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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 112, 102, and 103 (or as subject to pre-AIA 35 U.S.C. 112, 102, and 103) is incorrect, any correction of the statutory basis 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.
Status of the Claims
Any rejections and or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claims 1, 2, 5-7, 9, 19, 20, 23-25, 30, 31, 33, and 55-59 are currently pending.
Claims 3, 4, 8, 10-18, 21, 22, 26-29, 32, and 34-54 have been cancelled.
Claims 1, 2, 5-7, 9, 19, 20, 23-25, 30, 31, 33, and 55-59 are currently rejected.
Claims 1, 2, 5-7, 9, 19, 20, 23-25, 30, 31, 33, and 55-59 are rejected under 35 U.S.C. § 103 as being unpatentable over Olds et al., U.S. Patent, US 5,714,421 A.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
After careful review of the five United Kingdom applications and the International Application PCT/GB2021/0052665, it has been determined that the claims of the instant invention are fully supported only in the International Application. Therefore, the effective filing date for the instant application is 14 October 2021.
Terminal Disclaimer
The terminal disclaimer filed on 12 June 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,554,991 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 2, 5-7, 9, 19, 20, 23-25, 30, 31, 33, and 55-59 are rejected under 35 U.S.C. § 103 as being unpatentable over Olds et al., U.S. Patent, US 5,714,421 A.
As to claim 1, Olds et al. teach an inorganic fiber composition comprising in terms of weight percentages, 58.5 to about 68.9% of SiO2, about 18.1 to about 40.5% of CaO, about 0.11 to about 16.4% of MgO, 0 to about 1.5% of Al2O3, 0 to about 4.5% of ZrO2, 0 to about 8.41% of B2O3, 0 to about 2.9% of Fe2O3, 0 to about 2.6% of Na2O, and 0 to about 10% of TiO2. See Abstract and the entire specification, specifically, claim 1, in column 25 of Olds et al.
Olds et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 1. However, the weight percent ranges taught by Olds et al. read on inorganic fibers comprising 61.0-70.8 wt% of SiO2, 27.5-38.9 wt% of CaO, >0-1.5 wt% of MgO, and optionally an amount of other components providing a balance up to 100 wt%, wherein the sum of SiO2+CaO is at least 98.2 wt% and the amount of Al2O3 is limited to at most 0.67 wt% as recited in instant claim 1. The compositional ranges of Olds et al. have overlapping compositional ranges with instant claim 1. See claim 1 of Olds et al. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Olds et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Olds et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to the MgO limitation where the MgO is configured to suppress crystallite growth at 1100 °C, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges of MgO would have the same crystal growth suppression as recited in claim 1. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 2, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges and if subjected to a heat treatment at 1100 °C for 24 hours would have an average crystallite size of surface crystallite grains in the range of 0-0.9 µm, as recited in claim 2. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 5, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges of SiO2 would inhibit reactivity of the inorganic fibers, such that the fibers are non-reactive with mullite when in contact at 1200°C for 24 hours as recited in claim 5. See MPEP 2112.
As to claim 6, Olds et al. teach that the fibers have a SiO2 content of 58.5 to about 68.9 wt%, (see claim 1 of Olds et al.), which reads on the fibers comprising less than 69.6 wt% as recited in instant claim 6.
As to claim 7, Olds et al. teach that the fibers have a CaO content of about 18.1 to 40.5 wt% (see claim 1 of Olds et al.), which reads on the fibers comprising at least 28.5 wt% of CaO as recited in instant claim 7.
As to claim 9, Olds et al. teach the fibers comprise 58.5 to about 68.9 % of SiO2 and about 18.1 to about 40.5% of CaO (see claim 1 of Olds et al.), which reads on the fibers comprising a sum of SiO2+CaO of at least 98.4 % as recited in instant claim 9.
As to claim 19, Olds et al. teach a fiber that comprises about 0.11-about 16.4 wt% of MgO, 5.5-about 68.9% of SiO2, and about 18.1-about 40.5% of CaO (see claim 1 of Olds et al.), which reads on a fiber comprising 0.10-0.85wt% of MgO, and a sum of SiO2 and CaO of at least 98.8 wt%. Additionally, Olds et al. teach a fiber comprising MgO or other components, wherein one of ordinary skill in the art would expect that a glass with overlapping compositional ranges would have the average crystallite size of surface crystallite grains formed after heat treatment at 1100°C for 24 hours as recited in claim 19.
As to claim 20, Olds et al. teach an inorganic fiber composition comprising in terms of weight percentages, 58.5 to about 68.9% of SiO2, about 18.1 to about 40.5% of CaO, about 0.11 to about 16.4% of MgO, 0 to about 1.5% of Al2O3, 0 to about 4.5% of ZrO2, 0 to about 8.41% of B2O3, 0 to about 2.9% of Fe2O3, 0 to about 2.6% of Na2O, and 0 to about 10% of TiO2. See Abstract and the entire specification, specifically, claim 1, in column 25 of Olds et al.
Olds et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 20. However, the weight percent ranges taught by Olds et al. read on inorganic fibers comprising 61.0-70.8 wt% of SiO2, 27.5-38.9 wt% of CaO, up to 1.5 wt% of MgO, and optionally other components providing a balance up to 100 wt%, wherein the sum of SiO2+CaO is at least 98.2 wt% and the amount of Al2O3 is limited to at most 0.67 wt%, and greater than 0.0 to less than 1.7 wt% of the sum of oxides and non-oxides of one or more of lanthanides, Sr, Ba, Cr, Zr, Hf, Fe or combinations thereof as recited in instant claim 20. The compositional ranges of Olds et al. have overlapping compositional ranges with instant claim 20. See claim 1 of Olds et al. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Olds et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Olds et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to the MgO limitation where the MgO is configured to suppress crystallite growth at 1100 °C, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges of MgO would have the same crystal growth suppression as recited in claim 20. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 23, Olds et al. teach the fibers comprise 58.5 to about 68.9 % of SiO2 and about 18.1 to about 40.5% of CaO (see claim 1 of Olds et al.), which reads on the fibers comprising a sum of SiO2+CaO of at least 98.6 % as recited in instant claim 23.
As to claim 24, Olds et al. teach the fibers comprise 58.5 to about 68.9 % of SiO2 and about 18.1 to about 40.5% of CaO (see claim 1 of Olds et al.), which reads on the fibers comprising a sum of SiO2+CaO of at least 98.8 % as recited in instant claim 24.
As to claim 25, Olds et al. teach the fiber can comprise 0-about 2.9 wt% of Fe2O3 and 0-about 4.5 wt% of ZrO2 (see claim 1 of Olds et al.), which reads on the inorganic fiber comprising other components in a range of 0.05 to less than 1.5 wt% of the sum of oxides and non-oxides of lanthanides, Sr, Ba, Cr, Zr, Hf, Fe, and combinations thereof, as recited in instant claim 25.
As to claim 30, Olds et al. teach a fiber comprising 0-about 2.9 wt% of Fe2O3 and 0-about 4.5 wt% of ZrO2 (see claim 1 of Olds et al.), which reads on the inorganic fiber comprising other components in a range of 0.05 to less than 1.3 wt% of the sum of oxides and non-oxides of lanthanides, Sr, Ba, Cr, Zr, Hf, Fe, and combinations thereof, as recited in instant claim 30.
As to claim 31, Olds et al. teach that the fibers have a SiO2 content of 58.5 to about 68.9 wt%, (see claim 1 of Olds et al.), which reads on the fibers comprising greater than 66.0 wt% of SiO2 as recited in instant claim 31.
As to claim 33, Olds et al. teach a fiber comprising 0-about 4.5 wt% of ZrO2 (see claim 1 of Olds et al.), which reads on the inorganic fiber comprising other components in a range of 0.05 to 1.0 wt% of the sum of oxides and non-oxides of lanthanides, Sr, Ba, Cr, Zr, and combinations thereof, as recited in instant claim 33.
As to claim 55, Olds et al. teach an inorganic fiber composition comprising in terms of weight percentages, 58.5 to about 68.9% of SiO2, about 18.1 to about 40.5% of CaO, about 0.11 to about 16.4% of MgO, 0 to about 1.5% of Al2O3, 0 to about 4.5% of ZrO2, 0 to about 8.41% of B2O3, 0 to about 2.9% of Fe2O3, 0 to about 2.6% of Na2O, and 0 to about 10% of TiO2. See Abstract and the entire specification, specifically, claim 1, in column 25 of Olds et al.
Olds et al. fail to teach any examples or compositional ranges that are sufficiently specific to anticipate the compositional limitations of claim 55. However, the weight percent ranges taught by Olds et al. read on inorganic fibers comprising 65.7-69.0 wt% of SiO2, 30.0-34.2 wt% of CaO, 0.10-2.0 wt% of MgO, and optionally an amount of other components providing a balance up to 100 wt%, wherein the sum of SiO2+CaO is at least 97. wt% and the amount of Al2O3 is limited to at most 0.80 wt% as recited in instant claim 55. The compositional ranges of Olds et al. have overlapping compositional ranges with instant claim 55. See claim 1 of Olds et al. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected from the overlapping portion of the ranges disclosed by Olds et al. because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill in the art before the effective filing date would have considered the invention to have been obvious because the compositional ranges taught by Olds et al. overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of the fact that;
“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages”, In re Peterson 65 USPQ2d 1379 (CAFC 2003).
Also, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974) and MPEP 2144.05.
As to the MgO limitation where the MgO is configured to suppress crystallite growth at 1100 °C, one of ordinary skill in the art would expect that a glass with overlapping compositional ranges of MgO would have the same crystal growth suppression as recited in claim 55. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
As to claim 56, Olds et al. teach that the fibers have a Al2O3 content of 0 to about 1.5 wt%, (see claim 1 of Olds et al.), which reads on the fibers comprising less than 0.63 wt% of Al2O3, as recited in instant claim 56.
As to claim 57, Olds et al. teach that the fibers have a MgO content of about 0.11 to about 16.4 wt%, (see claim 1 of Olds et al.), which reads on the fibers comprising at most 0.80 wt% of MgO, as recited in instant claim 57.
As to claim 58, Olds et al. teach the fibers comprise 58.5 to about 68.9 % of SiO2 and about 18.1 to about 40.5% of CaO (see claim 1 of Olds et al.), which reads on the fibers comprising a sum of SiO2+CaO of at least 98.6 % as recited in instant claim 58.
As to claim 59, Olds et al. teach the fibers comprise 0-about 1.5wt% of Al2O3, about 0.11-about 1.4 wt% of MgO, 58.5 to about 68.9 % of SiO2 and about 18.1 to about 40.5% of CaO (see claim 1 of Olds et al.), which reads on the fibers comprising 0.10-0.60 wt% of MgO, 0-0.50 wt% of Al2O3, and a sum of SiO2+CaO of at least 99.0 % as recited in instant claim 59.
Response to Arguments
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive.
Applicant argues that the glass of Olds et al. do not teach that the glass is added in a specified amount of MgO in order to suppress the crystalline growth at 1100 °C. This is not found persuasive since the compositional ranges of Olds et al. overlap the instant claims. Overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. Furthermore, Olds et al. does not teach that the inorganic fibers have crystals.
Applicant argues that the instant claims recite that the MgO is configured to suppress crystallite growth and that Olds et al. does not teach that the MgO is added to suppress crystal growth. Examiner respectfully disagrees. This argument appears to be towards a rational not employed, therefore it does not appear to be relevant. Applicant argues that Olds et al. does not recognize magnesia as a result-effective variable, however, this is not a convincing argument. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. V. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property, which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)). In the instant case, Olds et al. disclose a range of MgO which overlaps with the claimed range in order to form the basis of the rejection as detailed in the rejection of claims above; whether Olds et al. appreciates MgO as a results effective variable with respect to the suppression of crystallites is immaterial.
Conclusion
The additional references cited on the 1449 filed 30 March 2023 and the prior 892 have been cited as art of interest since they are considered to be cumulative to or less than the art relied upon in the rejections above. Specifically, WO 94/15883 A1 by Jubb, US 2005/0233887 A1 by Jubb et al., and GB 2 383 793 A by Freeman et al., which teach inorganic fibers having compositional ranges which render obvious at least instant claim 1.
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 Elizabeth A. Bolden whose telephone number is (571)272-1363. The examiner can normally be reached 10:00 am to 6:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Elizabeth A. Bolden/Primary Examiner, Art Unit 1731
EAB
5 July 2026
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