DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 9, 2026 has been entered.
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on August 6, 2025 have been entered into the file. Currently claims 1, 3, 9-10, and 23 are amended and claims 15-22 are withdrawn, resulting in claims 1-14 and 23 pending for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an insulation product comprising a plurality of glass fibers; and a cross-linked formaldehyde-free binder composition at least partially coating the glass fibers; wherein the glass fibers have an average fiber diameter within a range of 8 HT to 15 HT; wherein the insulation product has a binder content of less than or equal to 8% by weight; wherein the insulation product has a density (x) between 0.2 pcf and 1.6 pcf, and R-value of from 13 to 49, and an area weight (W) from 0.1 to 2.0 lb/ft2; and wherein the insulation product has a material efficiency (ME) defined by Equation (2): ME=R-value/W, wherein ME is expressed in Rft2/lb, does not reasonably provide enablement for the insulation product achieves a material efficiency (ME) that is no lower than a value (y) that satisfies Formula (VII) in the case of claim 1, or (VI) in the case of claims 9. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
With respect to claims 1 and 9, the claims require an insulation product comprising a plurality of glass fibers; and a cross-linked formaldehyde-free binder composition at least partially coating the glass fibers; wherein the glass fibers have an average fiber diameter within a range of 8 HT to 15 HT; wherein at least 30% by weight of the glass fibers are oriented within +/-15o of a common plane defined by the length and the width of a product; wherein the insulation product has a binder content of less than or equal to 8% by weight; wherein the insulation product has a density (x) between 0.2 pcf and 1.6 pcf, and R-value of from 13 to 49, and an area weight (W) from 0.1 to 2.0 lb/ft2; wherein the insulation product has a material efficiency (ME) defined by Equation (2): ME=R-value/W; and wherein the insulation product achieves a material efficiency that is no lower than a value (y) that satisfies Formula (VII) in the case of claim 1, and/or Formula (VI) in the case of claim 9. The language used is open, therefore the insulation product may comprise other materials (Wands factors (A) and (B)).
Glass insulation products comprising glass fibers with the diameters claimed and cross-linked formaldehyde-free resin in the loadings claimed appear well known in the prior art. See for example Sawyer (US 2009/0324915) at paragraphs [0007], [0017]-[0019], and [0088]-[0091]; Beaufils (US 2004/0112093) at paragraphs [0017]-[0018] and [0082]; Chacko (US 7993724) at col. 1, lines 40-46 and col. 5, lines 7-28; Hijon (WO 2018/130648) at paragraphs [26]-[31]; and Barthe (US 4759974) at col. 1, lines 15-29. While the prior art provides enough information to determine the material efficiency based on the equation provided by the specification, the prior art does not provide any guidance as to desirable bounds of material efficiency outside of specifying preferred R-values and area weights for the insulation. The prior art also does not explain how to modify ME without changing the claimed (y) value such that the ME value is greater than a value (y) that satisfies Formulas (VI) and (VII). (Wands Factor (C)).
As discussed above, the prior art recognizes the use of fiberglass, formaldehyde-free binder, R-values, and specific densities and area weights in insulation products. The prior art also discusses how some of these structural properties affect the final insulation properties of the insulation product. For example, Beaufils (US 2004/0112093) discloses that small diameter glass fibers can be used in insulation products without sacrificing high quality or recovery after compression while also allowing for the use of lower density products, which results in cost savings (paragraphs [0017], [0082]). Chacko (US 7993724) discusses how the lower the average diameter of the glass fibers used in the insulation element, the lower the thermal conductivity (i.e., the better the performance of the thermal insulation) (col. 4, lines 28-64). Barthe (US 4759974) teaches that thermal resistance will vary depending on the direction of orientation of the fibers to the measured heat flow (col. 4, lines 13-21), the fineness of the fibers affects the density needed to achieve a desired degree of thermal insulation (col. 13, lines 8-14; col. 17, lines 47-51), and that the thicker a product, the greater the thermal resistance (col. 17, lines 18-21).
From the teachings of Sawyer (US 2009/0324915) the ordinary artisan would recognize that for a set fiber diameter and insulation density, desired R-values can be acquired by adjusting the area density/thickness of the product (paragraphs [0089], [0091]). Additionally, as discussed starting at paragraph [00153] of the instant specification, the 1995 Saint Gobain publication also acknowledges that temperature, density, and mean diameter of the fibers have been found as a means to reduce thermal conductivity. It is therefore within the ambit of the ordinary artisan to determine the structure necessary for the desired insulation properties such as thermal conductivity and R-value of the insulation product, which in turn allows the ordinary artisan to determine the structure necessary to achieve a desired material efficiency determined by Equation (2) (Wands Factor (D)).
Based on the understanding of the prior art outlined above, particularly the data showing the impact of fiber diameter on thermal conductivity (and thus, the R-value) provided in the Saint Gobain publication, the ordinary artisan would understand that the thermal properties of the final insulation product are predictable based on the material of the insulation product (glass fibers) and the structure of the insulation product (fiber diameter, density, area weight, thickness). However, the instant specification describes starting at paragraph [00160] that the Formulas (VI) and (VII) deviate from the predictions based on the expectations of the prior art. Therefore the values of (y) from Formulas (VI) and (VII) and whether or not the material efficiency (ME) for a specific insulation product is no lower than this value (y) is not predictable.
For example, Swift (US 2009/0324915) at paragraphs [0088]-[0089] describes SUMMIT loose-fill blowing insulation as a fiberglass material with a fiber diameter of 9 ± 1.5 ht bonded with a cured formaldehyde-free binder with a product density of about 0.5 lbs/ft3. Swift provides 10 examples of area weights and thicknesses required to achieve desired R-values ranging from 11-60. None of the examples provided meet the required relationship of material efficiency (ME) and the value of (y) calculated from Formulas (VII) and (VI) even though the majority of examples are within the scope of claims 1 and 9 and all examples are within the scope of the specification.
Similar to the claimed invention, Swift at paragraphs [0090]-[0091] describes JET STREAM loose-fill blowing insulation as a fiberglass material with a fiber diameter of 7.5 ± 4.5 ht bonded with a cured formaldehyde-free binder with a product density of about 0.5 lbs/ft3. Swift provides another 10 examples of area weight and thicknesses required to achieve desired R-values ranging from 11-60. Of these 10 examples, only the example where the R-value is 11 meets the required relationship of material efficiency and the value of (y) calculated from Formulas (VII) and (VI). Therefore, out of 20 examples, only one meets the required relationship of material efficiency and the value of (y) calculated from Formulas (VII) and (VI), and while an R-value of 11 is contemplated by the instant specification (see e.g., Table 3) it is currently outside to scope of claims 1 and 9.
Claim 1 has been amended to specify the orientation of the fibers with respect to a plane defined by the length and the width of the insulation product. Paragraph [00149] of the specification as filed acknowledges that the orientation of fine diameter fibers has resulting in the formation of fibrous insulation products with surprisingly improved thermal performance and overall material efficiency. Similarly, the prior art also acknowledges the effect of fiber orientation on the final thermal properties of an insulation product (Barthe (US 4759974); col. 4, lines 13-21). However, neither the instant specification nor the prior art discuss how the orientation affects the value (y), or how it can be controlled to achieve an ME that is no lower than a value (y) that satisfies Formula (VII) and (VI).
Therefore, the prior art further shows that when provided with the structure of an insulation product, it cannot be predicted whether it meets the required relationship of material efficiency (ME) and the value of (y) calculated from Formulas (VII) and (VI) (Wands factor (E)).
As discussed at length above, the prior art teaches multiple embodiments where the insulation product has the structure disclosed by the claimed invention, but not necessarily the relationship between material efficiency and value of (y) from Formulas (VII) and (VI). The instant specification briefly mentions how the material efficiency may be affected by fiber orientation (paragraph [00149]) and as discussed above it is generally known how to adjust the R-value, which in turn adjusts the material efficiency, however the specification does not provide any guidance as to how to adjust the materials or structure of the insulation product to ensure the material efficiency (ME) is no lower than the value of (y) from Formulas (VII) and (VI). It is noted that as shown above only 1 in 20 of the embodiments in Swift meet the structural requirements of the claim but not the property relationship requirements. It is therefore not sufficient to only have knowledge of a suitable material efficiency (ME).
The instant specification discusses Formulas (VI) and (VII) starting at paragraphs [00161] and FIG. 15. It is explained that FIG. 15 illustrates a Formula (V) based on the predicted expected results [from the Saint Gobain publication] for an insulation product with an average fiber diameter of 3 microns and a thickness of 5.5 inches. FIG. 15 also illustrates the Formula (VI) which is based on the actual material efficiency of the inventive 3.6 micron insulation product with a thickness of 5.5 inches. The specification concludes at paragraph [0163] that at a given density, the inventive 3.6 micron insulation product demonstrates a higher material efficiency than predicted, based on an insulation product having an even smaller fiber diameter. However, other than the change in diameter, the specification does not explain in a replicable manner how the material, structure, or method of making the actual measured insulation product differs from the predicted insulation product such that the superior material efficiency was achieved. Particularly, the specification does not describe the orientation used, which appears to be a significant feature according to paragraph [00149] of the instant specification and the arguments.
Additionally, it is noted that the Formula (VI) appears to be a best fit line derived from the experimental data rather than a parameter used in the design of the insulation product. It is therefore not clear from the specification how the ordinary artisan can design an insulation product with a material efficiency that is no lower than the (y) value from Formula (VI) when the specification itself did not design the examples with the (y) value of formula (VI) in mind. Additionally it is noted that the y-axis in Fig. 15 is the ME. Therefore by definition, ME must equal the value (y) that satisfies Formula (VI).
Furthermore, Formula (VI) was derived from data for an insulation product where the fibers have a diameter of 3.6 microns (about 14 HT) and a thickness of 5.5 inches. As discussed at length previously, it is known in the prior art and acknowledged by Applicant that a change in diameter and product thickness affects the insulation properties of the insulation product. It is therefore unclear from the specification how to modify insulation products with diameters of 8-13.9 and 14.1-15 HT, which are within the scope of the claims, to meet the requirements of a Formula derived from a product with a diameter of 14 HT. Similarly, the Formulas rely on a density (x) and the material efficiency relies on an area density “W” and it is known in the art that thickness affects the thermal properties of the final product. Therefore, the thickness the examples were performed at is also significant to the relationship between the (y) value and the material efficiency, and it is not clear from the specification how to modify the insulation products with thicknesses other than 5.5 inches to meet the requirements of a Formula derived from a thickness of 5.5 inches.
As discussed above, it is the understanding of the Examiner that the Formula (VI) was derived from the actual measured values of material efficiency for insulation products at various densities. However, the scope of the claim does not require the material efficiency to be only equivalent to the value (y) of this best fit line, rather the claims state the material efficiency can be equal to or greater than the value (y). The specification provides no guidance as to how a material efficiency value that is greater than the actual, measured material efficiency value can be achieved.
With respect to Formula (VII), paragraph [00166] of the specification describes a variation value calculated as 2.1076693 at a 95% confidence level that can be used to account for natural product variation, thus adjusting Formula (VI) into Formula (VII). Since Formula (VII) is derived from Formula (VI), the above concerns discussed with Formula (VI) are also applicable to Formula (VII). Additionally, the specification does not describe what is varied within the product, how much it is expected to be varied, or how the variation value was determined. It is therefore unclear whether or not Formula (VII) is applicable to diameters outside of 3.6 microns and thickness outside 5.5 inches, and how it can be used to make and use an insulation product which meets the claimed material efficiency parameters (Wands Factor (F)).
As discussed above, it is the understanding of the Examiner that the Formula (VI) was derived from the actual measured values of material efficiency for insulation products at various densities. Therefore it appears that the claimed equation was derived from examples, rather than examples displaying the claimed material efficiency relationship being made and tested. Table 4 appears to provide working examples, however the (y) values for these examples are not provided. Example 1 provides a material efficiency that is greater than the (y) value for both Formulas (VI) and (VII), however Example 2 provides a material efficiency that is only greater than the (y) value for Formula (VII). Paragraph [00171] and Table 4 provide details of Examples 1 and 2 that are within the scope of the claims. In fact, the structural features of Examples 1 and 2 are nearly identical. Yet, only one provides a material efficiency greater than the (y) value for Formula (VI), and it is unclear why this is the case.
Table 3, while discussed in the section with respect to thermal conductivity, provides multiple embodiments which are within the scope of the claims. The embodiment where the fiber diameter is 8 HT and the R-value is 11 has a material efficiency that is no lower than the (y) values of both Formulas (VI) and (VII). However the embodiment where the fiber diameter is 15 HT and the R-value is 49 is greater than the (y) value in Formula (VII) but not (VI). For fibers with a diameter of 14 HT, which is the closest value to the diameter 3.6 microns which was used to derived the Formulas, when the R-value is 19 the material efficiency exceeds the (y) values for both Formulas (VI) and (VII), however, the embodiments with R-values of 20 and 21 provide material efficiencies that only exceed the (y) value for Formula (VII)1. It is noted both these latter embodiments have thickness of 5.5 inches, and therefore, based on the information provided, appear equivalent to the insulation products used to derive Formula (VII), but do not provide material efficiencies that meet Formula (VII).
Therefore, the working examples of the specification show that whether or not a material efficiency is no lower than a value (y) from the Formulas cannot be predicted, even when the same parameters are used. As such the working examples do not provide the ordinary artisan with guidance how to make and use the claimed invention (Wands Factor (G)).
Since the material efficiency being no lower than a value (y) for the formulas cannot be predicted as evidenced above and the specification does not provide guidance as to how to provide the necessary material efficiency to achieve the claimed relationship with the value (y) when the disclosed structure and materials are met, substantial experimentation and calculation would be required to determine whether a specific structure is within the scope of the claims (Wands Factor (H)).
In conclusion, how to adjust a material’s insulation properties (such as the R-value, which in turn would adjust the material efficiency) is known in the art. However, as shown by FIG. 15, the specification asserts that the material efficiency of the claimed invention is superior to the predicted value of material efficiency of the prior art. As shown by the prior art and the working examples there are many embodiments within the scope of the claims that do not meet the claimed Formula requirements, and only a few that do. As evidenced by the embodiments in Table 3, even using the same diameter and thickness as the insulation products used to derive the Formulas does not guarantee that the claimed material efficiency relationships are met. Therefore there is a low level of predictability as to whether an insulation product within the scope of the claims would provide a material efficiency that is no lower than a (y) value of the formulas. Additionally the specification does not alleviate this lack of predictability by providing guidance as to how to make an insulation product that meets the material efficiency limitations of the claims.
Therefore, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claims 2-8 are also rejected under 35 U.S.C. 112(a) based on their dependency from claim 1, rejected above.
Allowable Subject Matter
Claims 10-14 are allowed.
Response to Amendment
Response – Claim Rejections 35 USC §112
Applicant’s arguments filed January 9, 2026 have been fully considered and are not persuasive.
On page 8 of the response Applicant submits that ME is defined as R/W where R is T1/k is a predictable function of density, and that the specification provides a predictable path to achieve an ME greater than or equal to y as evidence by the working example data in Table 4.
The Examiner respectfully disagrees. Of the two working examples in Table 4, only Example 2 does not meet the requirements for claim 9. Additionally, paragraph [00171] states that each of the products of Example 1 and 2 were formed with a formaldehyde-free binder composition comprising a monomeric polyol and polymeric carboxylic acid crosslinking agents. Examples 1 and 2 had thicknesses of 5.5 inches and insulation values of R-22. The structural features of Examples 1 and 2 are nearly identical. Yet, only one provides a material efficiency greater than the (y) value for Formula (VI), and it is unclear why this is the case. Examples 1 and 2 and Table 4 do no discuss the (y) values from Formulas (VI) and (VII) at all, nor how the requirement that the ME be greater than the value (y) was accounted for in the design of the examples. Therefore Table 4 does not provide guidance as to how to achieve an ME greater than a value (y) that satisfies Formulas (VI) and (VII).
On page 8 of the response Applicant submits that Swift does not teach the now-claimed fiber orientation requirement which is critical to the ME value. Accordingly Applicant submits that not every insulation product within the broad ranges of fiber diameter, binder content, orientation, and density will necessarily achieve and ME of greater than or equal to y. Applicant concludes that the specification teaches how to select and control these parameters to do so.
These arguments are not persuasive. As discussed above, it is also known in the prior art that fiber orientation affects the thermal insulation properties of an insulation product (Barthe (US 4759974); col. 4, lines 13-21). However, neither the instant specification nor the prior art discuss how the orientation affects the value (y), or how it can be controlled to achieve an ME that is no lower than a value (y) that satisfies Formula (VII) and (VI). The instant specification and prior art both acknowledge multiple ways to modify the ME value, however neither provide guidance on how to modify the ME value in tandem with the (y) value such that the ME value is greater than the (y) value.
As discussed above it appears that the (y) value is a best fit line derived from the data in Fig. 15. ME is the y-axis of this graph therefore the ME value must equal the (y) value, as they are the same value. The instant specification provides no guidance as to how to change the ME value without changing the (y) value (or changing it to a different degree) when the (y) value is derived directly from the ME value.
On pages 8-9 of the response Applicant submits that ME is independent of thickness.
The Examiner respectfully disagrees. The arguments provided two equations for ME: ME=R/W and ME=1/(k*density). W=T1/k where T1 is the thickness, therefore the first equation depends on thickness. The arguments also acknowledge that density=W/T1. Therefore the second equation still depends on a thickness. The graph in Fig. 15, from which the Formulas (VI) and (VII) appear to be derived, is a plot of ME vs. density. If the length and width of an insulation product are held constant and the thickness is changed, the density will change accordingly. The instant specification also explicitly states at paragraph [0005]) that the insulating performance of a thermal insulation material is mainly determined by the ratio of the material’s thickness divided by its thermal conductivity. The higher the thickness and the lower the k-value, the better the insulating performance of the material. Therefore it is clear from the specification that thickness does affect both ME and the (y) values.
Conclusion
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 It is noted the value for “W” can be determined from Table 3 by multiplying the density by the thickness
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