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 February 24, 2026 has been entered. Claims 28-36 and 38-47 are pending in the application. Claim 37 is newly canceled. Claims 28, 33, and 36 are amended and supported in the claims and Specification as originally filed.
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 28-33, 35, 38, and 40-47 are rejected under 35 U.S.C. 103 as being unpatentable over Kazuo et al. (JP H0663528 A; English translation incorporated herewith; hereafter as “Kazuo”) in view of Holy et al. (US 2002/0028857 A1; hereafter as “Holy”).
Regarding Claims 28, and 41-42, Kazuo teaches a soundproofing material obtained by dibribration of waste paper [Claim 1], corresponding to the binder composition for mineral fibers of Claim 28. Kazuo further teaches:
Water in said composition [¶ 0021], corresponding to the aqueous composition of Claim 28;
Ozone-oxidized lignin [¶ 0012; Claim 1], corresponding to component (i) in the form of one or more oxidized lignins of Claim 28;
Crosslinkers [¶ 0012], corresponding to component (ii) in the form of one or more the cross-linkers of Claim 28; and
Polyethylene glycol [¶ 0012; Claim 1], corresponding to component (iii) in the form of one or more plasticizers of Claim 28, and thereby reading on the polyethylene glycol of Claims 41-42.
However, Kazuo does not explicitly teach the specific crosslinkers listed of Claims 28, 33 and 35, or the amount of crosslinkers of Claim 40.
Nevertheless, Holy teaches a degradable polymer composition comprising lignin, plasticizers, and crosslinking agents, such as ethyleneimide [Claim 1; ¶ 0081, 0201], thereby reading on the polyethylene imide of Claims 28 and 33, and the aziridine of Claim 35. Holy also teaches crosslinking agents can comprise 0 to 5 wt. % based on the total weight of the polymer composition, and 0 to 25 wt. % of lignin based on the total weight of the polymer composition [Claim 1], which is equivalent to 0 to 20 wt. % of crosslinking agent with respect to the lignin content of the composition, which corresponds with 1 wt. % to 40 wt. % of component (ii) based on the weight of component (i) of Claim 40.
Holy offers the motivation that lignins can be derivatized with ethyleneimide [¶ 0068].
Kazuo and Holy are considered to be analogous art as the claimed invention, as all are in the same field of compounds comprising lignins, plasticizers, and crosslinkers such as ethyleneimide.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the ethyleneimide of Holy to the material of Kazuo, with the reasonable expectation of successfully derivatizing the lignin, thereby arriving at the claimed invention.
Regarding Claims 29-30, Kazuo further teaches:
Oxidizing kraft lignin [Claim 1], thereby reading on the kraft lignin of Claim 29, and oxidized kraft lignin of Claim 30;
Regarding Claims 31-32, however, Kazuo is silent to wherein component (i) has a carboxylic acid group content of from 0.05 mmol/g to 10 mmol/g, based on a dry weight of component (i) of Claim 31, and wherein component (i) has an average carboxylic acid group content of more than 1.5 groups per macromolecule of component (i) of Claim 32.
Nevertheless, Kazuo further teaches the amount of carboxylic group content can be adjusted to obtain the desired amount of crosslinking [¶ 0012]. Therefore, the amount of the carboxylic group content can be optimized to reach the desired crosslinking via a routine optimization. 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). 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 carboxylic groups for the intended application via a routine optimization, thereby obtaining the present invention.
Kazuo teaches water [¶ 0021-0022], corresponding to the water of Claim 45.
Regarding Claims 38, 44-45, however, Kazuo does not explicitly teach the urea of Claim 44 or the coupling agent of Claim 45.
Nevertheless, Holy teaches:
Polyvinyl alcohol [Claim 1], thereby reading on the polymer which contains reactive functional groups of Claim 38;
the crosslinking agent preferably has a Urea active site [¶ 0190], corresponding to the urea of Claim 44; and
vinyltrimethoxysilane [Claim 31; ¶ 0362, 0401], corresponding to the coupling agent of Claim 45.
Holy offers the motivation that degradable plastics based upon amide polymers have improved stability under normal storage conditions and moisture can toughen the final polymer product [¶ 0061]. Holy further teaches that polymers containing alcohol moieties strengthen polymers while not adversely affecting the biodegradability and composability of the polymer composition [¶ 0042].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the polyvinyl alcohol, urea and vinyltrimethoxysilane of Holy to the material of Kazuo, with the reasonable expectation of successfully improving the stability and strength of the polymer without comprising its biodegradability, thereby arriving at the claimed invention.
For the purposes of examination, the term “optionally” of Claim 45 is interpreted to mean non-essential, and that any claim with optional limitations may be considered whole and complete without the optional limitations.
Regarding Claims 43, 46-47, Kazuo further teaches:
Polyethylene glycol in a weight ratio of 30 % of less of the ozone-oxidized lignin [Claim 1], corresponding to 0.5 wt. % to 50 wt. % of component (iii) based on the weight of component (i) of Claim 43;
A method for producing a soundproofing material [Claim 1], corresponding to a method of producing a bonded mineral fiber product of Claim 46; and
soundproofing material [Claim 1], corresponding to a mineral fiber product of Claim 47.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuo et al. (JP H0663528 A; English translation incorporated herewith; hereafter as “Kazuo”) in view of Holy et al. (US 2002/0028857 A1; hereafter as “Holy”) and Hitchman et al. (WO 2005021714 A; hereafter as “Hitchman”).
Kazuo and Holy teach the oxidized lignin, crosslinker and plasticizer of Claim 28 as set forth above and incorporated herein by reference.
However, Kazuo and Holy are silent to the cross-linkers in the form of an aliphatic multifunctional carbodiimide.
Nevertheless, Hitchman teaches linkers such as N,N'-dicyclohexylcarbodiimide [Page 136; Lines 1-4], which corresponds to the claimed aliphatic multifunctional carbodiimide.
Hitchman offers the motivation that linking groups, such as N,N'-dicyclohexylcarbodiimide, can be an alternative to traditional amide bond linkages [Page 136, Lines 4-5].
Kazuo, Holy and Hitchman are considered to be analogous art as the claimed invention, as all are in the same field of compounds comprising lignins and crosslinkers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the N,N'-dicyclohexylcarbodiimide of Hitchman, with the motivation to use an alternative amide bond linkage, to the material of Kazuo and Holy, thereby arriving at the claimed invention.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuo et al. (JP H0663528 A; English translation incorporated herewith; hereafter as “Kazuo”) in view of Holy et al. (US 2002/0028857 A1; hereafter as “Holy”) and Fournier et al. (WO 2018138450 A1; English translation incorporated herein; hereafter as “Fournier”).
Kazuo and Holy teach the oxidized lignin, crosslinker and plasticizer of Claim 28 as set forth above and incorporated herein by reference.
However, Kazuo and Holy are silent to the cross-linkers in the form of (3-hydroxyalkylamide cross-linkers and/or oxazoline cross-linkers of Claim 36.
Nevertheless, Fournier teaches crosslinking agents such as 1,3-phenylene-bis-oxazoline [Claim 9], which read on the oxazoline cross-linkers of Claim 36.
Fournier offers the motivation that 1,3-phenylene-bis-oxazoline is capable of initiating a crosslinking reaction with lignin in less than 10 minutes [¶ 0065].
Kazuo, Holy and Fournier are considered to be analogous art as the claimed invention, as all are in the same field of preparations of lignins, crosslinkers and plasticizers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the 1,3-phenylene-bis-oxazoline of Fournier, with the motivation of initiating a fast crosslinking reaction, to the material of Kazuo and Holy, thereby arriving at the claimed invention.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Kazuo et al. (JP H0663528 A; English translation incorporated herewith; hereafter as “Kazuo”) in view of Holy et al. (US 2002/0028857 A1; hereafter as “Holy”) and Atsushi et al. (CN 106133813 A; translation incorporated herein; hereafter as “Atsushi”) as evidenced by Chemical Book (“Glycerol triglycidyl ether”; hereafter as “ChemicalBook”).
Kazuo and Holy teach the oxidized lignin, crosslinker and plasticizer of Claim 28 as set forth above and incorporated herein by reference.
However, Kazuo and Holy are silent to a molecule having 3 or more epoxy groups of Claim 39.
Nevertheless, Atsushi teaches epoxy crosslinking agents such as glycerol triglycidyl ether [¶ 0139], which has three epoxy groups [Chemical Book], thereby corresponding with a molecule having 3 or more epoxy groups of Claim 39.
Atsushi offers the motivation that cross-linking agents may be appropriately chosen in consideration of the cohesive force and the prevention of peeling during the durability test [¶ 0140].
Kazuo, Holy and Atsushi are considered to be analogous art as the claimed invention, as all are in the same field of binding materials comprising lignins, plasticizers and crosslinkers.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the as glycerol triglycidyl ether of Atsushi, with the motivation of preventing peeling, to the material of Kazuo and Holy, thereby arriving at the claimed invention.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
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 28-29, 32, 36, 40-44 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 23-25, 30-37 of co-pending Application No. 17/995107. Although the claims at issue are not identical, they are not patentably distinct from each other because the aqueous binder composition for mineral fibers comprising kraft lignins, crosslinkers, and plasticizers, anticipate the instantly claimed aqueous binder composition for mineral fibers comprising oxidized lignins, crosslinkers, and plasticizers. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 28-33, 36, 38-46 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-28 of prior U.S. Patent No. 12410349. This is a statutory double patenting rejection.
Response to Arguments
Applicant's arguments filed February 24, 2026 have been fully considered but they are not persuasive.
Applicant argues on Page 11 of the Remarks submitted on 02/24/2026 that (1) Kazuo fails to disclose any of the cross-linkers recited in claim 28, and on Pages 11-12 of the Remarks that (2) it would not be obvious to modify the composition of Kazuo to include the cross-linkers recited in present claim 18 because Kazuo does not teach or suggest the use of any alternative cross-linkers. However, attention is directed to the disclosure above wherein Kazuo is no longer relied upon the teach the claimed crosslinking agents. Rather, Holy is relied upon to teach the claimed crosslinkers of Claim 28. More specifically, Holy teaches a degradable polymer composition comprising lignin, plasticizers, and crosslinking agents, such as ethyleneimide [Claim 1; ¶ 0081, 0201], thereby reading on the polyethylene imide of Claim 28. Holy offers the motivation that lignins can be derivatized with ethyleneimide [¶ 0068] which would motivate one of ordinary skill to add the ethyleneimide to the soundproofing material of Kazuo, thereby arriving at the claimed invention. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 12 of the Remarks submitted on 02/24/2026 that (3) the binder of Kazuo is used to bind particles of sludge incineration ash and pulp raw material which is entirely different from the mineral fiber products of the instant claims. However, the pulp raw material of Kazuo contains the lignins, which corresponds with the claimed lignins. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 13 of the Remarks submitted on 02/24/2026 that (4) there is no indication in Allais that dextrin would function as a cross-linker in the absence of a carbonyl containing compound, on Page 13 that (5) Kazuo and Allais do not relate to the same types of binder compositions, and on Pages 13-14 that the combination of Kazuo and Allais do not teach or suggest any of the remaining cross-linkers recited in present claim 28. However, Allais is no longer relied upon to teach dextrin. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 14-15 of the Remarks submitted on 02/24/2026 that (7) Hitchman discloses the aliphatic multifunctional carbodiimide N,N’-dicyclohexyl-carbodiimide, but in an entirely unrelated field of application and not in the context of a binder composition, and there is no teaching or suggestion in Hitchman that aliphatic multifunctional carbodiimides are suitable as cross-linkers for lignin-based binders, let alone for oxidized lignin based binders for mineral fiber products. However, Hitchman is of the same field of art as the instant application in that both comprised oxidized lignins [Page 7, Lines 13-14], and crosslinkers, such as N,N'-dicyclohexylcarbodiimide, can be an alternative to traditional amide bond linkages [Page 136, Lines 4-5]. In addition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, applicant’s argument is not persuasive.
Applicant argues on Page 15 of the Remarks submitted on 02/24/2026 that (8) the monomers and hardening agents of Alberty are used to prepare resins that can be used to seal fractures in wellbore walls which is an entirely different field than the claimed binder composition, and on Pages 15-16 that (9) there is no reason for one of ordinary skill in the art to select specifically lignin an aziridines from the long list of compounds presented in Alberty, and there is no indication that such a combination would be suitable in binder compositions for mineral fiber products. However, Alberty is no longer relied upon to teach the claimed monomers and hardening agents. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 17 of the Remarks submitted on 02/24/2026 that (10) Atushi is directed towards transparent resin layers and discloses glycerol trigylcidyl ether as a cross-linker in the context of (meth)acrylic polymers. However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art, such as how glycerol trigylcidyl ether can function as a cross-linkiner in the context of lignins and (meth)acrylic polymers, cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 17-18 of the Remarks submitted on 02/24/2026 that (11) the present claims are distinguished from those of co-pending Application No. 17/995,107 at least in that they require the presence of oxidized lignin, whereas the claims of the co-pending application require the presence of kraft lignin (nonoxidized lignin). Examiner acknowledges the instant application requires oxidized lignins and co-pending Application No. 17/995,107 requires kraft lignins. However, kraft lignins include oxidized lignins. The instant Claim 29 even lists kraft lignins as a form of oxidized lignins. Thus, the statutory double patenting rejection over co-pending Application No. 17/995,107 is maintained.
Applicant requests on Page 18 of the Remarks submitted on 02/24/2026 that (12) the statutory double patenting rejection over US12410349B2 be clarified. The amended statutory double patenting rejection over US12410349B2 is set forth above.
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.
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.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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