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
The Examiner interprets lines 1-2 of claim 1 as the preamble of the claim, and therefore, the method steps begin in line 4 of claim 1.
In claim 3, the Examiner interprets “alu-dross” in the claim as any waste material from the aluminum processing industry.
In claim 16, 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.
Response to Arguments
Applicant’s arguments with respect to claim(s) rejected over the prior art in the final rejection dated Nov. 12, 2025, have been considered but are moot because the new ground of rejection does not rely on the Jensen or Dube reference. Please see new ground of rejection below.
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) 1-8 and 14-16 is/are rejected under 35 U.S.C. 103 as obvious over Christiansen et al. (US 6,698,245 – hereinafter Christiansen) in view of Hansen (US 2014/0311184) and Solvang et al. (US 2014/0228195A1 – hereinafter Solvang) and Yokota (US 2020/0140312 – hereinafter Yokota).
Regarding claims 1, 3, and 14, 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 61-65) discloses any of the typical furnaces used for forming MMVF, for instance a shaft furnace. 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 a furnace and 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 in the furnace 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.
Christensen fails to disclose providing a cyclone furnace, and providing fuel and combustion gas to the cyclone furnace, wherein the fuel is gaseous, and the melting in the cyclone furnace. However, Hansen ([0005]) teaches cyclone furnaces have a significant advantage compared to cupola (i.e. shaft) or other stack furnaces, since it reduces the need for briquetting fine particles, a wide range of fuels can be used and melting in a cyclone furnace is much quicker than is the case for a cupola (i.e. shaft) furnace. Hansen ([0008]-[0010]) teaches making a mineral melt by burning combustible material in the presence of inorganic particulate material, fuel, and combustion gas in the cyclone furnace, and [0027] gaseous fuel, such as butane, propane, methane, or natural gas may be used. Hansen ([0001]) teaches the mineral melt can then be fiberized. Accordingly, based on the additional teachings by Hansen, it would be obvious to a person having ordinary skill in the art, the method of melting mineral raw material that comprises metallic aluminum and other mineral component with any suitable furnace, as disclosed by Christensen, could be substituted by a cyclone furnace, and it would be obvious to a person having ordinary skill in the art, the method of substituting with the cyclone furnace includes providing mineral raw material and fuel and combustion gas to the cyclone furnace, wherein the fuel is gaseous in order to provide for much quicker melting. Accordingly, the modified method of Christensen in view of Hansen would include: providing a cyclone furnace, providing mineral raw material (a) and (b), providing fuel and combustion gas to the cyclone furnace, wherein the fuel is gaseous, melting the mineral raw material in the cyclone furnace to form a mineral melt, and forming MMVF from the melt, wherein the formed MMVF comprises 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 3. 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, Solvang teaches ([0031]) to produce stone wool (i.e. MMVF) that is high temperature stable, the redox state of the melt is a key and it is found the melt should contain a high content of Fe(2+) as possible and the Fe(3+) should be suppressed, teaches ([0034]) the proportion of Fe(II) is greater than 80% based on total Fe, and teaches good fire resistance properties with a high level of ferrous iron in combination with MgO, such as preferably at least 90% Fe(2+), at least 95% Fe(2+), and at most 97% Fe(2+). Solvang ([0062]) teaches adjusting the oxidation state of the melt such that the proportion of Fe(2+) is greater than 80%. 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 Solvang and Yokota teach furnace conditions, such as reducing conditions, that adjust the redox state of iron. Both Solvang and Christensen teach iron oxide in the fiber. Christensen teaches producing mineral fibers comprising metallic aluminum from aluminum containing materials, including aluminum dross. Accordingly, based on the additional teachings by Solvang 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 80% 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 80%, 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 80% Fe(2+), there is approximately 20% Fe(3+), which provides for a ratio of at least 4.0, 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 14.
Regarding claim 2, in addition to the rejection of claim 1 above, Christensen (Col. 6, lines 24-27) discloses the high halogen material (corresponding to the material comprising metallic aluminum) as powdered high halogen mineral waste and as discussed above, Hansen ([0008]-[0010]) teaches making a mineral melt by burning combustible material in the presence of inorganic particulate material, fuel, and combustion gas in the cyclone furnace. Based on the teachings by Christensen that the material comprising metallic aluminum may be powdered and Hansen that inorganic particulate material fed to the cyclone furnace forms the melt, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen, wherein the material comprising metallic aluminum is particulate.
Regarding claim 4, as discussed in the rejection of claims 1 and 3 above, the modified method of Christensen in view of Hansen provides for a cyclone furnace. Hansen (Fig. 1, [0009] and [0019]-[0022]) further teaches melting of the mineral material in the circulating combustion chamber of the cyclone furnace and mineral materials are preheated prior to being added to the circulating combustion chamber 1 of the cyclone furnace. Hansen discloses a first mineral material undergoes initial preheating in second pre-heater cyclone 13, then the first mineral material passes through a conduit 18 and is introduced into first conduit 18 and subsequently passes to a first preheater cyclone 12 and is introduced into the combustion chamber via conduit 3. Hansen teaches exhaust gases leave the combustion chamber of the cyclone via flue 10 and enter the first conduit 11, which is connected to the first pre-heater cyclone 12 in the preheating system. Hansen ([0021]) also discloses it is known in the art to add a second mineral material from supply 20 to the first conduit 11 before the first cyclone preheater 12. Accordingly, based on the additional teachings by Hansen including melting of mineral material in the circulating combustion chamber and preheating of mineral materials, such as in the second and/or first preheater, prior to being added to the circulating combustion chamber, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen includes providing a cyclone preheater system in connection with the cyclone furnace, forming hot exhaust gases from the cyclone furnace and transporting hot exhaust gases from the cyclone furnace to the cyclone preheater system, and mineral materials, which includes alu-dross and the other mineral component, enters the cyclone preheater system before being melted in the cyclone furnace such that the alu-dross and other material components is pre-heated prior to the melting step, as claimed.
Regarding claim 5, as discussed in the rejection of claim 4 above, based on the additional teachings by Hansen including melting of mineral material in the circulating combustion chamber and preheating of mineral materials, such as in the second and/or first preheater, prior to being added to the circulating combustion chamber, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen includes providing a cyclone preheater system in connection with the cyclone furnace, forming hot exhaust gases from the cyclone furnace and transporting hot exhaust gases from the cyclone furnace to the cyclone preheater system, and mineral materials, which includes alu-dross and the other mineral component, enters the cyclone preheater system before being melted in the cyclone furnace such that the alu-dross and other material components is pre-heated prior to the melting step, as claimed.
Additionally, based on additional teachings by Hansen discussed in claim 4 above, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen also includes the cyclone system preheater comprises a first cyclone preheater and a second cyclone preheater, wherein the exhaust gases are transported from the cyclone furnace to the first cyclone preheater and from the first cyclone preheater to the second cyclone preheater, and from the second cyclone preheater to an exhaust outlet (i.e. conduit 15), as claimed in claim 5.
The modified method of Christensen fails to specifically state the alu-dross being mixed with the other mineral component and the resulting mineral raw material is introduced into the second cyclone preheater, transported from the second cyclone preheater to the first cyclone preheater, and then transported from the first cyclone preheater to the cyclone furnace, as claimed. However, as discussed in the rejection of claim 4 above, Hansen discloses a first mineral material undergoes initial preheating in second pre-heater cyclone 13 and is supplied from supply 19, and Hansen ([0021]) also discloses it is known in the art to add a second mineral material from supply 20 to the first conduit 11 before the first cyclone preheater 12. Therefore, based on the additional teachings including first and second mineral material may be supplied to the second cyclone preheater and the first cyclone preheater, detailed flow of the mineral materials through the preheater system (i.e. first cyclone preheater to circulating combustion chamber) and the teachings that exhaust gases flow through the preheater system (circulating combustion chamber to first cyclone preheater to second cyclone preheater), as taught by Hansen, it would be obvious to a person having ordinary skill in the art, in the modified method of Christensen mineral materials, such as the alu-dross and other mineral component, introduced into the first cyclone preheater or the second cyclone preheater, and therefore, it would be obvious to a person having ordinary skill in the art, to try and introduce the other mineral component into the second cyclone preheater or the first cyclone preheater and/or introduce the alu-dross into the second cyclone preheater or the first cyclone preheater. With these obvious to try combinations, it would be obvious to a person having ordinary skill in the art, the combination where the alu-dross and other mineral component are both introduced into the second cyclone preheater, the alu-dross is mixed with the other mineral component, transported from the second cyclone preheater to the first cyclone preheater, and then transported from the first cyclone preheater to the cyclone furnace, as claimed in claim 5.
Regarding claim 6, as discussed in the rejection of claim 4 above, Hansen (Fig. 1, [0009] and [0019]-[0022]) discloses a first cyclone preheater 12 and a second cyclone preheater and teaches exhaust gases leave the combustion chamber of the cyclone via flue 10 and enter the first conduit 11, which is connected to the second pre-heater cyclone 12 in the preheating system. Hansen (Fig. 1 and [0020]) further discloses the exhaust gases from the first pre-heater cyclone 12 to the second preheater cyclone, and exhaust gases exit the second preheater cyclone through conduit 15. Accordingly, based on additional teachings by Hansen, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen also includes the cyclone system preheater comprises a first cyclone preheater and a second cyclone preheater, wherein the exhaust gases are transported from the cyclone furnace to the first cyclone preheater and from the first cyclone preheater to the second cyclone preheater, and from the second cyclone preheater to an exhaust outlet (i.e. conduit 15), as claimed in claim 6.
The modified method of Christensen fails to disclose the other mineral component being introduced into the second cyclone preheater and is transported from the second cyclone preheater to the first cyclone preheater, wherein the alu-dross is introduced to the first cyclone preheater and mixes with other mineral component in the flow of exhaust gases to form the mineral raw material, and wherein the mineral raw material is transported from the first cyclone preheater to the cyclone furnace, as claimed in claim 6. However, as discussed in the rejection of claim 4 above, Hansen discloses a first mineral material undergoes initial preheating in second pre-heater cyclone 13 and is supplied from supply 19, and Hansen ([0021]) also discloses it is known in the art to add a second mineral material from supply 20 to the first conduit 11 before the first cyclone preheater 12. Therefore, based on the additional teachings including first and second mineral material may be supplied to the second cyclone preheater and the first cyclone preheater, detailed flow of the mineral materials through the preheater system (i.e. first cyclone preheater to circulating combustion chamber) and the teachings that exhaust gases flow through the preheater system (circulating combustion chamber to first cyclone preheater to second cyclone preheater), as taught by Hansen, it would be obvious to a person having ordinary skill in the art, in the modified method of Christensen mineral materials, such as the alu-dross and other mineral component, introduced into the first cyclone preheater or the second cyclone preheater, and therefore, it would be obvious to a person having ordinary skill in the art, to try and introduce the other mineral component into the second cyclone preheater or the first cyclone preheater and/or introduce the alu-dross into the second cyclone preheater or the first cyclone preheater. With these obvious to try combinations, it would be obvious to a person having ordinary skill in the art, the combination where the other mineral component is introduced into the second cyclone preheater and is transported into the second cyclone preheater to the first cyclone preheater, and where the alu-dross is introduced to the first cyclone preheater and mixes with the other mineral component in the flow of exhaust gases to form the mineral raw material, and wherein the mineral raw material is transported from the first cyclone preheater to the cyclone furnace, as claimed in claim 6.
Regarding claim 7, 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 8, as discussed in the rejection of claims 1 and 3 above, 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 3. Also discussed in the rejection of claim 1 above, 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%. Accordingly, based on the disclosures by Christensen, it would be obvious to a person having ordinary skill in the art, the modified method of Christensen provides for the mineral raw material comprising 5 to 20 wt% of high halogen mineral wastes or other suitable wastes, where these wastes are interpreted as equivalent to the material that comprises metallic aluminum. Accordingly, the modified method of Christensen provides for 5 to 20 wt% of the mineral raw material is alu-dross, which overlaps Applicant’s claimed range of 5 to 30 wt%.
Regarding claim 15, Christensen fails to disclose consolidating the MMVF to form a consolidated product comprising the fibers (i.e. MMVF). However, Solvang ([0006]-[0007]) teaches formed fibers can be collected to form a web by consolidation, compression and curing and the web is further processed to form a MMVF product. Based on the additional teachings by Solvang, it would be obvious to a person having ordinary skill in the art, the MMVF in the modified method of Christensen may be formed into a product by consolidating the MMVF.
Regarding claim 16, 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.
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 have the same effective filing date as the current application (17/796,630). 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. 15 of the Remarks directed towards the ODP rejection over Application number 17/796,626. However, the amendment to claim 1 in the current application 17/796,630, filed Feb. 5, 2026, is sufficient for the Examiner to withdraw the provisional rejection on the ground of nonstatutory double patenting of claims 1, 2, 10, and 14-16 over Claims 1-2, 6, and 10-11 of the copending 17/796,626 reference application in view of Hansen.
The Examiner notes, in pg. 15 of the Remarks directed towards the ODP rejection over Application No. 17/796,588, filed Feb. 5, 2026. The Applicant submits claims 1-3, 8-12, and 14-16 are patentably distinct from claims 1, 4-7, 9, 11-12, and 14-15 of copending Application No. 17/796,626 (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 Jensen in view of Hansen, Solvang, and Dube. However, the ODP rejection is based on the reference application in view of Hansen. Accordingly, it is unclear to the Examiner what reasons Applicant is referencing/arguing, since the rejection is based on the claims of the reference application in view of Hansen. Below is the modified ODP rejection based on the amendment to the claims.
Claims 1-3, 8-10, and 14-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1, 4-7, 9, 12, and 15-16 of copending Application No. 17/796,588 (hereinafter “The 588 reference application”; published as US20230061070A1) in view of Hansen (US 2014/0311184).
Regarding Claim 1, Claim 1 of the 588 reference application claims a process for making man-made vitreous fibres (MMVF), the method comprising providing a furnace, providing mineral raw material comprising (a) material that comprises metallic aluminium and (b) other mineral component, melting the mineral raw material in the furnace to form a mineral melt, forming MMVF from the mineral melt, wherein the formed MMVF comprise at least 3 wt% iron oxides determined as Fe2O-3, wherein the MMVF produced has 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 588 reference application fails to claim the metallic aluminum creates reducing conditions in the furnace and the 588 reference application fails to claim that the provided furnace is a cyclone furnace, that gaseous fuel and combustion gas are provided to the cyclone furnace, and that mineral raw material is melted in the cyclone furnace to form a mineral melt. However, Hansen ([0005]) teaches cyclone furnaces have a significant advantage compared to cupola (i.e. shaft) or other stack furnaces, since it reduces the need for briquetting fine particles, a wide range of fuels can be used and melting in a cyclone furnace is much quicker than is the case for a cupola (i.e. shaft) furnace. Hansen ([0008]-[0010]) teaches making a mineral melt by burning combustible material in the presence of inorganic particulate material, fuel, and combustion gas in the cyclone furnace, and [0027] gaseous fuel, such as butane, propane, methane, or natural gas may be used. Accordingly, based on the additional teachings by Hansen, it would be obvious to one of ordinary skill in the art that the provision of an electric furnace having molybdenum electrodes could be substituted by the provision of a cyclone furnace, that gaseous fuel and combustion gas could be provided to the cyclone furnace, and that mineral raw material could be melted in the cyclone furnace to form a mineral melt, in order to provide for much quicker melting, and because one of ordinary skill in the art could have understood, based on the teachings of Hansen, that the electric furnace having molybdenum electrodes of the 588 reference application and the gas-fueled cyclone furnace taught in Hansen are art-recognized alternative furnace options that could predictably be utilized to provide heat and form a mineral melt. Additionally, since the metallic aluminum is part of the mineral raw material provided in the furnace, it would be obvious to a person having ordinary skill in the art, the metallic aluminum reacts with iron in the oxide melt and therefore reduces Fe(III), as claimed.
Regarding Claim 2, Claim 4 of the 588 reference application claims that the material comprising metallic aluminium is particulate.
Regarding Claim 3, Claim 5 of the 588 reference application claims that the material that comprises metallic aluminium is alu-dross.
Regarding Claim 8, Claim 6 of the 588 reference application claims that from 5 to 30 wt% of the mineral raw material is alu-dross.
Regarding Claim 9, Claim 7 of the 588 reference application claims that the material that comprises metallic aluminium is a material comprising from 45 to 100 wt% metallic aluminium.
Regarding Claim 10, Claim 9 of the 588 reference application claims that the material that comprises metallic aluminium is aluminium granulate.
Regarding Claim 14, Claim 16 of the 588 reference application claims that the MMVF have a ratio of Fe(II):Fe(III) of above 3.
Regarding Claim 15, Claim 15 of the 588 reference application claims that the process further comprises consolidating the MMVF to form a consolidated product comprising the fibres.
Regarding Claim 16, Claim 12 of the 588 reference application claims that the MMVF have a content of oxides, as wt. %, as follows: SiO2 35 to 50, Al2O3 12 to 30, TiO2 up to 2, Fe2O3 3 to 12, CaO 5 to 30, MgO up to 15, Na2O to 15, K-2O 0 to 15, P2O5 up to 3, MnO up to 3, B2O3 up to 3.
Allowable Subject Matter and EXAMINER’S COMMENTS - Claims
Claim 11 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 9 and 10. However, claims 9 and 10 is/are provisionally rejected on the ground of nonstatutory double patenting over App. No, 17/796,588. As indicated in the Double Patenting section, the Examiner notes that App no. 17/796,588 has the same effective filing date as the current application (17/796,630). 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 9-11.
Conclusion
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/LISA L HERRING/Primary Examiner, Art Unit 1741