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 .
Election/Restrictions
Applicant’s election of Group I, claims 24- 42 in the reply filed on 08/15/202542 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 24-26, 29, and 31-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20110159768 A1(US’768).
Regarding claims 24-26, US’768 discloses a nonwoven composite formed from an aqueous binder composition and fibers, slivers, chips or particulate matter. The nonwoven composite is chosen from fiberglass, polyester, and stone wool. See [0014]. The aqueous binder composition comprising a component of one or more ethylenically unsaturated carboxy acid-grafted lignin or lignosulfonate having the polymerized units of ethylenically unsaturated carboxy acid monomer in the acid-grafted lignosulfonate make up from 1 wt. % to 50 wt. % of the total weight of the acid-grafted lignosulfonate (read on component I, when the weight% is converted to mmol/g), a component of one or more oxazoline-functional group containing polymer or resin(read on component ii) and triethanolamine (read on component iii). See claims 1 - 6 and [0042].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). It is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
US’768 discloses lignosulfonate is grafted with ethylenically unsaturated carboxy acid monomer (methacrylic acid) through free radical polymerization to provide functionality that will react with sulfonate groups present on the lignin to promote improved moisture resistance. Thus, the content of carboxylic acid groups would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the claimed invention. 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). Accordingly, one of ordinary skill in the art would have optimized, by routine experimentation, the content of carboxyl groups to reach the desired properties of the binder, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding claim 29, US’768 discloses the grafted lignosulfonate used in the results below consisted of an ammonium lignosulfonate grafted with 10% methacrylic acid (based on lignosulfonate solids). See [0086].
Regarding claim 31,no sugar is added.
Regarding claims 32 and 35, US’768 disclose the aqueous binder composition comprising a component of one or more ethylenically unsaturated carboxy acid-grafted lignin or lignosulfonate and a component of one or more oxazoline-functional group containing polymer or resin in a solids weight ratio of from 50:50 to 98:2. See claim 1.
Regarding claims 33 - 34, US’768 disclose the aqueous binder composition comprising a component of one or more ethylenically unsaturated carboxy acid-grafted lignin or lignosulfonate and a component of one or more oxazoline-functional group containing polymer or resin in a solids weight ratio of from 50:50 to 98:2. See claim 1.
Regarding claims 36-38, US’768 discloses an excess of one or more β-hydroxyamine such as ethanolamine. See [0042]. Triethanolamine has the claimed boiling point.
Claim(s) 24, 29-30, 32, 35, 40- 42 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012172262(WO’262), further in view of US 20110159768 A1(US’768)
Regarding claim 24, WO’262 discloses an insulating product based on mineral wool bonded by a composition comprising at least one sodium, calcium, potassium, magnesium or ammonium lignosulfonates, at least one oligosaccharide such as sucrose (crosslinker), and at least one crosslinking catalyst and urea and glycerol playing the role of plasticizers. See page 4, paragraphs 5-12.
But it is silent about the lignosulfonate lignins having a carboxylic acid group content as applicants set forth in claim 24.
US’768 discloses a nonwoven composite formed from an aqueous binder composition and fibers, slivers, chips or particulate matter. The nonwoven composite is chosen from fiberglass, polyester, and stone wool. See [0014]. The aqueous binder composition comprising a component of one or more ethylenically unsaturated carboxy acid-grafted lignin or lignosulfonate having the polymerized units of ethylenically unsaturated carboxy acid monomer in the acid-grafted lignosulfonate make up from 1 wt. % to 50 wt. % of the total weight of the acid-grafted lignosulfonate. See claim 6.
US’768 discloses lignosulfonate is grafted with ethylenically unsaturated carboxy acid monomer (methacrylic acid) through free radical polymerization to provide functionality that will react with sulfonate groups present on the lignin to promote improved moisture resistance. In addition, the carboxylated lignin is formulated with a hydrophobic oxazoline stabilized latex which also provides functionality for reaction of the grafted carboxylic acid groups for improved wet strength. See [0003].
Thus, it would have been obvious to one of ordinary skill in the art to use ethylenically unsaturated carboxy acid-grafted lignin or lignosulfonate having the polymerized units of ethylenically unsaturated carboxy acid monomer in the acid-grafted lignosulfonate making up from 1 wt. % to 50 wt. % of the total weight of the acid-grafted lignosulfonate in WO’262’s composition, motivated by that fact that US’768 discloses thatlignosulfonate is grafted with ethylenically unsaturated carboxy acid monomer (methacrylic acid) through free radical polymerization to provide functionality that will react with sulfonate groups present on the lignin to promote improved moisture resistance. See [0003].
US’768 discloses lignosulfonate is grafted with ethylenically unsaturated carboxy acid monomer (methacrylic acid) through free radical polymerization to provide functionality that will react with sulfonate groups present on the lignin to promote improved moisture resistance. Thus, the content of carboxylic acid groups would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the claimed invention. 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). Accordingly, one of ordinary skill in the art would have optimized, by routine experimentation, the content of carboxyl groups to reach the desired properties of the binder, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding claims 29-30, WO’292 disclose the sodium, calcium, potassium, magnesium or ammonium lignosulfonates. See page 4, paragraph 9. "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) However, when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claims 32 and 35, WO’262 discloses that the lignosulfonic acid salt preferably represents 10 to 70% of the weight of the mixture consisting of the lignosulfonic acid salt and the oligosaccharide, advantageously 10 to 60% and better still 10 to 50%. See page 5, paragraphs 1 and 9.
Regarding claim 40, WO’262 discloses that 0 to 30 parts of urea and/or glycerol, preferably 0 to 20 parts based on 10-70 parts lignosulphonic acid salt. See page 5, first paragraph. See page 5, paragraphs 1 and 9.
Regarding claim 41, WO’262 discloses urea and/or glycerol is used as plasticizer. See page 5, paragraph 9.
Regarding claim 42, WO’262 discloses an insulating product based on mineral wool bounded by a composition comprising at least one sodium, calcium, potassium, magnesium lignosulfonates. See page 4, paragraph 9.
Claim(s)27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20110159768 A1(US’768), as applied to claim 24 above, and further in view of US 20130213550 A1(US’550).
Regarding claims 27-28, US’768 is silent about the hydroxyl content as applicant set forth in claims 27-28.
US’550 discloses the lignin derivatives may, for example, have an aliphatic hydroxyl content of from about 0.1 mmol/g to about 8 mmol/g; about 0.4 mmol/g to about 7 mmol/g; about 0.6 mmol/g to about 6.5 mmol/g; about 0.8 mmol/g to about 6 mmol/g. The lignin derivatives may have any suitable phenolic hydroxyl content such as from about 2 mmol/g to about 8 mmol/g. See [0044] and [0046].,
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use the claimed hydroxyl group content in the teaching of US’768 composition, motivated by the fact that US’550 discloses that such ligin can reduce incidence of pre-curing. See [0014].
Claim(s) 36-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2012172262(WO’262) and US 20110159768 A1(US’768) as applied to claim 24 above, and further in view US 2016/0168435 A1(US’435).
Regarding claims 36- 39, US’435 discloses an adhesive material comprising polyalkylene glycol with a molecular weight of from 5,000 to 15,000 daltons (5,000 to 15,000 g/mol) selected from polyethylene glycols, polypropylene glycols and polyethylene-polypropylene glycols. See [0053], claim 1, and 5. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use as a plasticizer the low molecular weight PEG of US’435 to modify the binder composition of WO’262 and US’768 motivated by that fact that by doing so can improve substrate adhesion strength, particularly wet adhesion strength for adhesive composition applicated to substates [0026]. The PEG has the claimed boiling point.
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.
Claims 24-25,33-34,36-38 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 61-66 of copending Application No. 1799103(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a product with similar components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24-26 and 30-40 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 47, 28- 45 of copending Application No. 17995102(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a product with similar components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 24-25,33-35, and 36-37 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-36 of copending Application No. 17995104 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications disclose a product with similar components.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 24-26, and 33-39 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9,13-18 and 21-28of U.S. Patent No.12410349B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and the patent disclose a product with similar components.
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731