DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed October 3, 2025 have been entered. Claims 1-3 and 5-12 remain pending in the application.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 5-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Funakoshi (JP 2017/149837 A, using the machine translation for the citations below) as evidenced by National Institute of Standards and Technology (Triethylenetetramine, NIST Chemistry WebBook, SRD 69, 2025).
Regarding Claim 1: Funakoshi discloses an aqueous binder for a heat-insulating and sound-absorbing fiber material (para. 0001-2), the aqueous binder comprising a polymer with a carboxy group and a crosslinker (para. 0006), wherein the crosslinker comprises an alkanol monoamine (para. 0039) and a polyamine having an imino group (para. 0006). Funakoshi discloses that the polyamine has a molecular weight of 200 to 600 (para. 0033) and may include compounds such as triethylenetetramine (para. 0032), which has a molecular weight of 146.2339 (NIST Chemistry WebBook). Funakoshi discloses that the polyamine has an amine value of 1000 to 1500 mg KOH/g and that setting an amine value within this range improves the rate of curing and the strength of the cured product (para. 0034). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polyamine with an overlapping amine value and would have been motivated to do so since Funakoshi teaches this amine value is acceptable to achieve a cured composition with improved strength. Funakoshi further teaches that a ratio of the total number of mole of an amino group and an imino group in the crosslinking agent with respect to the total number of mole of a hydroxyl group, an amino group, and an imino group in the crosslinking agent is preferably 0.01 to 0.2 (para. 0040). Funakoshi does not teach that ammonia is a necessary component of the invention; the required volatile base may instead be a tertiary amine (para. 0029).
Funakoshi does not disclose that the water dilution capacity of the binder is maintained. However, Funakoshi teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. maintaining the water dilution capacity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 2: Funakoshi discloses that the polymer has an ethylenically unsaturated monomer with a carboxy group as a monomer unit (para. 0023).
Regarding Claim 3: Funakoshi teaches that a ratio of the total number of mole of a hydroxyl group, an amino group, and an imino group in the crosslinking agent with respect to the total number of mole of a carboxy group in the polymer is 0.3 to 1.2 and that this range allows for good strength and water resistance in the cured product (para. 0040). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polymer and a crosslinker with an overlapping ratio of the total number of mole of a hydroxyl group, an amino group, and an imino group in the crosslinking agent with respect to the total number of mole of a carboxy group in the polymer, and they would have been motivated to do so since Funakoshi teaches this ratio is acceptable to achieve a cured product with good strength and water resistance.
Regarding Claim 5: Funakoshi discloses that the polymer has a weight average molecular weight of 1000 to 20000 and an acid value of 500 to 900 mg KOH/g (para. 0021).
Regarding Claim 6: Funakoshi discloses a curing accelerator, a silane coupling agent, a dust suppressant, a neutralizing agent, and a colorant (para. 0042).
Regarding Claim 7: Funakoshi discloses a material containing an inorganic fiber and a cured product of the aqueous binder as set forth above (para. 0047).
Regarding Claim 10: Funakoshi teaches that the pH of the aqueous binder is from 6.0-6.5 (para. 0045).
Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Funakoshi (JP 2017/149837 A, using the machine translation for the citations below) as evidenced by National Institute of Standards and Technology (Triethylenetetramine, NIST Chemistry WebBook, SRD 69, 2025).
Regarding Claim 8: Funakoshi discloses a method for shortening the curing time (para. 0034) of an aqueous binder for a heat-insulating and sound-absorbing fiber material (para. 0001-2), the aqueous binder comprising a polymer with a carboxy group and a crosslinker (para. 0006) and the method comprising a step of incorporating the crosslinker (para. 0006, 0031), wherein the crosslinker comprises an alkanol monoamine (para. 0039) and a polyamine having an imino group (para. 0006). Funakoshi discloses that the polyamine has a molecular weight of 200 to 600 (para. 0033) and may include compounds such as triethylenetetramine (para. 0032), which has a molecular weight of 146.2339 (NIST Chemistry WebBook). Funakoshi discloses that the polyamine has an amine value of 1000 to 1500 mg KOH/g and that setting an amine value within this range improves the rate of curing and the strength of the cured product (para. 0034). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polyamine with an overlapping amine value and would have been motivated to do so since Funakoshi teaches this amine value is acceptable to achieve a cured composition with improved strength. Funakoshi further teaches that a ratio of the total number of mole of an amino group and an imino group in the crosslinking agent with respect to the total number of mole of a hydroxyl group, an amino group, and an imino group in the crosslinking agent is preferably 0.01 to 0.2 (para. 0040). Funakoshi does not teach that ammonia is a necessary component of the invention; the required volatile base may instead be a tertiary amine (para. 0029).
Funakoshi does not disclose that the water dilution capacity of the binder is maintained. However, Funakoshi teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. maintaining the water dilution capacity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 11: Funakoshi teaches that the pH of the aqueous binder is from 6.0-6.5 (para. 0045).
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Funakoshi (JP 2017/149837 A, using the machine translation for the citations below) as evidenced by National Institute of Standards and Technology (Triethylenetetramine, NIST Chemistry WebBook, SRD 69, 2025).
Regarding Claim 9: Funakoshi discloses a method for manufacturing an aqueous binder for a heat-insulating and sound-absorbing fiber material (para. 0001-2), the aqueous binder comprising a polymer with a carboxy group and a crosslinker (para. 0006) and the method comprising a step of incorporating the crosslinker (para. 0006, 0031), wherein the crosslinker comprises an alkanol monoamine (para. 0039) and a polyamine having an imino group (para. 0006). Funakoshi discloses that the polyamine has a molecular weight of 200 to 600 (para. 0033) and may include compounds such as triethylenetetramine (para. 0032), which has a molecular weight of 146.2339 (NIST Chemistry WebBook). Funakoshi discloses that the polyamine has an amine value of 1000 to 1500 mg KOH/g and that setting an amine value within this range improves the rate of curing and the strength of the cured product (para. 0034). This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a polyamine with an overlapping amine value and would have been motivated to do so since Funakoshi teaches this amine value is acceptable to achieve a cured composition with improved strength. Funakoshi further teaches that a ratio of the total number of mole of an amino group and an imino group in the crosslinking agent with respect to the total number of mole of a hydroxyl group, an amino group, and an imino group in the crosslinking agent is preferably 0.01 to 0.2 (para. 0040). Funakoshi does not teach that ammonia is a necessary component of the invention; the required volatile base may instead be a tertiary amine (para. 0029).
Funakoshi does not disclose that the water dilution capacity of the binder is maintained. However, Funakoshi teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. maintaining the water dilution capacity, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 12: Funakoshi teaches that the pH of the aqueous binder is from 6.0-6.5 (para. 0045).
Response to Arguments
Applicant's arguments filed October 3, 2025 have been fully considered but they are not persuasive.
Regarding Applicant’s argument that the weight average molecular weight of Funakoshi is distinct from the individual molecular weight of the polyamine disclosed in the claims: although a weight average molecular weight implies a range of molecular weights rather than one individual molecular weight, a compound with a weight average molecular weight of, for instance, 200 would contain several species having molecular weights within the claimed range. Regardless, Funakoshi teaches several compounds, such as triethylenetetramine, having an individual molecular weight within the claimed range. See the rejection above.
In response to applicant’s argument that Funakoshi does not include examples of binders comprising alkanol monoamines and polyamines with the claimed molecular weights, disclosed examples and preferred embodiments do not teach away from the broader disclosure. Patents are relevant as prior art for all they contain. See MPEP 2123.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767