DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 Applicant’s amendment filed on April 27, 2026 was received. Claims 23-25, 30, 32-34, and 42 were amended.
The text of those sections of Title pre-AIA 35, U.S.C. code not included in this action can be found in the prior Office Action issued on January 27, 2026.
Claim Objections
The claim objections on claim 32 and 42 are withdrawn because the claims have been amended.
Claim Rejections - 35 USC § 112
The claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, claims 24, 25, 30, 32, 33, and 34 are withdrawn because the claims have been amended.
Claim Rejections - 35 USC § 102
The claim rejections under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al. (US 2011/0003522 A1) on claims 23-35, and 40-43 are maintained.
Regarding claim 23, Chen teaches a mineral wool product comprising (Abstract, [0044]); mineral fibres bound by a cured formaldehyde-free binder ([0011], Abstract); wherein the binder in an uncured state comprises ([0048]); at least one protein in an amount of 95 % for example based on a weight of a total of binder component solids ([0032]), and at least one additive such as silicone rubbers or aminosilane (A-1100) for example ([0037], [0038], [0039], [0060]). It is the position of the examiner that disclosure the water absorption properties are inherent, given that the binder used in the treating composition and meet the required amount disclosed by Chen et al. and the present application having the same treating composition and meet the required amount. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
Regarding claim 24, Chen teaches wherein the at least one protein is kidney beans (vegetable sources) for example ([0011]).
Regarding claim 25, Chen teaches wherein the at least one of the two protein is egg and a kidney beans (vegetable sources) for example ([0011]).
Regarding claim 26, Chen teaches wherein the at least one of the two protein is egg and a kidney beans for example does not have to comprise soy beans ([0011]).
Regarding claim 27, Chen teaches wherein the at least one of the two protein is soy and meet for example meet the claim limitation of at least 50 (hydroxy proline + proline) residues per 1000 amino acid residues ([0011]).
Regarding claim 28, Chen teaches wherein a content of the at least one protein in the binder in the uncured state is 15 wt.%, based on content of the at least one phenol containing compound and the at least one protein for example ([0036]).
Regarding claim 29, Chen teaches wherein the mineral wool product further comprises at least one phenol containing compound ([0036]).
Regarding claim 30, Chen teaches wherein the at least one phenol containing compound comprises a phenol containing compound such as tannic acid ([0036]).
Regarding claim 31, Chen teaches wherein the at least one phenol containing compound comprises a phenol containing compound such as tannic acid ([0036]).
Regarding claim 32, Chen teaches wherein the at least one phenol containing compound comprises one or more synthetic or semisynthetic molecules that contain phenols ([0007], [0036], [0059]).
Regarding claim 33, Chen teaches a content of the at least one phenol containing compound in the binder in the uncured state is 7 to 15 wt.% for examples ([0036]).
Regarding claim 34, Chen teaches the binder in the uncured state further comprises a pH adjuster (Abstract, [0011]).
Regarding claim 35, Chen teaches wherein the binder in the uncured state has a pH of 7-8 for example ([0061], claims 3 and 4).
Regarding claim 40, Chen teaches wherein the binder in [[its]] the uncured state further comprises at least one fatty acid ester of glycerol ([0036], [0039]).
Regarding claim 41, Chen teaches wherein the at least one fatty acid ester of glycerol is selected from one or more components from the group consisting of oil, sunflowers contain sunflower oil ([0032], [0036]).
Regarding claim 42, Chen teaches wherein a content of fatty acid ester of glycerol is 5 wt.-% based on a dry weight of the at least one protein and the at least one phenol containing compound ([0036], [0039]).
Regarding claim 43, Chen teaches wherein the mineral wool product is prepared by a method which comprises the steps of: contacting the mineral fibres with the binder in the uncured state, and curing the binder composition at a temperature of 250 ºC for example ([0048], [0051]). "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Claim Rejections - 35 USC § 103
The claim rejections under 35 U.S.C. 103 as being unpatentable over Chen et al. (US 2011/0003522 A1) as applied to claims 23-35, and 40-43, and further in view of Grigsby (US 2016/0333240 A1) on Claims 36-39 are maintained.
Regarding claim 36, Chen teaches a binder comprising protein as disclosed above. Chen does not explicitly teach the binder further comprises at least one divalent metal cation M2+ containing compound. However, an analogous art, Grigsby teaches a binder comprising protein and a metal salt as an additive (reads on at least one divalent metal cation M2+ containing compound) ([0037], [0039], [0107], [0393]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a metal salt to the binder composition in Chen, because Grigsby disclosed the use of a metal salt which provide water resistance to or enhance to water resistance ([0107]).
Regarding claim 37, Chen teaches a binder comprising protein as disclosed above. Chen does not explicitly teach wherein the at least one divalent metal cation M2+ containing compound comprises one or more divalent metal cations M2+ selected from the group of divalent cations of earth alkaline metals, Mn, Fe, Cu, Zn, Sn. However, an analogous art, Grigsby teaches a binder comprising protein and a metal salt such as zinc salt ([0037], [0039], [0107], [0393]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a metal salt to the binder composition in Chen, because Grigsby disclosed the use of a metal salt which provide water resistance to or enhance to water resistance ([0107]).
Regarding claim 38, Chen teaches a binder comprising protein as disclosed above. Chen does not explicitly teach the divalent metal cation containing compound comprises Ca2+. However, an analogous art, Grigsby teaches a binder comprising protein and a metal salt such as calcium salt ([0037], [0039], [0107], [0393]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a metal salt to the binder composition in Chen, because Grigsby disclosed the use of a metal salt which provide water resistance to or enhance to water resistance ([0107]).
Regarding claim 39, Chen teaches a binder comprising protein as disclosed above. And contains an additive in an amount of 0.1 wt.% to 10 wt.%, based on a combined dry weight of the phenol containing binder compound and the at least one protein ([0032], [0039]). Chen does not explicitly teach wherein the binder in the uncured state comprises the at least one divalent metal cation compound in an amount of 0.1 wt.% to 10 wt.%, based on a combined dry weight of the phenol containing compound. However, an analogous art, Grigsby teaches a binder comprising protein and a metal salt as an additive (reads on at least one divalent metal cation M2+ containing compound) ([0037], [0039], [0107], [0393]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply a metal salt to the binder composition in Chen, because Grigsby disclosed the use of a metal salt which provide water resistance to or enhance to water resistance ([0107]). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[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) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969).
Response to Arguments
Applicant's arguments filed on April 27, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are
Chen does not teach limitations in claim 1;
Chen in view of Grigsby is not a prima facie case of obviousness.
In response to Applicant’s arguments, please consider the following comments.
In response to Applicant’s arguments, the examiner respectfully disagrees. Chen teaches the limitations in claim 1. Chen teaches a mineral wool product comprising (Abstract, [0044]); mineral fibres bound by a cured formaldehyde-free binder ([0011], Abstract); wherein the binder in an uncured state comprises ([0048]); at least one protein in an amount of 95 % for example based on a weight of a total of binder component solids ([0032]), and at least one additive such as silicone rubbers or aminosilane (A-1100) for example ([0037], [0038], [0039], [0060]). It is the position of the examiner that disclosure the water absorption properties are inherent, given that the binder used in the treating composition and meet the required amount disclosed by Chen et al. and the present application having the same treating composition and meet the required amount. A reference which is silent about a claimed invention’s features is inherently anticipatory if the missing feature is necessarily present in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949 (1999).
In response to Applicant’s arguments, the examiner respectfully disagrees. Chen in view of Grigsby is a prima facie case of obviousness. Chen and Grigsby are analogous arts in the same chemical field or solve the same problem with motivations. In response to applicant's arguments against the references individually, one cannot show non obviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 HAI YAN ZHANG whose telephone number is (571)270-7181. The examiner can normally be reached on MTTHF.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAH-WEI YUAN can be reached on 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/HAI Y ZHANG/ Primary Examiner, Art Unit 1717
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