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 of Group I (claims 37-54 and 56) in the reply filed on 04/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 46 is 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 claim recites, “a molar ratio of NH4+ to Ca2+ ranging from 5:1 to 1:5,” it is unclear what the claim limitations mean. Clarification is needed.
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.
Claims 37-39, 41, 42, 47-54, and 56 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by EP 3632866 (hereinafter, JOHANSSON).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 37, JOHANSSON teaches an aqueous binder composition for mineral fibers (Abstract) comprising a component (i) in form of one or more oxidized lignins including lignosulfonate [0025]; a component (ii) in form of one or more cross-linkers [0010-0013 and 0017].
Component (i) has a carboxylic acid group content of 0.05 to 10 mmol/g, more specifically 0.40 to 1.2 mmol/g, based on the dry weight of component (i) [0042].
Regarding claim 38, JOHANSSON teaches the composition comprises component (iii) in the form of one or more plasticizers [0057 and 0102].
Regarding claim 39, JOHANSSON teaches examples of the binder compositions [0193] wherein the amount of solids is 118.2 g (100 g of Kraft lignin, unoxidized and 18.2 lignin) and the mixture was diluted with water (0.402 g/g binder) which produces 0.37% of water (0.402 g of water/118.2 g of solids x 100 wt%). 0.37% satisfies ≤ 30% as claimed.
Regarding claim 41, JOHANSSON teaches the binder composition comprises component (i) has a carboxylic acid group content of 0.05 to 10 mmol/g, more specifically 0.45 to 1.0 mmol/g, based on the dry weight of component (i) [0042].
Regarding claim 42, JOHANSSON teaches the binder composition comprises component (i) has an average carboxylic acid group content of more than 1.5 groups per macromolecule of component (i) [0043]
Regarding claim 47, JOHANSSON teaches the aqueous binder composition comprises one or more carbohydrates selected from the group consisting of sucrose and reducing sugars in an amount of 5 to less than 50 wt% [0092].
Regarding claim 48, JOHANSSON teaches the binder composition comprises 1 to 50 weight% if component (a) [0146] based on the total weight of the binder (lignin (e.g., lignosulfionate).
Regarding claims 49-52, JOHANSSON teaches the binder composition comprising component (ii) is in form of one or more cross-linkers selected from β-hydroxyalkylamide-cross-linkers and/or oxazoline-cross-linkers [0045-0048]. The amount of component (iii) is in an amount of 1 to 40% based on the dry weight of component (i) [0056].
Regarding claim 53, JOHANSSON teaches the binder composition comprises component (iii) is in form of one or more plasticizers including polyethylene glycols and polyethylene glycol ethers [0057-0060 and 0064].
Regarding claim 54, JOHANSSON teaches the binder composition comprises a component (iv) in form of one or more coupling agents (e.g., organofunctional silanes) and a component in form of urea [0099-0100].
Regarding claim 56, JOHANSSON teaches a mineral fiber product comprising mineral fibers in contact with a cured binder composition comprising lignins, cross-linkers, and plasticizers [0102 and 0113].
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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over EP 3632866 (hereinafter, JOHANSSON) in view of KRUEGER et al. (U.S. Publication No. 2013/0210967, hereinafter KRUEGER).
Regarding claim 45, JOHANSSON substantially teaches the present invention, see paragraph 5 above. More specifically, JOHANSSON teaches an aqueous binder composition for mineral fibers (Abstract) comprising a component (i) in form of one or more oxidized lignins including lignosulfonate [0025]. In one embodiment, the binder composition comprises one or more lignosulfonate lignins [0125-0126].
However, JOHANSSON does not teach wherein component (i) comprises one or more of ammonium lignosulfonate, calcium lignosulfonates, magnesium lignosulfonates.
In the same field of endeavor of aqueous binder composition for granular and/or fibrous substrates (Abstract; [0103]), KRUEGER teaches the composition comprises b) at least one lignin compound [0006] which includes lignosulfonates, preferably calcium lignosulfonates, magnesium lignosulfonates, and/or ammonium lignosulfonates [0096]. It is advantageous to use lignosulfonates which have been obtained from so-called soft wood [0096].
Given JOHANSSON teaches the binder composition comprises one or more lignosulfonates, it would have been obvious to a person of ordinary skill in the art to have provided the calcium lignosulfonates, magnesium lignosulfonates, and/or ammonium lignosulfonates of KRUEGER with the binder composition of JOHANSSON for its art recognized function (i.e., obtained from soft wood) as taught in KRUEGER. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 37-54 and 56 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,612,782. Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
U.S. Patent No. ‘782 discloses a mineral fiber product, wherein the product comprises mineral fibers in contact with a binder resulting from a curing of an aqueous binder composition comprises a component (i) in the form of one or more lignosulfonate lignins having a carboxylic acid group content of from 0.03 mmol/g to 1.4 mmol/g and a content of phenolic OH groups of from 0.3 mmol to 2.5 mmol/g, both based on a dry weight of lignosulfonate lignins, a component (ii) in the form of one or more cross-linkers, with the proviso that the aqueous binder composition.
The scope of the present claims encompasses the scope of the claims in U.S. Patent No. ‘782.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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