DETAILED ACTION
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.
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 Interpretation
In claim 1, line 7, the Examiner interprets “the furnace” as referencing “an electric furnace” in line 3 of claim 1.
In claims 5-6, the Examiner interprets “alu-dross” in the claims as any waste material from the aluminum processing industry.
In claim 12, the Examiner interprets the wt% range of TiO2 up to 2 as the range of 0 up to 2, MgO up to 15, as the range of 0 up to 15, P2O5 up to 3 as the range of 0 up to 3, MnO up to 3 as 0 up to 3, and B2O3 up to 3 as 0 up to 3.
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.
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.
Claim(s) 1-3, 5, 12-13 and 15-16 is/are rejected under 35 U.S.C. 103 as obvious over Christiansen et al. (US 6,698,245 – hereinafter Christiansen) in view of Grove-Rasumussen et al. (WO2012/140173A1 – hereinafter Grove) and Yokota (US 2020/0140312 – hereinafter Yokota).
Regarding claims 1, 5, and 16, Christensen (Col. 1, lines 5-10) discloses the invention relates to methods of making man-made vitreous fibers (MMVF). Christensen discloses MMV fibers are made by melting mineral solids and thereby forming a mineral melt, and fiberizing the melt by, usually, a centrifugal fiberizing process. Christensen (Col. 2, lines 27-29) discloses the fibers made in the invention generally contain at least 1% and often at least 3% or more measures as FeO and (Col. 3, lines 3-4) comprising FeO (iron oxide) including (Fe2O3) at least 2% or 5%, not more than 15%. This provides for MMVF fibers comprising at least 3 wt% iron oxides, which overlaps Applicant’s claimed range of at least 3 wt% iron oxides.
Christensen (Col. 5, lines 47-52 and Fig. 1) discloses melting of mineral solids including low halogen mineral materials and high halogen mineral waste in a furnace, premixing of the materials, and charging them as a mixture to a furnace. Christensen (Col. 3, lines 47 to Col. 4, line 30) discloses high halogen mineral wastes and other suitable wastes which contain high levels of aluminum, including metallic aluminum, as well as halogen. The mixed material formed by premixing corresponds to the mineral raw materials, the low halogen mineral materials in the mixed material correspond to the other mineral component, and the high halogen mineral wastes and other suitable wastes in the mixed material correspond to the material that comprises metallic aluminum. Christensen (Col. 5, lines 61-62) discloses any of the typical furnaces used for forming MMVF melts and (Col. 6, lines 4-10) discloses using a furnace, such as molybdenum electrode tank furnaces. Additionally, Christensen (Col. 2, line 64 to Col. 3, line 14) discloses the content of oxides of the fiber and the melt from which the fiber is formed includes FeO (i.e. iron oxides) (including Fe2O3) as ranging from 2 to 15 wt%.
Based on the disclosures by Christensen above, Christensen teaches a process of making MMVF including the steps of: providing an electric furnace having molybdenum electrodes, providing mineral raw material (i.e. mixed material formed by premixing) wherein the mineral raw material (i.e. mixed material) comprises (a) material that comprises metallic aluminum, such as high halogen waste including metallic aluminum as well as halogen, and (b) other mineral components, such as low halogen mineral materials, charging (i.e. introducing) the mineral raw material into the furnace, melting the mineral raw material to form a mineral melt, and fiberizing (i.e. forming) MMVF from the mineral melt. Additionally, as stated above, Christensen (Col. 2, lines 27-29) discloses the fibers made in the invention generally contain at least 1% and often at least 3% or more measures as FeO and (Col. 3, lines 3-4) comprising FeO (iron oxide) including (Fe2O3) at least 2% or 5%, not more than 15%. This provides for MMVF fibers comprising at least 3 wt% iron oxides, which overlaps Applicant’s claimed range of at least 3 wt% iron oxides determined as Fe2O3, as claimed.
Regarding the metallic aluminum wt%, Christensen (Col. 3, lines 47 to Col. 4, line 30) also discloses high halogen mineral wastes include high halogen fly ash, ladle slag, converter slag, and aluminum slags, e.g. wastes from the secondary production of aluminum that are generally described as aluminum dross or aluminum oxide dross. Per the Examiner’s interpretation of alu-dross (see claim interpretation above), all of the high halogen mineral wastes listed above are interpreted as alu-dross, as claimed in claim 5. Additionally, Christensen discloses particular materials of interest in reference to high halogen mineral wastes comprising 0.5 to 10 wt% of metallic aluminum and Christensen discloses the particular material of interest contain including aluminum oxide ranging from 50 to 90 wt%.
Additionally, Christensen (Col. 3, lines 26-27) teaches at least 4/5ths of the total mineral charge, which is interpreted as the mineral raw material (i.e. mixed materials) is a low halogen material including waste and virgin material. Christensen (Col. 3, lines 40-46) also discloses the percentage of high halogen material in the raw material mineral (i.e. mixed material), which includes material that comprises metallic aluminum, in the total mineral solids is at least 2%, usually at least 5%, and should be no more than 20%, because higher values can be difficult simultaneously achieve the desired chemical analysis of the fibers and good fiberization performance. With the range of 0.5 to 10 wt% metallic aluminum in the high halogen waste including aluminum and halogen, and the limitation of at least 2% to a maximum of 20% in the raw mineral material, a person having ordinary skill in the art would calculate the range of metallic aluminum in the mineral raw material ranges from 0.01wt% to 2 wt%. (Calculated as follows: (0.5 wt% (0.005) of metallic aluminum with 2 wt% (0.02) in the mineral solids – (0.005*0.02)*100=0.01 wt%) to 2wt% (10 wt% (0.10) of metallic aluminum with 20 wt% (0.20) in the mineral solids – (0.10*0.20)*100=2 wt%). The range of 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum encompasses Applicant’s claimed range of 0.1 to 0.5 wt%.
Christensen fails to disclose details of the iron oxide in the MMVF, such as the MMVF produced has a ratio of Fe(II):Fe(III) ratio of above 2. However, Grove (pg. 8, lines 26-31) teaches iron in the form of Fe(2+) in the melt improves the fire resistance of the resulting MMVF and (pg. 8) discloses the adjustment of the redox state using a reducing environment which reduces Fe2O3 (i.e. Fe(III) to FeO (i.e. Fe(II)) and generates a ratio of Fe(2+)/Fe(total) such that the ratio is preferably > 85%.
Additionally Yokota ([0010], [0018]-[0019] and [0076]) teaches adjusting the redox state of iron by the addition of metal aluminum or carbon in raw materials for a melt and the content of metal aluminum correlates to the amount of iron oxide content.
Both Grove and Yokota teach furnace conditions, such as reducing conditions, that adjust the redox state of iron. Grove and Christensen teach producing mineral fibers comprising iron oxides. Christensen teaches producing mineral fibers comprising metallic aluminum from aluminum containing materials, including aluminum dross. Accordingly, based on the additional teachings by Grove and Yokota, it would be obvious to a person having ordinary skill in the art, in the method of Christensen adjusting the redox state such that the ratio of Fe(2+)/Fe(total) to greater than 85% to improve the fire resistance of the resulting MMVF by creating reducing conditions in the furnace, such as with metallic aluminum from the material that comprises metallic aluminum since the metallic aluminum affects the reducing conditions in the furnace. Additionally, since the metallic aluminum affects the reducing conditions in the furnace, as taught by Yokota, it would be obvious to person having ordinary skill in the art, in the modified method of Christensen to improve the fire resistance of the mineral fiber with the reducing conditions optimized within the range of 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum, as taught by Christensen. The optimization of metallic aluminum content within the range 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum, as taught by the modified method of Christensen, would include values where the mineral raw material comprises 0.1 to 0.5 wt% metallic aluminum, as claimed.
Additionally, with the modified method of Christensen having an MMVF with improved fire resistance with Fe(2+) greater than 85%, it would be obvious to a person having ordinary skill in the art, the ratio of Fe(II):Fe(III) is greater than 2. Specifically, if it is assumed with greater than 85% Fe(2+), there is approximately 15% Fe(3+), which provides for a ratio of at least 5.67, which is within Applicant’s claimed range of above 2 as claimed in claim 1, and within Applicant’s claimed range of above 3, as claimed in claim 16.
Regarding claim 2, as discussed in the rejection of claim 1 above, Christensen discloses particular materials of interest (corresponding to the material that comprises metallic aluminum), such as high halogen waste including aluminum and halogen including waste comprising 0.5 to 10 wt% of metallic aluminum. Therefore, based on the particular materials of interest that teaches high halogen waste including aluminum comprising 0.5 to 10wt% of metallic aluminum is suitable, it would be obvious to a person having ordinary skill in the art, in the modified method of Christensen the waste comprising metallic aluminum comprising metallic aluminum ranging from 0.5 to 10 wt%, which is the same range, as claimed in claim 2.
Regarding claim 3, as discussed in the rejection of claim 1 above, Christensen discloses material of interest (corresponding to a material that comprises metallic aluminum), such as high halogen waste including aluminum and halogen, including waste including aluminum oxide ranging from 50 to 90wt%. Accordingly, based on the teachings of Christensen, it would be obvious to a person having ordinary skill in the art, the high halogen waste comprising the metallic aluminum may contain 50-90 wt% aluminum oxide, since this is an acceptable aluminum oxide percent taught by Christensen.
Regarding claim 12, as discussed in the rejection of claim 1 above, Christensen (Col. 2, line 64 to Col. 3, line 14) discloses the content of oxides of the fiber and the melt from which the fiber is formed includes FeO (i.e. iron oxides) (including Fe2O3) as ranging from 2 to 15 wt%. Christensen (Col. 2, lines 64 to Col. 3, line 14) also discloses details of the content of oxides of the fiber and the melt from which the fiber is formed, as detailed in the table below.
Content of Oxides
Oxide
Christensen
Weight%
Claimed
Weight%
SiO2
30-51
35-50
Al2O3
14-35
12-30
TiO2
0-6
up to 2 (interpreted as 0-2)
Fe2O3
2-15
3 to 12
CaO
8-30
5 to 30
MgO
2-25
up to 15 (interpreted as 0-15)
Na2O
0-10 - Listed as Na2O+K2O
0 to 15
K2O
0-10 - Listed as Na2O+K2O
0-15
P2O5
0-8
up to 3
MnO
Not listed
up to 3
B2O3
0-5
up to 3
Accordingly, based on the additional disclosure by Christensen above, it would be obvious to a person having ordinary skill in the art, the disclosed composition provides for Na2O or K2O as including 0-10% and 0% MnO. Therefore, based on the composition disclosed by Christensen (see Table above), it would be obvious to a person having ordinary skill in the art, the modified method of Christensen provides for an MMVF having a content of oxides in wt% that provides for ranges that encompass or overlap Applicant’s claimed ranges.
Regarding claim 13, as discussed in the rejection of claim 1 above, Christensen (Col. 2, line 64 to Col. 3, line 14) discloses the content of oxides of the fiber and the melt from which the fiber is formed includes FeO (i.e. iron oxides) (including Fe2O3) as ranging from 2 to 15 wt%. Christensen (Col. 2, lines 64 to Col. 3, line 14) also discloses details of the content of oxides of the fiber and the melt from which the fiber is formed, as detailed in the table below.
Content of Oxides
Oxide
Christensen
Weight%
Claimed
Weight%
SiO2
30-51
39-55
Al2O3
14-35
16-27
TiO2
0-6
0-2
Fe2O3
2-15
3-15
CaO
8-30
6-20
MgO
2-25
1-5
Na2O
Listed as Na2O+K2O 0-10
0-15
K2O
Listed as Na2O+K2O 0-10
0-15
R2O(Na2O+K2O)
0-10
10-14.7
P2O5
0-8
0-3
B2O3
0-5
0-2
Accordingly, based on the disclosure by Christensen above, the it would be obvious to a person having ordinary skill in the art, the disclosed composition provides for K2O as including 0-10% K2O. Therefore, based on the composition disclosed by Christensen (see Table above), it would be obvious to a person having ordinary skill in the art, the modified method of Christensen provides for an MMVF having a content of oxides in wt% that provides for ranges that encompass or overlap Applicant’s claimed ranges.
Regarding claim 15, Christensen fails to disclose the process further comprising consolidating the MMVF to from a consolidated product comprising MMVF. However, Grove (pgs. 12-13) discloses the fibers resulting from the spinning cut preferably collected on a conveyor belt and binder applied and cured, and then consolidated by compression to form a product. Therefore, based on the additional teachings by Grove, it would be obvious to a person having ordinary skill in the art, the MMVF formed by the modified method of Christensen could be consolidated into a product, as claimed, by collecting the fibers on a conveyor belt, applying and curing binder, and then consolidated to form a product.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Christiansen et al. (US 6,698,245 – hereinafter Christiansen) in view of Grove-Rasumussen et al. (WO2012/140173A1 – hereinafter Grove) and Yokota (US 2020/0140312 – hereinafter Yokota) as applied to claim 1 above, and further in view of (WO99/28250 – hereinafter Jensen).
Regarding claims 4 and 6, as discussed in the rejection of claim 1 above, Christensen discloses, per the Examiner’s interpretation of alu-dross (see claim interpretation above), wastes listed above having metallic aluminum are interpreted as alu-dross, as claimed in claim 6 and Christensen (Col. 3, lines 40-46) further discloses the percentage of high halogen material in the raw material mineral (corresponding to (a) the material that comprises metallic aluminum), in the total mineral solids is at least 2%, usually at least 5%, and should be no more than 20%, which overlaps Applicant’s claimed range of wherein the material that comprises metallic aluminum is alu-dross and is from 5 to 30 wt% of the mineral raw material, as claimed in claim 6. Christensen (Col. 6, lines 37-43) also discloses the high halogen waste (corresponding to (a) the material that comprises metallic aluminum) can be added as a powder in particle size for instance in the range of 0.1 to 2 mm and discloses the high halogen waste in granular form. Christiansen fails to explicitly state wherein the material that comprises metallic aluminum having 90 wt% of the particles smaller than 1 mm, as claimed in claim 4. However, Jensen (pgs. 5-6) discloses waste materials comprising metallic aluminum, aluminum-rich powder as crushed alu-dross, and the particle size of the waste is usually below 5 mm, preferably below 1 or 2 mm. With the disclosure that the particle size can be preferably below 1 mm, it would be obvious to a person having ordinary skill in the art, the material that comprises metallic aluminum, such as high halogen waste including aluminum and halogen, wherein all the particles are preferably smaller than 1 mm, and therefore, this provides for 90 wt% of the particles are smaller than 1 mm, as claimed in claim 4.
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.
The Examiner notes that App no. 17/796,630 has the same effective filing date as the current application (17/796,588). With the same effective filing date, it is assumed the applications have approximately the same patent term filing date. (See MPEP 804 I.B.1.(b)(ii) below).
(ii) Application under examination has the same patent term filing date
If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.
The Examiner notes, in pg. 12 of the Remarks directed towards the ODP rejection over Application No. 17/796,626 filed Feb. 4, 2026. However, the amendment to claim 1 in the current application 17/796,588, filed Feb. 4, 2026, is sufficient for the Examiner to withdraw the provisional rejection on the ground of nonstatutory double patenting of claims 1, 7, 9, 10, and 12-16 over claims 1-2, 6-7, 10-11, and 13 over copending Application No. 17/796,626 in view of Gioia.
The Examiner notes, in pg. 13 of the Remarks directed towards the ODP rejection over Application No. 17/796,630 filed Feb. 4, 2026, Applicant submits claims 1-3, 5, 7, 9, 11-12, and 14-16 are patentably distinct from claims 1, 3, 7, 9, 12, and 14-16 of copending Application No. 17/796,630 (reference application) for at least the reasons set forth above, which is interpreted by the Examiner to reference the arguments against the prior art of Christensen, Grove, and Dube. However, the ODP rejection is based on the reference application in view of Gioia. Accordingly, it is unclear to the Examiner what reasons Applicant is referencing/arguing, since the Gioia reference is not mentioned in the arguments. Below is the modified ODP rejection based on the amendment to the claims.
Claims 1-3, 5, 7, 9, 12, and 15-16 is/are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7, 9, and 14-16 of copending Application No. 17/796,630 in view of Gioia (US 2023/0057024).
Regarding claim 1, claim 1 of the reference application claims a process for making man-made vitreous fibers (MMVF), wherein the MMVF comprise at least 3% iron oxides determined as Fe2O3 comprising providing a cyclone furnace, mineral raw material, wherein the mineral raw material comprises (a) metallic aluminum and (b) other mineral component, and melting the raw material in the cyclone furnace, thereby forming a mineral melt and forming MMVF from the mineral melt and wherein the MMVF formed have a ratio of Fe(II):Fe(III) of above 2, and wherein the mineral raw material comprises from 0.1 to 0.5 wt% metallic aluminum.
The reference Application fails to claim providing an electric furnace having molybdenum electrodes. However, Gioia (abstract and [0030]-[0032]) discloses a method for making mineral wool and it is known the melting step can be carried out in different known ways, such as by melting in a fuel-fired furnace or by electric melting and electric melting can include electrodes of molybdenum. Therefore, it would be obvious to a person having ordinary skill in the art, the providing a gas-fired furnace, such as a cyclone furnace, and melting by a cyclone furnace could be substituted by electric melting with an electric furnace having molybdenum electrodes, and therefore, it would be obvious the providing of the gas furnace and melting could be substituted by providing an electric furnace having molybdenum electrodes and melting with the electric furnace.
Regarding claim 2, in addition to claim 1 of the reference application, claim 7 of the reference application claims the alu-dross comprises 0.5 to 10 wt% metallic aluminum.
Regarding claim 3, in addition to claim 1 of the reference application, claim 7 of the reference application claims the alu-dross comprises 50 to 90 wt% aluminum oxide.
Regarding claim 5, in addition to claim 1 of the reference application, claim 3 of the reference application claims the material that comprises metallic aluminum is alu-dross.
Regarding claim 7, in addition to the claim 1 of the reference application, claim 9 claims the material that comprises metallic aluminum is a material comprising 45 to 100 wt% metallic aluminum.
Regarding claim 9, in addition to claim 1 of the reference application, claim 9 claims the material that comprises metallic aluminum is a material comprising 45 to 100 wt% metallic aluminum. Claim 9 of the reference application fails to claim a particulate. However, Gioia ([0023]) teaches recycled waste material comprising aluminum subjected to granulation. Therefore, it would be obvious to a person having ordinary skill in the art, the material is aluminum granulate.
Regarding claim 12, in addition to claim 1 of the reference application, claim 16 of the reference application claims the same composition ranges.
Regarding claim 15, in addition to claim 1 of the reference application, claim 15 of the reference application further claims the method further comprising consolidating the MMVF to form a consolidated product comprising the MMVF.
Regarding claim 16, in addition to claim 1 of the reference application, claim 14 of the reference application claims the same range for the ratio of Fe(II):Fe(III).
This is a provisional nonstatutory double patenting rejection.
Response to Arguments – Prior Art Rejections
Applicant’s arguments with respect to the claims rejected over the prior art in the final rejection dated Nov. 6, 2025 have been considered. The Examiner acknowledges Applicant’s amendment to claim 1, adding “wherein the mineral raw material comprises from 0.1 to 0.5 wt% metallic aluminum” and removal of “the metallic aluminum creates reducing conditions in the furnace such that”.
Applicant traverses the rejection of claims 1-3, 5, 11-13, 15, and 16 over Christensen in view of Grove and Dube. The Examiner notes there are new grounds of rejection, specifically Christensen in view of Grove and Yokota. Since the Christensen reference and the Grove references are present in the current rejection, the Examiner will address Applicable arguments against Christensen and Grove.
Applicant states amended claim 1 recites a method for constructing man-made vitreous fiber that includes a raw mineral material that comprises from 0.1 to 0.5 wt% metallic aluminum. Applicant makes statements that the method includes a raw material that comprises from 0.1 to 0.5 wt% aluminum and this efficient solution is a problem specific to Mo-electrode furnaces, advantageously allows for high quality fibers ensuring the claimed iron oxide ratio, while not reducing the iron all the way to undesirable Fe(0), and allows for high temperature resistant MMVF and resistance to shrinkage. Applicant then states Christensen in view of Grove and Dube fail to teach or suggest constructing MMVF using a mineral raw material that comprises from 0.1 to 0.5 wt% metallic aluminum. Applicant then makes statement about the Christensen reference and states that Christensen cannot be equated to resisting shrinkage when making iron oxide MMVF produced in Mo-electrode furnaces, and the states Christensen does not use Mo-electrode furnaces so the problem of shrinkage does not occur. This argument is not persuasive. This argument is a piecemeal analysis of the references. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is based on the combination of Christensen in view of Grove and Yokota and the knowledge of a person having ordinary skill in the art.
As stated in the rejection above, Christensen clearly teaches an embodiment where a molybdenum electrode tank furnace may be utilized in the methods for MMVF. Additionally, as stated in the rejection of claim 1 above, Christensen teaches producing mineral fibers comprising iron oxides and the mineral raw material comprises (a) material that comprises metallic aluminum. While Christensen does not discuss the redox state of melt or the resultant fibers, the rejection includes teachings from Grove and Yokota. The Grove reference (pg. 8, lines 26-31) teaches iron in the form of Fe(2+) in the melt improves the fire resistance of the resulting MMVF and (pg. 8) discloses the adjustment of the redox state by reducing Fe2O3 and the ratio of Fe(2+)/Fe(total) such that the ratio is preferably > 85%. Additionally Yokota ([0010], [0018]-[0019] and [0076]) teaches adjusting the redox state of iron in raw materials by the addition of metal aluminum or carbon and the content of metal aluminum correlates to the amount of iron oxide content.
Both Grove and Yokota teach furnace conditions, such as reducing conditions, that adjust the redox state of iron. Grove and Christensen teach producing mineral fibers comprising iron oxides. Christensen teaches producing mineral fibers comprising metallic aluminum from aluminum containing materials, including aluminum dross. Accordingly, based on the additional teachings by Grove and Yokota, it would be obvious to a person having ordinary skill in the art, in the method of Christensen adjusting the redox state such that the ratio of Fe(2+)/Fe(total) to greater than 85% to improve the fire resistance of the resulting MMVF by creating reducing conditions in the furnace, such as with metallic aluminum from the material that comprises metallic aluminum since the metallic aluminum affects the reducing conditions in the furnace. Additionally, since the metallic aluminum affects the reducing conditions in the furnace, as taught by Yokota, it would be obvious to person having ordinary skill in the art, in the modified method of Christensen to improve the fire resistance of the mineral fiber with the reducing conditions optimized within the range of 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum, as taught by Christensen. The optimization of metallic aluminum content within the range 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum, as taught by the modified method of Christensen, would include values where the mineral raw material comprises 0.1 to 0.5 wt% metallic aluminum, as claimed.
Applicant (pg. 7 of the Remarks) argues while the high halogen waste materials (materials of interest) reported as having metallic aluminum in the range of 0.5 to 10 wt%, the specific example of metallic aluminum is reported as 2 to 6 wt%, and in contrast recites a mineral raw material comprises from 0.1 to 0.5 wt% metallic aluminum (a far smaller range). Then Applicant argues untreated alu-dross can have an aluminum content from 0.5 to 10 wt% and states after treatment the metallic aluminum ranges at most 0.01 to 2 wt% metallic aluminum, and states thus, the very generic range cannot be used to envisage the very specific range of 0.1 to 0.5 wt% metallic aluminum. Applicant also argues the range of 0.1 to 0.5 wt% of metallic aluminum is not taught by Christensen, because the range taught by Christensen is 10 times more than the lower aluminum amount derived from Christensen, and thus the claimed range represents a narrow selection from a broader range. This argument is not persuasive. This is a piecemeal analysis of the rejection. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is based on the combination of Christensen in view of Grove and Yokota. Additionally, as stated in the rejection of claim 1 above (see calculations in the rejection of claim 1), Christensen actually teaches the mineral raw material comprising a range of 0.01 wt% to 2 wt% metallic aluminum. Additionally, as stated in the rejection of claim 1 above, since the metallic aluminum is a reducing agent for iron oxide, as taught by Yokota, it would be obvious to person having ordinary skill in the art, in the modified method of Christensen to improve the fire resistance of the mineral fiber with the reducing conditions optimized within the range of 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum. The optimization of metallic aluminum content within the range 0.01 wt% to 2 wt% of the mineral raw material comprising metallic aluminum, as taught by the modified method of Christensen, would include values where the mineral raw material comprises 0.1 to 0.5 wt% metallic aluminum, as claimed.
Applicant then argues the raw material of Christensen is pre-treated to remove metallic aluminum prior to production and emphasizes Christensen describes the separation of aluminum oxide from metallic aluminum for resale and in the working examples treated aluminum is included in the furnace as the high halogen materials for the methods of Christensen and again reiterates a mineral raw material that comprises 0.1 to 0.5 wt% metallic aluminum. Applicant then argues Christensen does not teach any advantage to inclusion of metallic aluminum, but only that metallic aluminum is valuable and may be removed from any waster material, and states these materials are not used in the melt since treated aluminum salt slag is used in the Examples (Col. 7, line 25). The argument that Christensen teaches away from metallic aluminum is not persuasive. Christensen (Col. 3, lines 47 to Col. 4, line 30) discloses high halogen mineral wastes and other suitable wastes (corresponding to material that comprises metallic aluminum) which contain high level of aluminum, specifically 0.5 to 10 wt%, as well as halogen. Christensen discloses wastes include high halogen fly ash, ladle slag, converter slag, and aluminum slags, e.g. wastes from the secondary production of aluminum that are generally described as aluminum dross or aluminum oxide dross. Christensen (Col. 3, lines 49-58) teaches high halogen mineral wastes and particular materials of interest are those which contain from 0.5 to 10 wt% metallic aluminum and 50 to 90 wt% alumina, and (Col. 3, line 61-65) teaches aluminum dross, but in particular the process provides one specific alumina-rich waste material from treated alu-dross that includes some aluminum for resale, an aluminum rich fraction, and an alumina-rich powder, and discloses the alumina rich powder can be used in the invention as the high halogen waste. The disclosure of alumina rich powder combined with the teachings of particular materials of interest including 0.5 to 10 wt% metallic aluminum and 50 to 90wt% of alumina, it would be obvious to a person having ordinary skill in the art, an alumina rich powder comprising 50 to 90wt% alumina and 0.5 to 10 wt% metallic aluminum as an acceptable high halogen waste. Accordingly, while Christensen discloses the treatment of crushed alu dross and treated aluminum salt slag, and “treated aluminum salt slag” (Col. 7, line 25), the Examiner submits, based on the disclosure presented above, Christensen broadly teaches high halogen waste incorporated into the melt, and teaches wastes of particular interest, such as alumina-rich product, and wastes containing 0.5 to 10 wt% metallic aluminum and wastes containing 50 to 90wt% alumina as a high halogen waste that can be used in the invention. It should be noted a nonpreferred and alternative embodiment does not constitute a teaching away from a broader disclosure or nonpreferred embodiments (See MPEP 2123). Accordingly, the argument that Christensen teaches away from the inclusion of significant amounts of metallic aluminum in the melt is not persuasive. Additionally, Applicant states on the record (pg. 8 of the Remarks), 2wt% metallic aluminum present in treated alu-dross, and as evidenced by Dube (Col. 4, lines 36-40) teaches treated aluminum-containing dross may contain up to 5% aluminum. Accordingly, the modified method of Christensen provides for high halogen wastes or other wastes, such as an aluminum dross, comprising 0.5 to 10 wt% metallic aluminum.
Applicant argues Grove does not teach metallic aluminum in such an Mo electrode furnace and Grove only teaches use of a graphite electrode furnace for providing suitable redox conditions, and thus teaches away from the claimed invention. This argument is not persuasive, as there is no explicit teaching away. Applicant then states Dube fails to teach specific amounts of metallic aluminum to solve the problem of shrinkage in Mo-electrode furnaces. This argument is not persuasive, as applicant is arguing a feature which is not claimed, such as shrinkage, and this is a piecemeal analysis of the references.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., shrinkage) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is a combination of the teachings of Christensen in view of Grove and Yokota.
The Examiner notes pgs. 10-11 of the Remarks are directed towards the Dube reference, which is no longer applied in the new grounds of rejection.
Accordingly, the Examiner maintains the combined teachings of Christensen in view of Grove and Yokota, as discussed in the rejection of claim 1 above. The rejection of dependent claims 2-6 and 12-13, and 15-16 appear to hinge upon the rejection of claim 1, and the Examiner maintains the rejection of claims 2-6, 12-13, and 15-16.
Allowable Subject Matter and EXAMINER’S COMMENTS - Claims
Claims 8 and 10 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Additionally, there is no prior art rejections against claims 7 and 9. However, claims 7 and 9 is/are provisionally rejected on the ground of nonstatutory double patenting over App. No, 17/796,630. As indicated in the Double Patenting section, the Examiner notes that App no. 17/796,630 has the same effective filing date as the current application (17/796,588). With the same effective filing date, it is assumed the applications have approximately the same patent term filing date. (See MPEP 804 I.B.1.(b)(ii) below).
(ii) Application under examination has the same patent term filing date
If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to disclose or fairly suggest the method of claim 1, wherein the material that comprises metallic aluminum comprises 45 to 100 wt% metallic aluminum, as required in claims 7-10.
Conclusion
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/LISA L HERRING/ Primary Examiner, Art Unit 1741