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
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on 11/14/25 is acknowledged. Limitations in any claim requiring the presence of soybeans are withdrawn from consideration. The examiner notes applicant has misidentified the claims directed to the elected species. Claim 9 is expressly directed to species B, and is NOT withdrawn from consideration.
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 1-18 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 1 recites curing the binder at greater than a temperatures range of 150 – 250 deg C. It’s not clear if the applicant is claiming a curing temperature greater than 150, 250, or some temperature in between. For the purposes of this examination, the examiner will assume any curing temperature above 150 deg C meets the limitation.
Regarding claims 1, 3, 5-9, 11 and 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of this examination, the examiner will assume any limitations following “such as” are not part of the claimed invention.
In claim 2, it’s not clear if “curing the mixture” refers to the previously recited curing step.
In claim 2, the limitation “the provision” lacks proper antecedent basis.
Claims 3, 4, 7-10 and 17 parenthetical limitations. These claims are indefinite because it is unclear whether the limitations within the parenthesis are part of the claimed invention. For the purposes of this examination, the examiner will assume any limitations following within parenthesis are not part of the claimed invention.
In claim 4, the limitation “the tannin” lacks proper antecedent basis. Additionally, the scope of claim 4 is entirely unclear as none of the claims upon which it depends recite a tannin. Claim 4 does not expressly require the presence of a tannin in the method. The claim is optional.
Claim 5 recites “the phenol containing compound”. It’s not clear if this compound is one of the “at least one phenol containing compound” previously recited.
Regarding claims 7-8, the phrase "like" in the limitation “like protein” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of this examination, the examiner will assume any limitations following “like” are not part of the claimed invention.
It’s not clear “a protein” in claim 9 refers to the “at least one protein” previously recited.
Claim 10 is entirely unclear. How can the protein can have a certain number of residues per amino acid residues”? The “residues” are the literal amino acid residues.
Regarding claim 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purposes of this examination, the examiner will assume any limitations following “preferably” are not part of the claimed invention.
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).
As to claim 1, 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 of >150° C.-250° C (para 51, figs 1-3, para 29-56, example 1).
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 oresetn 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, Chen discloses wherein the binder composition comprises at least one divalent metal cation M.sup.2+ containing compound (para 39) 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 39).
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).
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen, as applied to claim 1 above, and further in view of Hjelmgaard (WO 2017194725).
It’s not clear if Chen discloses the protein having 50-400 residues per amino acid residues. Hjelmgaard discloses a binder with a protein having between 50-300 residues, and that such a binder is one of selection of several possible binder protein binders (p. 12, 18). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Chen such that the protein has 50-400 residues per amino acid residues as taught by Hjelmgaard as such has a reasonable expectation of success.
Conclusion
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.
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.
/CHRISTOPHER T SCHATZ/Primary Examiner, Art Unit 1746