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 .
DETAILED ACTION
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 7-8 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.
Claim 7 recites a much broader Markush group listing from which the protein can be selected than the claim 1 group. The claim 1 language requires the group “comprises”. This is closed language, and it’s not clear how claim 7 can have a large Markush group to select from.
Claim 8 recites one of the proteins is selected form the same Markush group recited in claim 1, and another one of the proteins is selected from a much broader group. The claim does not specification if the protein from the former group is the same as the protein claimed in the claim 1, and thus the claim is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. is. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim 7 recites a broader Markush grouping than the closed “comprising” language of claim 1 covers, and thus claim 7 does not further the claim (claim 1) upon which it depends.
Claim Rejections - 35 USC § 102
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 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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1-9 and 11-18 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chen et al. (US 2011/0003522).
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.
Claim(s) 1-9, 11-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Bailey et al. (2011/0306726)
As to claim 1 and 20, Chen discloses a method for producing a mineral wool product (mat 10/85) comprising: contacting mineral fibres 30 (para 3, 44) with a formaldehyde-free binder (para 31) composition for mineral fibres, the formaldehyde-free binder composition comprising: at least one phenol (para 36, claim 7) containing compound, and at least one protein (para 32), and curing the binder composition at a temperature that is greater than 150° C and less than 250° C (para 51, figs 1-3, para 29-56, example 1). Note that “‘[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.’ In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003).” MPEP 2144.05 I.
Chen does not disclose the protein is selected from the group consisting of gelatin, collagen and hydrolyzed gelatin.
Bailey discloses a wool binder (para 52) comprising a protein with gelatin (para 37). The gelatin protein can be selected from a finite number of possible proteins. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the mineral wool product of Chen such that the protein is a gelatin protein as taught by Bailey above as such is a known protein and has a reasonable expectation of success.
As to claim 2, Chen discloses the method further comprising: making a melt of raw materials (para 45); fibrerising the melt by a fibre forming apparatus 15 to form the mineral fibres (fig 1, para 45-47); providing the mineral fibres in the form of a collected web 40; mixing the binder composition with the mineral fibres before, during or after the provision of the collected web to form a mixture of the mineral fibres and the binder composition (binder sprayed 35, fig 1-2); curing the mixture of the mineral fibres and the binder composition (para 45-51, figs 1-2).
As to claims 3-4, Chen discloses the phenol containing compound comprises tannic acid (para 36).
As to claim 5, Chen discloses the phenol containing compound comprises one or more synthetic or semisynthetic molecules that contain phenols or polyphenols (para 36, example 1).
As to claim 6,the examiner note the use of “such as” precludes the claim from expressly requiring phenol weight percentage. Nonetheless, example 1 and table disclose tannins present in an amount of 1 to 60 wt%, based on dry protein.
As to claim, 7, Chen discloses the protein is derived an animal source (eggs /meat/fish, para 11, 13, 32).
As to claim 8, Chen discloses the at least one protein can be two proteins, one protein derived form eggs (para 11-13) and a second protein derived from walnuts (para 11-13). As to claim 9, the protein of the binder is not derived from soybeans (eggs/fish, para 11, 13).
As to claim 11-12, Chen disclose a pH adjuster additive (para 33) and a binder pH of 4.5-9 (claims 3-4).
As to claim 13, the protein is present in an amount of 1-99wt%, based on content of the at least one phenol containing compound and the at least one protein (para 32, example 1)
As to claims 14-15, Bailey discloses wherein the binder composition comprises at least one divalent metal cation M.sup.2+ containing compound (para 47) in an amount of 0.1 wt. % to 10 wt. %, based on a combined dry weight of the phenol containing compound and the at least one protein (para 47).
As to claims 16-18, Chen discloses the method wherein the binder composition further comprises at least one fatty acid ester of glycerol selected from peanut oil in an amount of 0.6 to 60 wt. % based on a dry weight of the at least one protein and the at least one phenol containing compound (para 43).
Allowable Subject Matter
Claim 10 is 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. The above cited prior art does not disclose, in the context of the other claim limitations, the at least one protein contains 50 to 400, or 100 to 300 amino acid residues, which are hydroxy proline or proline, per 1000 amino acid residues.
Response to Arguments
Applicant's arguments filed 6/10/26 have been fully considered but they are either not persuasive or moot in light of the new grounds of rejection detailed above. The 35 U.S.C. 112(b) rejection that the examiner maintained are addressed in the body of the rejection above. The arguments stating Chen does not disclose gelatin are moot. Additionally, the arguments directed at claims 14-15 are moot. With respect to claims 16-18, the applicant’s arguments are conclusory and do not substantively address the cited sections of Chen.
Conclusion
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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746
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