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 .
Response to Amendment
The Amendment filed May 11, 2026 has been entered. Claims 1-7, 9-18, and 20-21 are pending in the application. Claims 8 and 19 were previously canceled. Claims 1, 11, 16, and 20 were amended and support can be found in the original Specification and claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-7, and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Angel et al., (WO 2018/130648 (A1); cited on the IDS submitted on 11/02/2022; hereafter as “Angel”) in view of Mueller et al. (US 2016/0131299 A1; cited on the IDS submitted on 07/14/2023; hereafter as “Mueller”).
Regarding Claim 1, Angel teaches an insulating element [Paragraph 40], corresponding to the insulation product, wherein Angel further teaches:
Glass wool [Paragraph 40], corresponding to the plurality of glass fibers;
Said glass fibers form a network bonded with a cured organic binder [Paragraphs 38 and 68], corresponding to the binder at least partially coating the glass;
Wherein the binder of Angel is cured [Paragraph 70] thereby reading on “cross-linked” and formaldehyde is not disclosed as a component in the binder of Angel therefore the binder is considered to be formaldehyde-free, thereby reading on the crosslinked formaldehyde-free binder composition;
Wherein the glass fibers in the glass wool have an average fiber diameter of 2-8 µm [Paragraph 31];
Wherein the glass fibers in the glass wool have a laminar orientation, meaning that the fibers forming the glass wool are predominantly oriented parallel to the major surfaces of the mat [Paragraph 70], thereby reading on wherein at least 30% by weight of the glass fibers in the fibrous product are oriented within +/- 15° of a common plane defined by the length and width of the insulation product;
Wherein said insulating element preferable ranges the length from 60-150 cm and the width from 30-120 cm, and a thickness of 60-220 mm [Paragraph 31], corresponding to wherein the fibrous product has a length, a width, and a thickness, with the length being greater than each of the width and the thickness;
Wherein the internal insulating element has a density lower than 35 kg/m3 [Paragraph 39], which is equivalent to <2.2 pcf, and the density is meant in the uncompressed and unpacked state [Paragraph 71].
Angel and the claims differ in that Angel does not teach the exact same ranges for the density of the insulation element and for the glass fiber diameter of Claim 1.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Angel (density of the insulation element of <2.2 pcf, and the glass fiber diameter of 2-8 µm) overlap the instantly claimed ranges (density of the insulation element of 0.2 – 1.6 pcf and the glass fiber diameter of 2.03-3.81 µm for claim 1) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claim 1, Angel is silent to the binder composition wherein prior to crosslinking, the formaldehyde-free binder composition comprises at least one monomeric polyol and polymeric polycarboxylic acid in a combined amount of at least 45% by weight, based on a total weight of the binder composition of Claim 1.
Nevertheless, Mueller teaches an insulation mat comprising a cured combination of glass fibers and a binder [Claims 1, 15], wherein the binder is based upon a polymeric polycarboxylic acid and a monomeric polyol [Claim 10; Example 5], thereby corresponding to binder composition comprises at least one monomeric polyol and polymeric polycarboxylic acid of Claim 1.
The binder of Mueller does not require formaldehyde, so for the purposes of examination, will be interpreted to read on the formaldehyde-free binder of Claim 1.
Mueller offers the motivation that the insulation mat may comprise a corrosion inhibitor [Abstract].
Angel and Mueller are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing insulators that are comprised of a cured binder and glass fibers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymeric polycarboxylic acid and monomeric polyol of Mueller with the insulating element of Angel, thereby arriving at the claimed invention.
Regarding the combined amount of the combined amount of polymeric polycarboxylic acid and monomeric polyol, Mueller teaches the pH characteristics of cured binder compositions may accelerate or contribute to corrosion of metal materials [¶ 0001], and the pH of some binders may change significantly depending on the curing conditions [¶ 0010; Tables 1-2]. Given the importance of the binder pH before and during curing, the binder composition can be optimized to reach the desired pH of the cured binder via a routine optimization by, for example, modifying the amount of polycarboxylic acid and polyol in the binder composition. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of polycarboxylic acid and polyol for the intended pH via a routine optimization, thereby obtaining the present invention.
Regarding claim 2, Angel teaches the glass fibers in the glass wool have a laminar orientation, meaning that the fibers forming the glass wool are predominantly oriented parallel to the major surfaces of the mat [Paragraph 70], thereby reading on wherein at least 15% by weight of the glass fibers in the insulation are at least partially bound in a substantially parallel orientation with at least one other glass fiber in the insulation production.
Regarding claims 3 and 6, Angel teaches the glass fibers in the glass wool have a laminar orientation, meaning that the fibers forming the glass wool are predominantly oriented parallel to the major surfaces of the mat [Paragraph 70], thereby reading on wherein at least 40% by weight of the glass fibers in the fibrous product are oriented within +/- 15° of a common plane defined by the length and width of the insulation product of claim 3 and further reads on the common plane is parallel to the length and width of the insulation product of claim 6.
Regarding claims 4-5, Angel does not explicitly disclose the binder composition viscosity.
However, the properties of the binder composition such as its viscosity are functions of the composition and the method by which it is made. Since Angel in view of Mueller teach the same binder composition formed by the same method as required by the instant claim, as set forth in the rejection above, the binder composition of Angel and Mueller would be expected to result in the same viscosity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed viscosity, as the reference teaches each of the claimed ingredients (glass fibers, formaldehyde-free binder composition comprising a monomeric polyol and polycarboxylic acid) for the same utility (making aqueous binder composition) and for the same purpose (to producing insulation).
Regarding claim 7, Angel teaches the glass fibers in the glass wool have an average fiber diameter of 2-8 µm [Paragraph 31] thereby overlapping with the claimed range of 3.05-3.68 µm.
However, Angel does not explicitly disclosure a glass fiber diameter of 3.05-3.68 µm.
One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the glass fiber diameter range taught by Angel (2-8 µm) overlap the instantly claimed range (3.05-3.68 µm) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 9, Angel does not particularly teach the amount of glass fibers oriented in the form of a gusset.
However, Angel and Mueller teach the same insulation product comprising a binder composition and glass fibers made in a substantially similar method. Therefore, the percentage by weight of the binder composition present in the form of a gusset would be expected to be the same amount as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed insulation product, as the reference teaches each of the claimed ingredients (glass fibers and binder composition) for the same utility (insulation) and for the same purpose (to insulate with improved performance).
Regarding Claim 10, Angel is silent to the cross-linked formaldehyde-free binder composition comprising Maillard reactants, so said composition will be interpreted to be free of Millard reactants as claimed.
Regarding claims 11, 13-15, Angel teaches the insulation product comprising glass fibers having an overlapping average fiber diameter, a cross-linked formaldehyde free binder composition, monomeric polyol, polycarboxylic acid, and an insulation product having a width, thickness and length as set forth above for claim 1. Angel further teaches the glass fibers in the glass wool have a laminar orientation, meaning that the fibers forming the glass wool are predominantly oriented parallel to the major surfaces of the mat [Paragraph 70], thereby reading on wherein at least 55% by weight of the glass fibers in the fibrous product are oriented within +/- 30° of a common plane defined by the length and width of the insulation product of claim 11, reading on at least 65% by weight of the glass fibers are oriented within +/- 30° of a common plane of claim 13, reading on at least 75% by weight of the glass fibers are oriented within +/- 50° of a common plane of claim 14, and further reading on wherein at least 15% by weight of the glass fibers in the insulation product are at least partially bound in a substantially parallel orientation of claim 11.
Regarding Claim 11, Angel is silent to the binder composition wherein prior to crosslinking, the formaldehyde-free binder composition comprises at least one monomeric polyol and polycarboxylic acid in a combined amount of at least 45% by weight, based on a total weight of the binder composition.
Nevertheless, Mueller teaches an insulation mat comprising a cured combination of glass fibers and a binder [Claims 1, 15], wherein the binder is based upon a polymeric polycarboxylic acid and a monomeric polyol [Claim 10; Example 5], thereby corresponding to binder composition comprises at least one monomeric polyol and polymeric polycarboxylic acid of Claim 11.
The binder of Mueller does not require formaldehyde, so for the purposes of examination, will be interpreted to read on the formaldehyde-free binder of Claim 11.
Mueller offers the motivation that the insulation mat may comprise a corrosion inhibitor [Abstract].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymeric polycarboxylic acid and monomeric polyol of Mueller with the insulating element of Angel, thereby arriving at the claimed invention.
Regarding the combined amount of the combined amount of polymeric polycarboxylic acid and monomeric polyol, Mueller teaches the pH characteristics of cured binder compositions may accelerate or contribute to corrosion of metal materials [¶ 0001]. Mueller further teaches the pH of some binders may change significantly depending on the curing conditions [¶ 0010; Tables 1-2]. Given the importance of the binder pH before and during curing, the binder composition can be optimized to reach the desired pH of the cured binder via a routine optimization by, for example, modifying the amount of polycarboxylic acid and polyol in the binder composition. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of polycarboxylic acid and polyol for the intended pH via a routine optimization, thereby obtaining the present invention.
Regarding Claim 11, Angel in view of Mueller is silent regarding a viscosity less than 40,000 cP at 65% to 70% by weight solids and is further silent on the binder composition comprising at least one monomeric polyol. Regarding claim 15, Angel is silent regarding the viscosity of less than 10 cP at 10% weight solids.
However, the properties of the binder composition such as its viscosity are functions of the composition and the method by which it is made. Since Angel in view of Mueller teach the same binder composition formed by the same method as required by the instant claim, as set forth in the rejection above, the binder composition of Angel and Mueller would be expected to result in the same viscosity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed viscosity, as the reference teaches each of the claimed ingredients (glass fibers, formaldehyde-free binder composition comprising a monomeric polyol and polycarboxylic acid) for the same utility (making aqueous binder composition) and for the same purpose (to producing insulation).
Regarding claim 12, Angel teach the insulating element has a density in the range of 20-45 kg/m3 [Paragraph 40], which is equivalent to 1.2-2.8 pcf, and the density is meant in the uncompressed and unpacked state [Paragraph 71].
However, Angel does not explicitly teach the exact same ranges for the density of the insulation element as recited in the instant claim.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Angel (density of the insulation element of 1.2-2.8 pcf) overlap the instantly claimed ranges (density of the insulation element of 0.2 – 1.6 pcf) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claims 16-18, Angel teaches the insulation product comprising glass fibers having an overlapping average fiber diameter and a cross-linked formaldehyde free binder composition including at least one monomeric polyol as set forth above for claim 11. Angel further teaches the glass fibers in the glass wool have a laminar orientation, meaning that the fibers forming the glass wool are predominantly oriented parallel to the major surfaces of the mat [Paragraph 70], thereby reading on wherein at least 15% by weight of the glass fibers in the fibrous product are at least partially bound in a substantially parallel orientation of claim 16, and reading on at least 30% by weight of the glass fibers are oriented within +/- 15° of a common plane of claim 17, and further reading on at least 40% by weight of the glass fibers are oriented within +/- 15° of a common plane of claim 18.
Angel also teaches wherein the amount of glass fibers is at least 90 wt. % [Paragraph 31], which is equivalent to a binder content less than or equal to 10 wt. %, which encompasses the binder content (LOI) less than or equal to 4% by weight of the insulation product of claim 16.
However, Angel is silent on the binder composition comprises at least one monomeric polyol and polycarboxylic acid in a combined amount of at least 45% by weight, based on a total weight of the binder composition of claim 16.
Nevertheless, Mueller teaches an insulation mat comprising a cured combination of glass fibers and a binder [Claims 1, 15], wherein the binder is based upon a polymeric polycarboxylic acid and a monomeric polyol [Claim 10; Example 5], thereby corresponding to binder composition comprises at least one monomeric polyol and polymeric polycarboxylic acid of Claim 16.
The binder of Mueller does not require formaldehyde, so for the purposes of examination, will be interpreted to read on the formaldehyde-free binder of Claim 16.
Mueller offers the motivation that the insulation mat may comprise a corrosion inhibitor [Abstract].
Angel and Mueller are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing insulators that are comprised of a cured binder and glass fibers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymeric polycarboxylic acid and monomeric polyol of Mueller with the insulating element of Angel, thereby arriving at the claimed invention.
Regarding the combined amount of the combined amount of polymeric polycarboxylic acid and monomeric polyol, Mueller teaches the pH characteristics of cured binder compositions may accelerate or contribute to corrosion of metal materials [¶ 0001]. Mueller further teaches the pH of some binders may change significantly depending on the curing conditions [¶ 0010; Tables 1-2]. Given the importance of the binder pH before and during curing, the binder composition can be optimized to reach the desired pH of the cured binder via a routine optimization by, for example, modifying the amount of polycarboxylic acid and polyol in the binder composition. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of polycarboxylic acid and polyol for the intended pH via a routine optimization, thereby obtaining the present invention.
However, Angel in view of Mueller do not particularly teach the amount of glass fibers oriented in the form of a gusset of Claim 16.
However, Angel in view of Mueller teach the same insulation product comprising a binder composition and glass fibers made in a substantially similar method. Therefore, the percentage by weight of the binder composition present in the form of a gusset would be expected to be the same amount as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed insulation product, as the reference teaches each of the claimed ingredients (glass fibers and binder composition) for the same utility (insulation) and for the same purpose (improving insulation performance).
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Angel et al., (WO 2018/130648 (A1); cited on the IDS submitted on 11/02/2022; hereafter as “Angel”) in view of Mueller et al. (US 2016/0131299 A1; cited on the IDS submitted on 07/14/2023; hereafter as “Mueller”) and in further view of Tutin et al. (US 2004/0038017 A1; cited in the IDS submitted on 01/12/2023; hereafter as “Tutin”).
Angel in view of Mueller teach the insulation product, glass fibers, cross-linked formaldehyde-free binder composition, glass fiber diameter, glass fiber orientation, polymeric polycarboxylic acid and monomeric polyol, and insulation density of Claim 1 as set forth above, and incorporated herein.
Angel further teaches the deposition of glass fibers onto a receiving belt [Paragraph 70], corresponding to the claimed random deposition of glass fibers onto a moving conveyor, a glass fiber fleece [Paragraph 68], corresponding to the claimed fiberglass blanket; and melting the binder composition onto the glass fibers to cure the binder [Paragraph 68], corresponding to the claimed curing to crosslink the binder composition.
However, Angel and Mueller are silent to a curing oven and the moisture content of the blanket.
Nevertheless, Tutin teaches a method of curing fiberglass binder compositions [¶ Abstract], comprising:
a curing oven where the binder is cured [¶ 0055-0056] corresponding to the curing oven of Claim 20; and
binder moisture resistance so that it does not swell under humid conditions [¶ 0047]
wherein the reaction is conducted in a reactor that allows for the removal of water generated during the formation of the polyester and may be continued until the desired acid number is reached [¶ 0041]; and
on heating, water present in the binder composition evaporates and the composition undergoes curing [¶ 0058], which will be interpreted to mean there is no water present after curing which corresponds to a moisture content of no greater than 3% by weight of Claim 20.
Tutin offers the motivation that the method of passing the insulation product through a curing oven results in a cured binder that fixes the size and shape of the finished insulating product by bonding the mass of fibers one to another and forming an integral composition structure [¶ 0055-0056].
Angel, Mueller, and Tutin are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing insulators that are comprised of a cured binder and glass fibers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method of curing fiberglass binder compositions of Tutin with the insulating element of Angel and Mueller, thereby arriving at the claimed invention.
Regarding Claim 21, Angel in view of Mueller and Tutin do not teach the exact same ranges for the viscosity.
However, the properties of the binder composition such as its viscosity are functions of the composition and the method by which it is made. Since Angel in view of Mueller and Tutin teach the same binder composition formed by the same method as required by the instant claim, as set forth in the rejection above, the binder composition of Angel, Mueller, and Tutin would be expected to result in the same viscosity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed viscosity, as the reference teaches each of the claimed ingredients (glass fibers, formaldehyde-free binder composition comprising a monomeric polyol and polycarboxylic acid) for the same utility (making aqueous binder composition) and for the same purpose (to producing insulation).
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.
Claim 20 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 15 and 21 of copending Application No. 17/831,688. Although the claims at issue are not identical, they are not patentably distinct from each other because the insulation product of Appl. ‘688 and the instantly claimed invention both require the steps of fiberizing molten glass into glass fibers, coating the glass fibers with an aqueous, formaldehyde-free binder composition, randomly depositing the glass fibers onto a moving conveyor, forming an uncured fiberglass blanket; and passing the uncured fiberglass blanket through a curing oven to cross-link the binder composition and form the insulation product, wherein the insulation product comprises a length, a width, and a thickness, with the length being greater than each of the width and the thickness; wherein at least 30% by weight of the glass fibers are oriented within +/- 15° of a common plane of the insulation product, wherein the aqueous, formaldehyde-free binder composition comprises at least one monomeric polyol and polycarboxylic acid in a combined amount of at least 45% by weight, based on a total weight of the binder composition; and wherein the insulation product has a density, when uncompressed, between 0.2 pcf and 1.6 pcf. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments filed 05/11/2026, with respect to the rejections of Claims 1-7, 9-18, and 20-21 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, and in light of the amendment, a new ground(s) of rejection is made in view of Angel in view of Mueller.
The Terminal Disclaimer submitted on 05/11/2026 is acknowledged and the Double Patenting rejection based on the claims of U.S. Application 17/831,647 set forth in the previous Office action is no longer applicable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Swift et al. (US 2007/0123680 A1) teaches a glass fiber-containing mats for insulation [Claims 3-5] that are formaldehyde free [¶ 0008], comprising binders [¶ 0016], glass fibers with a diameter from about 2 to about 9 microns [¶ 0101], and polymeric polycarboxylic acid [Example 5; ¶ 0079-0081], wherein the insulation mat has a density of about 0.7 pcf [Example 8; ¶ 0103].
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 DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
Prosecution Insights