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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 C.F.R. 1.114 and prosecution in this application has been reopened pursuant to 37 C.F.R. 1.114. Applicant’s submission filed on January 7, 2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 7, 2026 is in compliance with the provisions of 37 C.F.R. 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 38-43 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 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 38 recites a “binder composition that cures to a pH above 7” in line 1. Support for this limitation is not found in the Specification, particularly in the parent application, as originally filed. The Examiner notes the fact that the claim limitation was “originally” filed in the present child application; however, the Examiner is avoiding this analysis as it would reset the effective filing date of the present application such that the publication of the parent application would be valid prior art. The present Specification notes that “the inventive binders described herein were effective at binding mineral wool to form an insulative batt at a pH of 1 to 4.5.” Paragraph [0023]. However, no further disclosure is provided as it relates to curing in the range of a pH above 7. The Examiner notes that Table 1 of the Specification provides examples wherein the binder is cured in the range of about 8 to about 9.8. As such, Claim 40 would likely find written description support if it were incorporated into Claim 38 and amended to include the phrase “about” before the numerical figures. However, there is no support for the ranges “above 7” in Claim 38, “8 to 10” in Claim 39, and “8 to 9” in Claims 41 and 43.
Claim Rejections - 35 USC § 103
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 25-28, 32-35, and 37-42 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,539,077 to Floyd (“Floyd”).
With regard to Claim 25-28 and 33-35, Floyd discloses an aqueous resin composition for use as a binder in a nonwoven fabric that comprises a polyol. See, e.g., Abstract, Examples, entire document. Floyd discloses that a preferred polyol is polyvinyl alcohol, column 2, lines 27-29, which is provided in a preferred amount of 15% to 50% by dry basis weight of the resin combination. Column 2, lines 31-34. Floyd also discloses using a metal salt, such as aluminum chloride, column 2, lines 39-43, in the composition as a catalyst, which is provided in a preferred amount of 1 to 10% by weight of a reaction product. Column 2, lines 43-47 and Table 2. As such, if the polyol is present in an amount of 50% by weight of the resin composition, and the catalyst is present in an amount of 6% by weight of the reaction product, which would be 50% by weight of the resin composition, then the ratio of metal catalyst to polyol is about 1:9. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456 (CCPA 1955). Floyd further discloses that polyvinyl alcohol can be fully hydrolyzed, see, e.g., Example IV, which satisfies the limitation of at least 50%, at least 90%, and at least 98% hydrolyzed. With regard to Claims 38-41, Floyd teaches that the sodium hydroxide can be added to the binder composition so that it cures at around a pH of 9 or 8.4. Examples 1 and 5. With regard to Claims 32, 37, and 42, Floyd teaches that the binder composition is cured, see Examples, which would inherently form a polymeric network that acts as a binder. It is the position of the Office that the metal salt would still be contained in the binder even after curing, and the present claim language does not require any type of covalent bonding of the metal salt with the network.
Claims 25-28, 30, and 33, are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2006/0252855 to Pisanova et al. (“Pisanova”) in view of U.S. Patent Application Publication No. 2013/0023174 to Quinn (“Quinn”).
With regard to Claims 25-28 and 33, Pisanova discloses a formaldehyde-free curable aqueous composition containing polyvinyl alcohol, a cross-linking agent, and a catalyst, wherein the composition is used as a binder in nonwoven products, such as fiberglass insulation. See, e.g., Abstract, entire document. Pisanova teaches that the polyvinyl alcohol in the binder composition can be 88.5% hydrolyzed. See, e.g., paragraph [0068] (listing CELVOL 205S as the polyvinyl alcohol used, shown to have a hydrolysis level of 88.5% in paragraph [0065]). Pisanova discloses that the catalyst used in the curable aqueous compositions can comprise a metal salt, such as aluminum chloride or aluminum sulphate. Paragraph [0048]. However, Pisanova does not disclose the weight ratio of the metal salt to the polyvinyl alcohol. Quinn is also related to fibrous insulation products that include a binder composition, wherein the binder composition comprises a polyol, such as polyvinyl alcohol, a cross-linking agent, and a catalyst. See, e.g., Abstract, paragraph [0033], entire document. Quinn also teaches that the catalyst used in the binder composition can comprise a metal salt. Paragraph [0054]. Quinn teaches that the amount of catalyst can be present in an amount of 0.5% to about 10% by weight, or preferably in an amount of 3% to 6% by weight, based on the total solids in the binder composition. Paragraph [0055]. As to the amount of polyvinyl alcohol in the binder composition, Quinn teaches that the preferred amount of polyol is present in an amount of 20% to 99% by weight of the total solids. Paragraph [0034]. As such, Quinn teaches that a weight ratio of metal salt catalyst to polyol in such binder compositions falls within the claimed ranges of 1:19 to 1:1 or 1:9 to 1:1. For example, a catalyst amount of 5% by weight based upon the total solids and a polyol amount of 20% by weight based on the total solids would provide metal salt to polyol ratio of 1:4. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide the catalyst metal salt in a ratio amount of 1:19 to 1:1, or 1:9 to 1:1, compared to the polyol in the binder composition disclosed by Pisanova, in order to provide a suitable catalyst amount for the binder to enable proper polymerization and cross-linking, as shown to be known in the art by Quinn. With regard to Claim 30, Pisanova discloses the polyvinyl alcohol has a viscosity of 2.5 to 5.0 centipoise. Paragraph [0039].
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Pisanova in view of Quinn as applied to Claim 25 above, and further in view of U.S. Patent Application Publication No. 2004/0033747 to Miller et al. (“Miller”).
With regard to Claim 30, Pisanova does not disclose using aluminum nitrate as a catalyst. Miller is also related to aqueous formaldehyde-free binder compositions for use in fibrous insulation materials. See, e.g., Abstract, entire document. Miller teaches that suitable metal salts to accelerate a reaction include both aluminum chloride and aluminum nitrate. Paragraph [0036]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize aluminum nitrate as a catalyst in the reaction disclosed by Pisanova because Miller teaches that aluminum nitrate is a suitable and predictable substitution for aluminum chloride in a similar reaction, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 277 F.2d 197 (CCPA 1960).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 25-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,192,986 (“the ‘986 Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘986 Patent also claims a binder composition comprising water, a metal salt, and a polyol in the same relative amounts, wherein the polyol possess a similar degree of hydrolyzation.
Response to Arguments
The IDS filed on January 7, 2026 does not provide sufficient evidence to overcome the Section 112 and 103 rejections, or the double patenting rejections, set forth above, which were presented to the Patent Trial and Appeal Board during an appeal process, and affirmed by the Board on November 7, 2025. As such, the rejections are maintained in their entirety.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY R PIERCE whose telephone number is (571)270-1787. The examiner can normally be reached Monday - Friday, 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla D. McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789