid in presently claimed amounts (such as 1 to 10 parts by weight per 100 parts by weight of maltitol and polyfunctional crosslinking agent of present claims 22, 26 and 27; 0.1 to 10 parts by weight per 100 parts by weight of maltitol and polyfunctional crosslinking agent of present claim 28; and 0.1 to 5 parts by weight per 100 parts by weight of maltitol and polyfunctional crosslinking agent of present claim 29), of Jaffrennou, for above mentioned advantages.
Regarding claims 24 and 25, examples of nonpolymeric organic polycarboxylic acid can include tartaric acid and itaconic acid (paragraph 0044).
Regarding claim 30, in addition to 10i above, Jaffrennou teach that the hydrogenated sugar represents 10 to 90% of the weight of the mixture composed of hydrogenated sugar and the polyfunctional crosslinking agent (paragraph 0050) which overlaps with the ratio of maltitol, a hydrogenated sugar, and citric acid. The polyfunctional crosslinking agent is chosen from organic polycarboxylic acid (paragraph 0040) such as citric acid (paragraph 0044). Examples of hydrogenated sugar include maltitol (paragraph 0037).
Response to Arguments
The rejections under 35 U.S.C. 112(a), 112(b) and 103 as set forth in paragraphs 5, 7, and 12-13, of Office action mailed 2/25/2026, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 12 below).
Applicant's arguments, filed 8/25/2026, have been fully considered but they are not persuasive. Specifically, applicant argues (A) Hjelmgaard appears to require sulfamic acid, sulfamate or sulfate and describes examples A to G lacking such components as “reference binders”. The Office action treats the removal of a sulfamic acid, sulfamate or sulfate from Hjelmgaard’s catalyst as predictable; (B) present invention provides data showing unexpected results with respect to improvements in tensile strength before aging, after autoclave aging, after Florida aging, bending after “Florida” aging; and water absorption. These examples span the claimed field rather than a single point: hypophosphurs acid at 1, 3 and 5 parts per 10 parts by weight of maltitol and citric acid. The experimental results show a dose dependence-response relationship attributable to hypophosphorus acid rather than any incidental formulation differences.
With respect to (A), as stated earlier, primary reference of Jaffrennou teaches a process of applying sizing composition to mineral fibers (paragraph 0068) which is subsequently treated at a temperature greater than or equal to 110°C to crosslink the sizing composition (paragraph 0069). Sizing composition in example 1 comprises hydrogenated sugar, citric acid, and sodium hypophosphite. Graham V. Deere analysis was done and secondary reference of Hjelmgaard et al in the same field of endeavor is only used for its teaching that inclusion of hypophosphorus acid in sizing compositions results in the temperature of curing onset and curing endset to be strongly reduced.
With respect to (B), as stated earlier, it is the Office's position that the showing of unexpected results with respect to tensile strength is not commensurate with scope of claims. Specifically, it is only with a sizing composition comprising 48 parts by weight of Maltitol, 52 parts by weight of citric acid in combination with hypophosphorus acid in amounts of 1, 3, 5 parts by weight.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
