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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on 5/11/2026 is acknowledged.
Claims 12-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/11/2026.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Chen et al. (2003/0008978).
Regarding claims 3-4: Chen et al. teach a binder comprising Acumer 9932, a carboxyl group-containing polymer having a Mw of 4,000 g/mol [0028] and glycerin (a polyhydric alcohol), with the claimed molar ratio [Properties Example 4; Table 3].
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.
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) 1, 2, 5, 6, 8, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (2003/0008978).
Regarding claims 1, 2, 5 and 6: Chen et al. teach a binder comprising Acumer 9932, a carboxyl group-containing polymer with a hypophosphite group, having a Mw of 4,000 g/mol [0028] and a polyhydroxy crosslinking agent, with the claimed molar ratio [Properties Example 4; Table 3]. Chen et al. teach a short, finite list of polyhydroxy crosslinking agents [claim 6]. It would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to select ethylene glycol [claim 6] as the polyhydroxy crosslinking agent for the example of Chen et al. It is a simple substitution of one known element for another to obtain predictable results.
Regarding claim 8: Chen et al. teach a silane coupling agent [0010, 0028; Claims 12-13].
Regarding claim 10: Since the composition is the same as claimed, it will possess the claimed viscosity. The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 11: This claim is being interpreted as an intended use of the binder. The binder of Chen et al. is capable of functioning in the claimed capacity, for fibers [0039].
Claim(s) 7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (2003/0008978) as applied to claim 1 above further in view of Rodrigues et al. (2004/0254290).
Chen et al. teach a silane coupling agent [0010, 0028; Claims 12-13].
Chen et al. fail to teach a polyamine.
However, Rodrigues et al. teach adding polyethyleneimine in combination with a polyol as a crosslinker in a fiberglass binder composition [0037].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add polyethyleneimine as taught by Rodrigues et al. to the binder composition of Chen et al. to facilitate crosslinking of the binder polymer. It is obvious to combine separately taught prior art ingredients which perform the same function; it is logical that they would produce the same effect and supplement each other. In re Crockett 126 USPQ 186. See MPEP 2144.06.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN E USELDING/ Primary Examiner, Art Unit 1763
Prosecution Insights