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 .
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.
Claims 7, 9, 14, 24, 27, 29–33, and 35–40 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.
Regarding the rejected claims, the phrases "preferably," “more preferably,” “more preferred,” “in particular,” and “such as” render the claims indefinite because it is unclear whether the limitations following each phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim(s) 1, 5, 6, 8, 9, 14–22, and 25–41 are rejected under 35 U.S.C. 103 as being unpatentable over Warmerdam (US 2021/0282335 A1) in view of Johansson (EP 3 632 866 A1). For examination purposes, the Examiner relies upon the US version (US 2022/0106508 A1) of the EP document.
Warmerdam teaches the formation of a roof drainage system, wherein the system comprises a friction or attenuation layer 810 made of inorganic fibers, such as glass fibers, that slows the flow of water through the system, a waterproof layer 706 below the friction layer, and at least one drainage point in fluid communication with the water attenuation layer and arranged to direct water away from the flat roof structure. Warmerdam abstract, ¶¶ 93, 104, 119, 127, 196, Figs. 6, 9. The drainage system may be used on flat or sloped roofs. Id. ¶¶ 93, 105, 111, 132.
Warmerdam fails to teach that the inorganic fiber attenuation layer comprises an aqueous binder composition free of phenol and formaldehyde comprising one or more lignosulfonate lignins having a carboxylic acid group content of 0.03 to 2.0 mmol/g based on the dry weight of the lignosulfonate lignins and one or more crosslinkers.
Johansson teaches an aqueous binder composition for mineral fibers in the making of a cured binder mineral fiber product for use as a filtering and insulation material in roofing applications. Johansson abstract, ¶ 168. The mineral fibers are man-made vitreous fibers and the binder is desirably free of phenol and formaldehyde, while being made from renewable materials. Id. ¶¶ 5–9, 25, 163. The binder composition may comprise one or more lignosulfonate lignins having a carboxylic acid group content of 0.45 to 1.0 mmol/g and one or more crosslinkers. Id. ¶¶ 13, 20, 36, 49, 53, 180.
It would have been obvious to one of ordinary skill in the art to have looked to Johansson for specific guidance as to selecting a particular glass fiber fabric for use in Warmerdam drainage system in order to successfully practice the invention.
Claim 5 is rejected as the drainage layer 704 may serve as the claimed surface finish as it is located on the surface of the water attenuation layer. See id. Fig. 8. Claim 6 is rejected as the layers of the roof drainage system, which includes a water attenuation layer, may be formed of an array of water attenuation elements. Warmerdam ¶¶ 5, 74. Claim 8 is rejected as neither Warmerdam nor Johansson teaches the use of a wetting agent for the water attenuation elements.
Although Warmerdam and Johansson do not explicitly teach the claimed feature water attenuation elements having a contact angle with water of less than 90o, it is reasonable to presume that said property is inherent to combined prior art. Support for said presumption is found in the use of like materials (i.e. glass fibers with a cured binder of the claimed composition). The burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed property of water attenuation elements having a contact angle with water of less than 90o would obviously have been present one the prior art product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, 517 F.2d 947 (CCPA 1975).
Claims 15–17 are rejected as the crosslinker selected in Johansson is not required to be an epoxy compound, carbonyl compounds, or polyamines. See Johansson ¶¶ 53–63. Claim 18 is rejected as the aqueous binder of Johansson may further comprise a plasticizer. Id. ¶¶ 65–91. Claim 20 is rejected as the aqueous binder may include a lignosulfonate lignin having an average carboxylic acid group content of more than 1.5 groups per macromolecule. Id. ¶ 50. Claims 21 and 22 are rejected as the lignosulfonate lignin has a content of phenolic OH groups of 3.2 mmol/g and a content of aliphatic OH groups of 1.6 mmol/g. Id. Table A 3. Claim 25 is rejected as the aqueous binder of Johansson does not require sugar. Id. ¶¶ 20–25. Claims 26 and 29 are rejected as crosslinker (component ii) may range in weight of the one or more lignosulfonate lignins (component i) from 1 to 40 percent. Id. ¶ 64. Claims 27, 28, and 30 are rejected as the crosslinker may be a β-hydroxyalkylamide. Id. ¶ 54. Claims 33–36 are rejected as the aqueous binder composition of Johansson may further comprise polyethylene glycol with average molecular weights of 150 to 1,000 g/mol and a boiling point of 140–250oC. Id. ¶¶ 66–78. The plasticizer may be present in the aqueous binder preferably 3 to 15 weight percent of the lignosulfonate lignin dry weight. Id. ¶ 81. Claim 38 is rejected as the aqueous binder may further comprise one or more coupling agents, such as organofunctional silanes. Id. ¶ 100. Claim 39 is rejected as the aqueous binder may further comprise ammonia. Id. ¶ 204. Claim 40 is rejected as the binder composition may further comprise urea at levels of 5–40 weight percent of the lignosulfonate lignin. Id. ¶ 104. Claim 41 is rejected as ammonia-oxidized lignin is not required by the binder composition.
Claim(s) 2–4, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Warmerdam and Johansson as applied to claim 1 above, and further in view of Beckers (US 2014/0190107 A1).
Warmerdam teaches that the roof drainage system may be used on flat roof structures, but fails to further describe that the flat roofs are warm roofs or inverted roof structures.
Beckers teaches an insulation element for use on flat roofs, wherein the flat roofs may be warm roof or inverted roof structures. Beckers abstract, ¶¶ 4–7. Warm roofs comprise thermal insulation immediately below roof covering, typically a waterproof membrane. Id. ¶ 7. The insulation elements include adhesively bonded layers of mineral fibers having a more preferred basis weight of 140–180 kg/m3 and a thickness of 100 mm. Id. ¶¶ 30, 40.
It would have been obvious to one of ordinary skill in the art to have used the Warmerdam roof drainage system on warm roof or inverted roof structures. The motivation for such a modification is based upon the fact warm roofs and inverted roof structures are well known types of flat roofs in the art and the ordinarily skilled artisan would have needed a particular roof structure onto which the drainage system would be applied. See id. ¶ 4. Claim 4 is rejected as obvious as to lowest layer of the Warmerdam structure is a waterproof layer that is put on the surface of a flat roof and Beckers teaches that thermal insulation is placed immediately below roof structures like those of Warmerdam. Additionally, it would have been obvious to one of ordinary skill in the art to have looked to Becker for suitable basis weights and thicknesses for the inorganic fiber layer of Warmerdam in order to successfully practice the invention.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Warmerdam and Johansson as applied to claim 1 above, and further in view of Hawkins (US 2011/0223364 A1).
Warmerdam fails to teach a diameter for the inorganic, glass fibers.
Hawkins teaches glass fiber insulation products comprising an aqueous binder composition that includes lignin sulfonate for use in roofing products, wherein the glass fibers have a diameter of in a range of 3 to 6 microns. Hawkins abstract, ¶¶ 24, 66, 78–80, 89.
It would have been obvious to one of ordinary skill in the art to have looked to Hawkins for guidance as to suitable glass fiber diameters in order successfully practice the invention of Warmerdam – glass fiber insulation products for use in roofing.
Claim(s) 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Warmerdam and Johansson as applied to claim 1 above, and further in view of Allais (US 2018/0002225 A1).
Warmerdam and Johansson fail to teach the use of lignosulfonate lignins comprising the combination of ammonium lignosulfonates and calcium lignosulfonates.
Allais teaches the use of an aqueous fiber for mineral fibers, in particular glass fibers, wherein the binder includes ammonium lignosulfonate, which provides resistance to fire or preferably calcium lignosulfonate. Allais abstract, ¶¶ 27–29.
It would have been obvious to one of ordinary skill in the art to have used ammonium lignosulfonate as the lignosulfonate as ammonium lignosulfonate would provide the aqueous binder with fire resistance. Additionally, it would have been obvious to have used a combination of ammonium lignosulfonate and calcium lignosulfonate as they are to two preferred lignosulfonates as set forth in Allais. Furthermore, absent a demonstration of criticality, it would have been obvious to have used the ammonium and calcium lignosulfonates within the claimed ratios as since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim Objections
Claims 12 and 13 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D MATZEK whose telephone number is (571)272-5732. The examiner can normally be reached M-F 9:30-6.
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/MATTHEW D MATZEK/Primary Examiner, Art Unit 1786