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 1-35 in the reply filed on 3/12/2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5, 6, 7, 11, 12, 14, 15, 16, 17, 18, 23 and 24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claims use the language “Such as”. Such as means there are optional embodiments that are only suggested and not specifically claimed and therefore the claims are indefinite. The embodiments recited as “such as” are not considered for purposes of examination.
Claims 20, 21, 22, 27, 28, 29, 32, 33 and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 20, 21, 22, 27, 28, 29, 32, 33 and 35 recites the broad recitation, and the claim also recites a narrower recitation after the preferably statement which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-5, 7, 10-35 are rejected under 35 U.S.C. 103 as being unpatentable over Emborg (US20140314485) in view of Johansson et al (EP3632866 cited as US20220106508).
Emborg is directed to a water drain reservoir. Emborg teaches the invention relates to a water drain reservoir comprising a coherent man-made vitreous fibre substrate (MMVF substrate) and a conduit having two open ends, wherein the MMVF substrate comprises man-made vitreous fibres bonded with a cured binder composition, wherein a first open end of the conduit is in fluid communication with the MMVF substrate (ABST).
Emborg teaches a water drain reservoir comprising a coherent man-made vitreous fibre substrate (MMVF substrate) and a conduit having two open ends, wherein the MMVF substrate comprises man-made vitreous fibres bonded with a cured binder composition, wherein a first open end of the conduit is in fluid communication with the MMVF substrate [0007] and the water flows in conduit and is absorbed by the MMVF substrate and dissipated by the substrate [0008].
Emborg teaches the binder can be hydrophobic or hydrophilic [0051]-[0053].
Emborg differs and does not teach a binder of lignosulfonate lignin having carboxylic acid group and cross-linkers.
Johansson is directed to an aqueous binder composition (Title). Johansson teaches the present invention relates to an aqueous binder composition for mineral fibres, a method for producing a bonded mineral fibre product using said binder, and a mineral fibre product comprising mineral fibres in contact with a cured binder [0001]. There is provided a, preferably formaldehyde-free, comprising: a component (i) in form of one or more oxidized lignins; a component (ii) in form of one or more cross-linkers; a component (iii) in form of one or more plasticizers [0013]-[0016]. The oxidized lignin is a lignosulfate [0032], [0040]. The component (i) is having a carboxylic acid group content of 0.05 to 10 mmol/g, such as 0.1 to 5 mmol/g, such as 0.20 to 1.5 mmol/g, such as 0.40 to 1.2 mmol/g, such as 0.45 to 1.0 mmol/g, based on the dry weight of component (i) [0049]. Johassson teaches the carboxylic acid group on the lignosulfonate lignins overlaps the claimed range of 0.03 to 1.4 mmol/g. Johansson teaches addition of cross-linkers and plasticizers (claim 2).
Johansson teaches the carboxylic acid group of the oxidized lignins improve the cross-linking properties and allow for better mechanical properties of the cured mineral fiber products. Johansson teaches the object of the present invention to provide a binder composition which is particularly suitable for bonding mineral fibres, uses renewable materials as starting materials, reduces or eliminates corrosive and/or harmful materials, and is comparatively inexpensive to produce [0010].
Johansson teaches the lignin teaches the lignin is hydrophilic and hydrophobic [0028] and is both hydrophilic and hydrophobic and enhance solubility in water and facilitate the adhesion to polar substrates such as mineral fibers [0196].
As to claim 1 and 2, it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the hydrophilic or hydrophobic binders of Emborg with the lignosulfonate binder of Johansson motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 3, Emborg differs and does not teach the crosslinkers in the binder.
Johansson teaches the cross-linkers are β-hydroxyalkylamide-cross-linkers and/or oxazoline-cross-linkers [0054-[0055] and therefore does not teach the claimed cross-linkers as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claims 4 and 5, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches the component (i) is having a carboxylic acid group content of 0.05 to 10 mmol/g, such as 0.1 to 5 mmol/g, such as 0.20 to 1.5 mmol/g, such as 0.40 to 1.2 mmol/g, such as 0.45 to 1.0 mmol/g, based on the dry weight of component (i) [0049]. In one embodiment, the component (i) is having an average carboxylic acid group content of more than 1.5 groups per macromolecule of component (i), such as more than 2 groups, such as more than 2.5 groups [0050]. 1.5 is less than 1.8 as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 7, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches the aliphatic OH groups ore 1.6 to 2.11 which is in the claimed range of 1 to 8 mmol/g.
As to claim 10, Johansson teaches the reducing sugars are present in amount of 5 to 50% [0106] which overlaps the claimed range of 0-5%.
As to claim 11, Johansson teaches the amount of (i) as shown in the Table 1-5 wherein the oxidized kraft binder is 100 g and the primid is 2.5 grams and Momentive is 0.5. Primid is assumed to be the cross-linker and per weight of the lignin and cross-linker is 102.5 or 97.5% of the (i) as claimed.
As to claims 7, 10 and 11, it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claims 12, 13, 15 and 16, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches the cross-linkers are β-hydroxyalkylamide-cross-linkers and/or oxazoline-cross-linkers [0054-[0055] and therefore does not teach the claimed cross-linkers as claimed.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claims 14 and 17, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches the amount of (ii) crosslinker is 1-40% or 4-20% or 6-12 % based on dry weight of (i) which overlaps the claimed ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 18 and 19, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches (iii) is in the form a plasticizer selected from the group consisting of polyethylene glycols, polyethylene glycol ethers, polyethers, hydrogenated sugars, phthalates and/or acids, such as adipic acid, vanillic acid, lactic acid and/or ferullic acid, acrylic polymers, polyvinyl alcohol, polyurethane dispersions, ethylene carbonate, propylene carbonate, lactones, lactams, lactides, acrylic based polymers with free carboxy groups and/or polyurethane dispersions with free carboxy groups.
The component (iii) is in form of one or more plasticizers selected from the group consisting of polyethylene glycols, polyethylene glycol ethers [0069]-[0074]
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 20, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches use of plasticizers like polyethylene glycols and polyethylene glycol ethers having a boiling point of more than 100° C., in particular 140 to 250° C., strongly improves the mechanical properties of the mineral fibre products according to the present invention although, in view of their boiling point, it is likely that these plasticizers will at least in part evaporate during the curing of the aqueous binders in contact with the mineral fibres [0075].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 21, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches use of plasticizers component (iii) is in form of one or more polyethylene glycols having an average molecular weight of 150 to 50000 g/mol, in particular 150 to 4000 g/mol, more particular 150 to 1000 g/mol, preferably 150 to 500 g/mol, more preferably 200 to 400 g/mol. [0079] In one embodiment, component (iii) is in form of one or more polyethylene glycols having an average molecular weight of 4000 to 25000 g/mol, in particular 4000 to 15000 g/mol, more particular 8000 to 12000 g/mol. Overlaps the claimed range [0078].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claims 22-26, Emborg differs and is not specific to a lignosulfonate binder.
Johansson teaches the component (iii) is present in an amount of 0.5 to 50, preferably 2.5 to 25, more preferably 3 to 15 wt.-%, based on the dry weight of component (i) [0081].
As to claim 23, Johansson the aqueous binder composition according to the present invention comprises a further component (iv) in form of one or more coupling agents, such as organofunctional silanes[0100].
As to claim 24, Johansson a component (b), besides ammonia, one or more amino components, and/or any salts thereof, also comprises a comparably small amount of an alkali and/or earth alkali metal hydroxide, such as sodium hydroxide and/or potassium hydroxide [0187].
Component (b) comprises alkali and/or earth alkali metal hydroxides, such as sodium hydroxide and/or potassium hydroxide, as a component in addition to the ammonia, one or more amino components, and/or any salts thereof, the amount of the alkali and/or earth alkali metal hydroxides is usually small, such as 5 to 70 weight parts, such as 10 to 20 weight parts alkali and/or earth alkali metal hydroxide, based on ammonia [0188].
As to claim 25, Johansson teaches the binder composition can include urea[0139]. An aqueous binder composition according to any of the preceding claims, comprising a further component in form of urea, in particular in an amount 5 to 40 wt.-%, such as 10 to 30 wt.-%, such as 15 to 25 wt.-%, based on the dry weight of component (i) (claim 20).
As to claim 26, Johansson teaches use of Kraft lignin versus the oxidized Kraft lignin, see Tables 1-1 through 1-5.
As to claims 22-26, it would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the binder with a lignin binder motivated to enhance the solubility, improve adhesion and reduce the use of harmful materials.
As to claim 27-29, Emborg teaches a fluid drainage device with a first open end of a conduit is in communication with the MMVF substrate.
The MMVF substrate may have a passage which extends from a first end of the MMVF substrate, towards a second end of the MMVF substrate, wherein the first and second ends are opposed and wherein the first end of the passage is in fluid communication with water from the conduit, preferably a pipe. The passage may extend 10% to 100% of the way through the MMVF substrate, preferably 20% to 99% of the way through the MMVF substrate, preferably 50% to 99% of the way through the MMVF substrate, more preferably 80% to 95% of the way through the substrate. The advantage of the passage is that there is a greater area through which the water can flow into the MMVF substrate. The passage may have any cross-sectional shape, preferably circular, triangular or square [0017].
As to claim 30, Emborg teaches the water drainage device absorbs water [0020].
As to claim 31, Emborg teaches the water drains from a reservoir. FIG. 1 shows a MMVF substrate 1 that has been dug into the ground 2 in the vicinity of a house 3. The house 3 is provided with gutters 4 that collect water from the roof 5 and lead it to the MMVF substrate 1 via a drain pipe 6 and a conduit 7. The conduit 7 is in fluid communication with the MMVF substrate 1. The conduit 7 may butt up against the MMVF substrate 1, but preferably it is partly embedded in the MMVF substrate 1 in order to ensure that debris is not entering the conduit 7. In the part that is embedded in the MMVF substrate 1 the conduit 7 may be provided with apertures 8 to increase the fluid communication area between the conduit 7 and the MMVF substrate 1 [0073].
As to claim 32, Emborg teaches the MMVF is the fibre diameter is often in the range of 1 to 20 micron, preferably 3 to 5 micron [0039].
As to claims 33 and 35, Emborg teaches the dimensions of a water drain reservoir may be in the range: height 0.3-1.2 m; width 0.15-0.8 m; and length 0.5-1.5 m. The volume of a water drain reservoir may be 0.025-1.4 m3.The typical dimensions of a water drain reservoir according to the invention are 0.6 m x 0.2 m x 1.0 m (height x width x length). This provides a water drain reservoir with a volume of 0.12 m3, which has proven satisfactory for use in relation to a typical single family house. 0.12 m3 is equivalent to 120 liters and in the claimed range. The dimensions and thus the volume of a water drain reservoir may of course be varied depending on the actual use. A plurality of water drain reservoirs may also be combined to achieve the desired total volume as described earlier [0070].
As to claim 35, Emborg does to recite the water volume in meters per day. Emborg teaches the dimensions can be varied for the use.
It would have been obvious to one of ordinary skill in the art before the effective filing date to optimize the size of the drainage reservoir motivated to achieve the desired water collection volume.
As to claim 34, Emborg teaches the binder may be hydrophilic or a wetting agent can be used indicating that the wetting agent is optional [0048].
Allowable Subject Matter
Claims 6, 8 and 9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and the 35 USC 112(b) rejections are overcome. The prior art of record fails to teach or suggest the lignosulfonate binder with a phenolic OH in the range of 1.0 to 8.0 mmol/g (claim 6) and does not teach or suggest the lignosulfonates are magnesiumlignosulfonate, calciumlignosulfonate, ammoniumlignosulfonate and a combination in the claimed ratio (claims 8 and 9).
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 1-5, 7, 10-25, 27-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12209051. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant invention and the US Patent are directed to a method of draining water with a MMVF bonded with a lignin binder.
Claim 1-5, 7, 10-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-24 of copending Application No. 19003791 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to a method of draining water with a MMVF fibrous mat bonded with a lignin binder of the same composition. The copending application claims an oxidized lignin and is broader in scope that the instant invention and would incorporate the claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JENNIFER A STEELE/Primary Examiner, Art Unit 1789
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