DETAILED ACTION
An amendment, amending claims 1-4 and 6 and adding new claims 7 and 8, was entered on 5/12/26.
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 .
Response to Arguments
Applicant argues that Mantymaki is directed to a slag modification process and not a fiber. This is not persuasive. Mantymaki teaches that the forming of a fiber comprising the claimed composition at, e.g., the abstract and is not limited to a slag modification process.
Applicant argues that Mantymaki fails to teach that the composition is a non-crystalline inorganic composition as a final product. This is not persuasive. Mantymaki teaches that the fiber is a mineral wool (i.e. a non-crystalline material) (2:9-28, e.g.).
Applicant further argues that Mantymaki fails to teach or suggest how the content of the iron oxide affects the alkali resistance of the fiber. This is not persuasive. Nothing in the current claim language requires this concept.
Applicant argues that Mantymaki merely teaches adding silica/alumina to the raw material and fails to disclose a dual source structure (i.e. an iron oxide source and a silica alumina source). This is not persuasive. Mantymaki teaches an iron oxide source (i.e. the slag) to which is added silica and/or alumina (i.e. the silica alumina source). However, Mantymaki does not provide any details concerning the silica alumina source and, therefore, does not teach the newly added limitation that the silica alumina source is industrial waste or a natural product. Accordingly, a new rejection is presented below to address this amendment.
Applicant also argues that there are unexpected results associated with the claim, specifically excellent alkali resistance. Applicant points to Tables 2-3 and Examples 1-5 to show this. This is not persuasive. The evidence shown in Tables 2-3 shoes that Comparative Examples 6 and 7, which does not include the separate silica alumina source, also have the same 0.00 alkali resistance. Additionally, it is unclear from the data provided that the dual source raw material is responsible for the alkali resistance as several of the comparative examples also have iron oxide ratios well below the claimed range, suggesting that this may be what is causing the alkali resistance instead. If applicant can provide further evidence (or persuasive arguments using this evidence) which is commensurate in scope with claim 1 and shows that the dual source raw material is responsible for the unexpected results argued, such evidence could overcome the current rejection.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1-4, 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Mantymaki (US 4,818,289) in light of Nehari et al. (US 5,993,758).
Claims 1-4: Mantymaki teaches a non-crystalline composition used to form mineral wool fibers (Abst.; 2:9-28) comprising: a modified copper slag raw material (i.e. claimed non-crystalline iron oxide source material) (2:9-3:2) wherein the slag has been modified to achieve an iron oxide content of 22-35% by weight (2:42-3:2) by adding 15-35% silica and 8-15% alumina (i.e. claimed non-crystalline silica alumina source) to the slag which already includes 25-40% silica, 0-15% alumina and 0-10% calcium oxide (2:42-3:2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP § 2144.05(I). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected a composition with 26-35% by weight iron oxide and 50-75% silica, alumina and calcium oxide with the predictable expectation of success.
Mantymaki only generically describes adding silica and alumina without discussing where the material is sourced from. Nehari teaches that a desirable source of silica and alumina is coal ash (i.e. claimed industrial waste) as it is readily available and inexpensive (1:12-30). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected coal ash as the source of silica alumina in Mantymaki with the predictable expectation of success.
Claims 7 and 8: Mantymaki teaches that the amount of silica and alumina added to the slag can be adjusted to achieve the desired melting point and alkali resistance (2:29-42). Where 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. MPEP § 2144.05(II)(A). Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected the claimed ratio and at least 40% by mass or more as the amounts of silica and alumina depending on the desired properties of the material.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Mantymaki and Nehari in light of Tanaka et al. (US 2013/0324643).
Claim 6: Mantymaki teaches forming mineral fibers from the mixture, but fails to teach that the fibers are used to reinforce concrete. Tanaka teaches that mineral fibers can be used to reinforce concrete (Abst.). Combining prior art elements according to known methods to yield predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have utilized the fibers of Mantymaki to have reinforced concrete with the predictable expectation of success depending on the desired end use of the fibers.
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 Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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