CTNF 18/269,561 CTNF 71114 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Preliminary Amendment The preliminary amendment filed on August 16, 2024 has been entered. Claims 1-4, 6-8, 10-15, 17-23, and 25-32 are pending. Claim Objections Claims 1, 7, 11, 15, and 32 are objected to because of the following informalities: In claim 1, line 10, there is a duplicated recitation of “(i)”, i.e., “(i) a component (i)”. It is suggested that the first occurrence be deleted. In claim 1, line 13, there is a duplicated recitation of “(ii)”, i.e., “(ii) a component (ii)”. It is suggested that the first occurrence be deleted. In claim 7, line 4, line 4, the term “M_n wt. average” is an unconventional term. It is suggested that this term be changed to “number average molecular weight”. In claim 11, line 4, the term “1.5” should be changed to “1:5”. In claim 15, line 2, there is a double comma after the term “claim 1,,”. In claim 32, line 13, the term “M_n wt. average” is an unconventional term. It is suggested that this term be changed to “number average molecular weight”. In claim 32, lines 30 and 31, the recitation that option (l) includes either “(i)” and/or “(ii)” creates an issue where there are multiple different components labeled as “(i)” and “(ii)” (see independent claim 30). 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. Claims 7, 11 and 32 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. In claim 7 (lines 3-4) and claim 32 (lines 12-13), the phrase “has an average carboxylic acid group content of less than 1.8 groups per macromolecule considering the M_n wt. average (number average molecular weight)” is indefinite. It is not clear what the “considering the M_n wt. average” means with respect to the carboxylic acid group content. In claim 11, the preliminary amendment deleted the terms “[wherein] component (i) comprises ammonium lignosulfonates and calcium lignosulfonates” which renders the claim indefinite because the claimed molar ratio of ammonium to calcium requires that both of these lignosulfonates be present. Double Patenting 08-33 AIA 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 1-4, 6-7, 12-15, 17-23, and 25-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12,410,349. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘349 are directed to a mineral fiber product. However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘349 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘349 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 2) having carboxylic acid groups within the presently claimed range (claim 7) and a one or more crosslinkers (claim 1). The claims of US ‘349 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 (col 13, lines 13-15). Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration (col 12, lines 55-60). Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘349 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). Claims 1-4, 6-7, 12-15, 17-23, and 25-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/995,102. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘102 are directed to a mineral fiber product (claim 47). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘102 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘102 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 29) having carboxylic acid groups within the presently claimed range (claim 31) and a one or more crosslinkers (claim 28). The claims of US ‘102 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘102 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-7, 12-15, 17-23, and 29-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/995,103. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘103 are directed to a mineral fiber product (claim 53). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘103 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘103 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 62) having carboxylic acid groups within the presently claimed range (claim 64) and a one or more crosslinkers (claim 61). The claims of US ‘103 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘103 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-7, 12-15, 17-23, and 29-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/995,104. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘104 are directed to a mineral fiber product (claim 24). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘104 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘104 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 31) having carboxylic acid groups within the presently claimed range (claim 33) and a one or more crosslinkers (claim 30). The claims of US ‘104 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘104 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-8, 10-15, 17-23, 26-27, and 29-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 17/995,106. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘106 are directed to a mineral fiber product (claim 24). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘106 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘106 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 24) having carboxylic acid groups within the presently claimed range (claim 24) and a one or more crosslinkers (claim 24). The claims of US ‘106 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘106 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-8, 10-15, 17-23, and 25-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/259,353. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, claims 1-4, 6-8, 10-15, 17-23, and 25-29 are directed to a façade system, whereas the claims of US ‘353 are directed to a mineral fiber insulation element (claim 22). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘353 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘353 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 22) having carboxylic acid groups within the presently claimed range (claim 22) and a one or more crosslinkers (claim 22). The claims of US ‘353 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 and claims that the batt material has a density in the range of 20-200 kg/m 3 (claim 11). Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘353 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-8, 10-15, 17-23, and 25-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/270,348. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘348 are directed to a mineral fiber product (claim 56). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘348 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘348 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 37) having carboxylic acid groups within the presently claimed range (claim 37) and a one or more crosslinkers (claim 37). The claims of US ‘348 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 80-1400 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘348 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claims 1-4, 6-8, 10-15, 17-23, and 25-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/270,363. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims overlap and slightly varying in scope. Specifically, the present claims are directed to a façade system and insulation element for a façade system, whereas the claims of US ‘363 are directed to a mineral fiber product (claim 22). However, this distinction is not a patentably distinct, since the mineral fiber product of US ‘363 would be “capable of being fixed to an outer surface of a building by mechanical fastening elements and/or an adhesive’ (present claim 1, lines 6-8) and used as a façade. US ‘363 discloses a mineral fiber product comprising a lignosulfonate lignin (claim 22) having carboxylic acid groups within the presently claimed range (claim 22) and a one or more crosslinkers (claim 22). The claims of US ‘363 do not set forth the bulk density of the mineral fiber product. However, the disclosure states that these products have a density of from 6-250 kg/m 3 . Further, the disclosure states that the density is a result effective variable based on the curing temperature and duration. Thus, it would have been obvious to one of ordinary skill in the art to have prepared the mineral fiber product of US ‘363 having a density within the claimed range though routine experimentation motivated by the desire to obtain an insulation material having desired physical properties. See MPEP 2144.05 that states “"[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). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim s 1-4, 6-8, 10, 12-15, 17-23, and 25-32 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 632 866 . Regarding claims 1, 6, and 30, EP ‘866 discloses a façade system [0119] having an insulation element that comprises a bonded mineral fiber product containing a cured aqueous binder free of formaldehyde [0209]. The aqueous binder composition prior to curing comprises a component (i) of a lignosulfonate lignin having a carboxylic acid group content 0.05 to 10 mmol/g (claim 6) and a component (ii) one or more cross-linkers (claim 1). The density of the insulation element is preferably in the range of from 20 to 200 kg/m 3 [0121]. Both the carboxylic acid group content and density ranges of the insulation element of EP ‘866 overlap with the presently claimed ranges. As set forth in MPEP 2144.05, “[i]n 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). Regarding claims 2 , 31, and 32, EP ‘866 discloses that the aqueous binder composition can additionally comprising a plasticizer (claim 1). Regarding claim 3, EP ‘866 discloses that the insulation element has a LOI within the range of 0.3 to 18.0%. Regarding claim 4, EP ‘866 does not set forth the compression strength and/or delamination strength of the insulation element. However, since the same materials in the same amounts are being used to prepare the insulation element, it is reasonable to conclude that the insulation element of EP ‘866 would have the same compression and delamination strength. See MPEP 2112. Regarding claim 7, EP ‘866 discloses that component (i) has an average carboxylic acid group content of 1.5 groups per macromolecule [0042]. Regarding claim 8, EP ‘866 discloses the use of a lignin having an aliphatic OH group of 2.11 (Table A-3). Regarding claim 10, EP ‘866 discloses the use of an ammonia-oxidized lignin [0038]. Regarding claim 12, EP ‘866 discloses that the binder can further contain a sugar [0091]. Regarding claim 13, EP ‘866 discloses that the lignin component (i) can be present within the claimed range (Examples). Regarding claims 14, 17, and 18, EP ‘866 discloses the use of the claimed cross-linkers (claims 9 and 11; [0046]). Regarding claims 15 and 19, EP ‘866 discloses that the cross-linkers can be present in an amount from 1-40 wt% of the binder (claim 13). Regarding claims 20-23, EP ‘866 discloses the use of the claimed plasticizers (claim 14). Regarding claim 25, EP ‘866 discloses that the binder can further contain a coupling agent (claim 18). Regarding claims 26 and 27, EP ‘866 discloses that the binder can further contain urea in an amount of 5 to 40 wt% [0090]. Regarding claim 28, EP ‘866 discloses that the binder can further contain reactive or non-reactive silicones (claim 21). Regarding claim 29, EP ‘866 discloses that the binder can be void of ammonia-oxidized lignin materials [0039]. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781 Application/Control Number: 18/269,561 Page 2 Art Unit: 1781 Application/Control Number: 18/269,561 Page 3 Art Unit: 1781 Application/Control Number: 18/269,561 Page 4 Art Unit: 1781 Application/Control Number: 18/269,561 Page 5 Art Unit: 1781 Application/Control Number: 18/269,561 Page 6 Art Unit: 1781 Application/Control Number: 18/269,561 Page 7 Art Unit: 1781 Application/Control Number: 18/269,561 Page 8 Art Unit: 1781 Application/Control Number: 18/269,561 Page 9 Art Unit: 1781 Application/Control Number: 18/269,561 Page 10 Art Unit: 1781 Application/Control Number: 18/269,561 Page 11 Art Unit: 1781 Application/Control Number: 18/269,561 Page 12 Art Unit: 1781 Application/Control Number: 18/269,561 Page 13 Art Unit: 1781 Application/Control Number: 18/269,561 Page 14 Art Unit: 1781 Application/Control Number: 18/269,561 Page 15 Art Unit: 1781