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 .
Applicant has amended the claims to include limitations and ranges not previously considered. Support for the amendments has been identified by applicant. No new matter is presented.
Applicant has amended the claims to include limitations and ranges not previously considered thereby necessitating further search and consideration.
The amended claims and new limitations have necessitated amended grounds of rejection as below set forth. The amendments to the claims overcome the previous rejections under section 102. However, the prior art previously cited establishes grounds of rejection under section 103 by a preponderance of the evidence as more fully below set forth.
After further search and consideration of the amended claims new grounds of rejection citing to additional prior art are also below recited including new rejections under section 103.
The terminal disclaimer filed as to co-pending applications 12129201 and 11312654 were approved 8/25/2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/2025 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/14/2025 have previously been considered by the examiner.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
INTRODUCTION
The following is incorporated into each and every rejection below as though fully set forth therein.
The prior art teaches ranges which meet and/or overlap the instantly claimed ranges as well as ratios associated therewith. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
In some instances the prior art teaches a range so close as to render the claimed range obvious as more fully below set forth. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
The prior art teaches the adjustment of amounts as more fully below set forth to a desired liquidus and forming temperature. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The prior art having taught the claimed compositional components in ranges and ratios which overlap the claimed ratios will necessarily possess the claimed properties in ranges which overlap the instantly claimed properties including but not limited to forming temperature and liquidus temperature and difference of same as well as e modulus. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as obvious over Lewis (WO 2007/05029A2)
Regarding Claims :
Lewis (WO 2007/050529) discloses a composition of glass fibers comprising the claimed components in ranges and ratios which overlap the instantly claimed ranges and ratios. (See claim 1) reference as well as Table 1:
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As above set forth the ranges of each component of the instant claims are taught by the prior art in ranges which overlap same and also accordingly overlap the claimed ratios.
The composition has good fiberizing characteristics, high strength durability, high modulus of elasticity and very good thermal insulating and acoustical properties (P5 L1-8) and forming temperature of ab out 2600°F / 1426C -3000 °F (P3 L17-23) (sufficiently close to the instant range claim 5 esp. including 1400 °C as to render same obvious to one of ordinary skill in the art at the time of filing the invention where the reference range is “about”)
Further Regarding claims 6-8:
The glass fibers have a liquidous temperature of approximately 2400° F/1350°C (overlapping the range of claim 6) (P3 L20-26) (overlapping the difference as set forth in instant claim 6)
The composition has good fiberizing characteristics, high strength durability, high modulus of elasticity and very good thermal insulating and acoustical properties (P5 L1-8) and forming temperature of ab out 2600°F / 1426C -3000 °F (P3 L17-23) (sufficiently close to the instant range esp. including 1400 °C as to render same obvious to one of ordinary skill in the art at the time of filing the invention where the reference range is “about” so as to overlap the “difference” of instant claim 6) No other material is required in the composition other than the fibers (see reference claims and other citations above referenced) (overlapping claim 8)
Since the reference teaches the claimed composition with overlapping ranges of each component it would be expected to possess the same properties in ranges which meet and/or overlap the instantly claimed ranges, ratios and difference of claims 6-8. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Regarding Claim 9:
Lewis discloses the limitations above set forth. The composition may be used in aircraft blankets and is suitable for use in aircraft. The compositions provide a tightly bonded surface result in a very high strength and high chemical resistance and repel liquids when treated properly (P12 L12-20) and is sued in aircraft insulation (P5 L 15-20)
The composition is useful for fire resistant blankets or containers (i.e. organic medium) providing tough resistance at high temperatures (Abstract) The composition has good fiberizing characteristics high strength high durability at high temperature and high modulus of elasticity (P 1 L1-8)
(thereby rendering obvious the limitations of claim 9 – see instant specification where the fiber is in an organic medium used in aircraft, insulation, reinforcing materials, noncombustible materials and the like [0096])
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as obvious over Sakuma et al (US 2016/0193807)
Regarding Claims 1-9:
Sakuma et al US 2016/0193807 discloses a glass fiber composition [0025] comprising
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Overlapping the claimed ranges and ratios of claims 1-4 for example SiO.sub.2/Al.sub.2O.sub.57/20.2=2.82 Mg/CaO 5/5=1
No other material is required in the fibers in an amount of 5 % or more [0009]
Further Regarding claim 9:
The fibers are laminated with a resin (i.e. an organic medium) such as thermoplastic polyamide polyphenylene sulfide polycarbonate polyethylene terephthalate epoxy polyester [0047]
Further Regarding claims 5-8:
Since the reference teaches the claimed composition with overlapping ranges of each component it would be expected to possess the same properties in ranges which meet and/or overlap the instantly claimed ranges of claims 7-8. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
Claim(s) 1-2 and 5-9 is/are rejected under 35 U.S.C. 103 as obvious over Peters et al (US 2012/0060678)
Regarding Claims 1-2 and 5-9
Peters et al (US 2012/0060678) teaches a glass fiber comprising the instantly claimed chemical component in overlapping ranges with some examples showing points within the claimed range but not a single example having all of the claimed points. As such the reference showing overlapping ranges renders the instant claims obvious.
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(overlapping the ranges and ratios of claims 1-2)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
For examples where certain points of each component are taught see below:
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Tf 1247° C(meeting claim 5)
Tf-Tl 72°C (meeting claim 6)
53.74 SiO.sub.2 (meeting the limitations of claims 1-2 and 4)
15.44 Al2O3 (meeting claim 4)
TiO2 0.65 (meeting claim 2)
53/74/15.44 =3.48 SiO.sub.2/Al2O3 (meeting claim 1)
MgO/CaO 10.53/3.83 =2.74 (meeting claim 1)
Li2O+Na2O+K2O 0.14 (meeting claim 1)
Being 100 % of the glass fiber meeting claim 8.
A composition comprising the glass fiber and a polymeric resin such as polycarbonate, polyethylene, etc. (i.e. an organic medium) See claims 1 and 5 of reference
Further Regarding claims 5-6:
The constituents of the glass composition suitable for use in some embodiments of the present invention can be selected based on a desired forming temperature and/or a desired liquidous temperatures. [0041] See [0041] for examples of forming temperatures and liquidus temperatures and difference which meet and/or overlap the instantly claimed ranges
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Further Regarding Claims 7:
Peters discloses the limitations above set forth.
Peters teaches a range of E modulus overlapping and encompassing that of the instant claims.
The E modulus is 73.84 to 81.80 GPa (overlapping the range of claim 7 ) [0111]
The glass fibers have a forming temperature at 1000 viscosity no greater than 1370 C [0070] (within the range of claim 5) and the difference between the forming temperature and the liquidus temperature is at least 55 °C greater than the liquidus temperature (overlapping the range of claim 6) [0070]
See reference at [099] where the compositions may have a Youngs modulus of 86.65 to 91.5 GPa (overlapping claim 7)
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
See MPEP 2144.05(I): "In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)"
(the reference does not teach the limitations of instant claims 3-4)
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cao et al (EP 3470382A1)
Regarding claims 1-9:
Cao et al (EP 3470382A1) discloses a composition comprising glass fiber comprising:
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The prior art teaches 57.4 % SiO.sub.2 rendering obvious the claimed 57.3 % and 19.8 wt.% of Al.usb.2O.sub.3 rendering obvious 20 wt. % as well as overlapping the claimed ratios of instantly amended claims 1 and 3-4 -SiO.sub.2 / Al.sub.2O.sub.3. (i.e. 57.4/17=2.89)
[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The instant claims as amended now recite a range of SiO.sub.2 with an upper limit of 57.3. The examiner maintains the difference of 0.1 % and a lower limit of 20% for Al2O3 with a difference of 0.2 % - the examiner maintains these differences are insufficient to distinguish the claimed invention from the prior art esp. in the absence of evidence of criticality of ranges.
The glass liquidus temperature is not greater than 1240°C [0036][0062]
The composition has higher modulus and improved forming properties lowering the liquidus temperature crystallization rate and bubble amount of glass and broadens the temperature (dela T) for fiber formation [0102]
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Where the example A5 has a forming temperature of 1308°C meeting the range of claim 5 for 1400° or less and a temperature difference of forming and liquidus of 97°C meeting limitation of claim 6 for 30° C or more and an elastic modulus of 93.8 GPA meeting claim 7 for 80 GPa or more.
The examples set forth forming temperature liquidus temperature Delta T and elastic modulus of the claimed ranges. While the amount of the SiO.sub.2 of the examples differs, the overall ranges taught by the prior art for each component of the instant claims are ranges which are so close to that of the instant claims the properties of claims 5-7 will be expected to meet (see examples) and/or overlap the instantly claimed ranges of the properties set forth in claims 5-7. 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The composition produces a glass fiber and may comprise greater than 99 wt.% of the glass fiber. (Abstract)[0066] See [0064] and example A5 which are the composition for producing the glass fiber totaling more than 95 mass %(meeting claim 8)(Abstract)
The glass fiber may be in combination with organic and/or inorganic materials for composites with improved characteristics [0099] meeting claim 9 for organic medium.
The composition can significantly increase the glass modulus, effectively reduce the glass crystallization rate, secure a desirable temperature range (T) for fiber formation and enhance the refinement of molten glass, thus making it particularly suitable for high performance glass fiber production with refractory-lined furnaces (Abstract) (further motivating one of ordinary skill in the art at the time of filing the invention to utilize the amounts and ratios to optimize the above performance and goals – and overlapping the claimed ranges of elastic modulus, forming temperature, liquidus temperature and Delta T)
Response to Arguments
A terminal disclaimer has been filed as to the double patenting rejections over co-pending 12129201 and 11312654. Accordingly, the rejections are not re-recited.
Amended and new grounds of rejection necessitated by the amendment to claims are above set forth. New/amended grounds of rejection are also above recited now under section 103 citing to the previous prior art as well as new prior art now relevant to the amended claims.
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
As above set forth additional/new prior art is recited setting forth rejections under section 103 with overlapping ranges and ratios thereby establishing a prima facie showing of obviousness by a preponderance of the evidence.
The examiner notes that no evidence of criticality of ranges commensurate in scope with the claims is submitted with the remarks filed 12/29/2025.
[A] prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (emphasis added by examiner)
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)(emphasis added by examiner)
The examples set forth forming temperature liquidus temperature Delta T and elastic modulus of the claimed ranges. While the amount of the SiO.sub.2 of the examples differs, the overall ranges taught by the prior art for each of the other claimed components of the instant claims are ranges which meet (and examples which are within the claimed range) or are so close to that of the instant claims that the properties of claims 5-7 will be expected to meet (see examples) and/or overlap the instantly claimed ranges of the properties set forth in claims 5-7 and are not patentably distinct.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” 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, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
In the interest of compact prosecution to cite the prior art closest to the instantly claimed invention, the rejection over the prior art Zhang is withdrawn at this time though said prior art remains relevant.
The examiner notes that applicants remarks are directed to the ranges taught by the prior art in the examples. This is not persuasive. As above set forth the references previously cited for which rejections are above maintained each teach points within the claimed ranges in the examples for certain components of the claimed invention and/or points so close that absent evidence of criticality of ranges establish a prima facie showing of obviousness. The references also teach ranges of all of the components in overlapping amounts and ratios. As such the prior art renders obvious the instant claims as more fully above set forth. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968))
Further Regarding the previously cited references for which rejections are maintained: as more fully above set forth the references teach adjusting the composition to optimize properties is within the ken of one of ordinary skill in the art at the time of filing the invention.
For example Cao: The glass liquidus temperature is not greater than 1240°C [0036][0062] The composition has higher modulus and improved forming properties lowering the liquidus temperature crystallization rate and bubble amount of glass and broadens the temperature (dela T) for fiber formation [0102]
The composition can significantly increase the glass modulus, effectively reduce the glass crystallization rate, secure a desirable temperature range (T) for fiber formation and enhance the refinement of molten glass, thus making it particularly suitable for high performance glass fiber production with refractory-lined furnaces (Abstract) (further motivating one of ordinary skill in the art at the time of filing the invention to utilize the amounts and ratios to optimize the above performance and goals – and overlapping the claimed ranges of elastic modulus, forming temperature, liquidus temperature and Delta T)
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
For the above reasons the rejections under Section 103 are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732