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 11, 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 the range of 0 up to 3, and B2O3 up to 3 as the range of 0 up to 3.
In claim 12, the Examiner interprets the wt% range of TiO2 not more than 6 as the range of 0 up to 6, B2O3 not more than 5 as the range of 0 up to 5, P2O5 not more than 8 as the range of 0 up to 8.
Claim Rejections - 35 USC § 112
The amendment to the claims filed Mar. 9, 2026 is sufficient for the Examiner to withdraw the rejection of claims 12-13 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
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. 17/796,588 and 17/796,630 have the same effective filing date as the current application (17/796,626). 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.
Due to the amendment to the claims filed Mar. 9, 2026 the Examiner is re-evaluating the nonstatutory double patenting rejections.
Based on the amendment filed Mar. 9, 2026, the Examiner withdraws the double patenting rejection of claims over copending Application No. 17/796,588 (reference application), since the closest claim, which is claim 7/1 of the reference patent, fails to claim a gas-fired furnace and gaseous fuel and combustion gas, the metallic aluminum is in the form of (a) aluminum granulate or (b) one or more blocks, and the introducing and combusting of the gaseous fuel, combustion gas to the furnace and the metallic aluminum creates a reducing environment in the melt.
Claims 1 and 3 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 17/96,630 (reference application) in view of Jensen et al. (WO1999028250A1 – hereinafter Jensen).
Regarding claims 1 and 3, claim 1 of the reference application, lines 1-2 claims a process for making man-made vitreous fibers (MMVF), lines 13-14 claim the formed MMVF comprise at least 3 wt% iron oxides determined as Fe2O3, lines 4 and 7-8 provides for providing a gas-fired furnace since the cyclone furnace claims providing fuel and combustion gas to the cyclone furnace, which is claimed in claim 3, line 5 claims providing the mineral raw material and lines 7-8 claims providing gaseous fuel and combustion gas, which provides for introducing gaseous fuel and combustion gas to the furnace, lines 5-6 claim a material that comprises metallic aluminum and other mineral component, lines 14-15 claim the mineral raw material comprises from 0.1 to 0.5 wt% metallic aluminum, line 9 claims melting the mineral raw material to form a mineral melt and it would be obvious to a person having ordinary skill in the art, this would including introducing the mineral raw material, and lines 11-12 claim the metallic aluminum reacts with iron oxide in the melt, thereby reducing Fe(II) such that the MMVF produced has a ratio of Fe(II):Fe(III) of above 2, which provides for the metallic aluminum creates a reducing environment in the melt such that the MMVF produced has a ratio of Fe(II):Fe(III) of above 2. Claim 9/1 claims material that comprises metallic aluminum comprises 45-100 wt% metallic aluminum.
Claim 1 in lines 9-10 claims melting the mineral raw material in the cyclone furnace to form a mineral melt and claims providing fuel and combustion gas to the cyclone furnace. Accordingly, it would be obvious to a person having ordinary skill in the art, this would include combusting the gaseous fuel, thereby, melting the mineral raw material to form a melt pool at the base of the furnace, since a person having ordinary skill in the art would recognize the fuel and combustion gas are the combusting sources to provide for melting and would form a melt pool at the base of the furnace.
Claim 9/1 fails to claim the metallic aluminum is in the form of aluminum granulate or one or more blocks. However, Jensen (pg. 1, line 5 to pg. 2 line 5) teaches various types of furnace used for forming a melt to make MMVF. Jensen teaches (pg. 6, lines 17-27) teaches powdered waste (corresponding to mineral raw material (a)) in the method of making MMVF may be injected with combustion air and combustible material, such as oil or gas and furnaces, and (pg. 3, lines 35-36) also teaches introducing waste in powdered form, and pg. 4, lines 9-36, the waste as blended to produce the MMVF, and the waste comprising metallic aluminum and obtained by crushing and sieving. Accordingly, since it has been taught that powdered material for use in producing MMVF, it would be obvious to a person having ordinary skill in the art, the metallic aluminum in the form of aluminum granulate, as claimed.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 2, and 4-13 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.
There are no prior art rejections against independent claim 1. However, claims 1 and 3 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 17/626,626. With the same effective filing date, it is assumed the applications have approximately the same patent term filing date. (See MPEP804 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 aluminum granulate or blocks comprise from 45 to 100 wt% and wherein the mineral raw material comprises from 0.1 to 0.5wt% metallic aluminum.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yokota (US 2020/0140312) discloses 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LISA HERRING whose telephone number is (571)270-1623. The examiner can normally be reached M-F: EST 6:00am-3:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached at 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LISA L HERRING/Primary Examiner, Art Unit 1741
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