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 without traverse of Group I, claims 1-17 and 30, in the reply filed on 06/25/2026 is acknowledged.
Claims 18-29 and 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/25/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “160” (see paragraph [0051] of the present specification). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 appears to contain a typo; it appears that “one or more feedstocks” should read “one or more feedstock components” (see claim 1 at line 5).
Appropriate correction is required.
Applicant is advised that should claim 13 be found allowable, claim 30 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 5, 10 and 15-17 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 5 recites the limitation "wherein the one or more feedstock components include one or more cellulose feedstocks, one or more agricultural fiber sources and combinations thereof" (see claim 5 at lines 1-3); this language makes it unclear whether both the cellulose feedstock and the agricultural fiber sources are required or whether only one or more is required, as “and combinations thereof” indicates that cellulose feedstock, agricultural fiber sources, and combinations of cellulose feedstock and agricultural fiber sources are all required, but if both are already required then the inclusion of “combinations thereof” does not make sense.
For purposes of examination, Examiner treated claim 5 as though it recites “or combinations thereof” rather than “and combinations thereof”, i.e., as though only one or more of the cellulose feedstocks and agricultural fiber sources is required. Clarification is requested.
Claims 10 and 15 each recite “the fire retardancy material loading” (see claims 10 and 15 each at line 1); however, claims 9 and 14, from which claims 10 and 15 depend, recite “a loading of the dry fire retardancy material” and “a dry fire retardancy material loading”. Since claims 10 and 15 recite “the fire retardancy material loading” rather than “the dry fire retardancy material loading”, it is not clear if this is meant to refer only to the dry fire retardancy material loading positively recited in claims 9 and 14, or if this is meant to refer to a total fire retardancy material loading (dry and wet) for which there is not antecedent basis in claims 9 and 14.
For purposes of examination, Examiner treated claims 10 and 15 as though they recite “the dry fire retardancy material loading”. Clarification is requested.
Claim 16 recites the limitation “dry treated feedstock and wet treated feedstock” (see claim 16 at line 2); this language renders the scope of the claim indefinite as it is not clear whether “dry treated feedstock” means feedstock treated with the dry fire retardancy material, feedstock that was dry when it was treated, or just feedstock that is dry and has been treated with either fire retardancy material, and it is also not clear whether “wet treated feedstock” means feedstock treated with the wet fire retardancy material, or feedstock that is wet and has been treated with either fire retardancy material.
For purposes of examination, Examiner treated “wet treated feedstock” as meaning feedstock which has been treated with the wet fire retardancy material and treated “dry treated feedstock” as meaning feedstock which has been treated with the dry fire retardancy material. Clarification is requested.
Claim 17 recites “wherein a ratio of dry treated feedstock to wet treated feedstock is in a range of about 10% to about 90% to about 90% to about 10% by weight” (see claim 17 at lines 1-3); this language renders the scope of the claim indefinite as the use of “ratio” and also “% by weight” makes it unclear whether the recited ranges are actual weight ratios, i.e., a ratio of dry to wet treated feedstock of 0.1:0.9 to 0.9:0.1, or whether they are actually weight percentages of the total of the dry treated feedstock, i.e. 10% to 90% wet treated feedstock and 10% to 90% dry treated feedstock.
For purposes of examination, Examiner treated the claimed range as actually being a weight ratio as claimed, i.e., a ratio of 0.1:0.9 to 0.9:0.1. Clarification is requested.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1-6, 8, 11-13, 16-17 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andersen (U.S. Pub. No. 2007/0209307-A1) (hereinafter, “ANDERSEN”).
Regarding claim 1, ANDERSEN teaches an insulation product (see ANDERSEN generally at Abstract) comprising:
one or more feedstock components comprising a fire retardancy material (see ANDERSEN at paragraph [0008], teaching three fiber components)
wherein at least a portion of the one or more feedstock components comprises fibers with fire retardancy material integrated within the fibers (see ANDERSEN at paragraphs [0012] and [0018], teaching treating the cellulose fibers with a fire-retarding liquid and treating the synthetic fibers with a powder fiber-retarding chemical).
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein a first portion of the one or more feedstock components is treated with wet fire retardancy material… and a second portion of the one or more feedstock components is treated with dry fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN teaches that a first portion of the one or more feedstock components is treated with wet fire retardancy material, and a second portion of the one or more feedstock components is treated with dry fire retardancy material (see ANDERSEN at paragraphs [0012] and [0018]).
Regarding claim 2, ANDERSEN teaches an insulation product according to claim 1.
ANDERSEN does not explicitly teach that at least some of the one or more feedstock components of the second portion are in a wet condition when treated with the dry fire retardancy material as recited by claim 2; however, this is considered product-by-process claim language and is not given patentable weight. The present claims are directed to an insulation product, not a method of making an insulation product. “Even 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); see MPEP § 2113.
Regarding claim 3, ANDERSEN teaches an insulation product according to claim 1, wherein the one or more feedstock components include cellulose fibers (see ANDERSEN at paragraph [0018]).
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “cellulose fibers that are wet when treated with the wet fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN teaches cellulose fibers that are treated with the wet fire retardancy material (see ANDERSEN at paragraph [0012]), i.e., the cellulose would fibers would necessarily be wet when mixed with a wet material.
Regarding claim 4, ANDERSEN teaches an insulation product according to claim 3.
ANDERSEN does not explicitly teach that the wet cellulose fibers contain between about 25% and about 75% by weight of moisture when treated with the wet fire retardancy material as recited by claim 4; however, this is considered product-by-process claim language and is not given patentable weight. The present claims are directed to an insulation product, not a method of making an insulation product. “Even 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); see MPEP § 2113.
Regarding claim 5, ANDERSEN teaches an insulation product according to claim 1, wherein the one or more feedstock components include one or more cellulose feedstocks, one or more agricultural fiber sources and combinations thereof (see ANDERSEN at paragraph [0018], teaching cellulose fibers).
Regarding claim 6, ANDERSEN teaches an insulation product according to claim 1, wherein the one or more feedstock components include cellulose fibers, wherein the cellulose fibers are sourced from one or more of corrugated board, liner board, Old Corrugated Containers, Old Newsprint, recycled cellulose, virgin kraft pulp, virgin ground wood pulp, sawdust, wood chips, pine chips, and combinations thereof (see ANDERSEN at paragraphs [0018]-[0019], teaching cellulose fibers, e.g., from recycled paper, old newsprint, etc.).
Regarding claim 8, ANDERSEN teaches an insulation product according to claim 1, wherein the wet fire retardancy material and the dry fire retardancy material are selected from one or more of boric acid, borax, poly- hydrated boron compounds, sodium tetraborate, ammonium sulfate, magnesium sulfate, calcium sulfate, zinc sulfate, ferrous sulfate, and mixtures thereof (see ANDERSEN at paragraph [0012], teaching borax, boric acid, ammonium sulfate and aluminum sulfate).
Regarding claims 11-12, ANDERSEN teaches an insulation product according to claim 1, further comprising one or more additives, as recited by claim 11, wherein the one or more additives are selected from the group consisting of one or more biocides, one or more enzymes, one or more fungicides, one or more lubricants, one or more bonding agents, or any combination thereof, as recited by claim 12 (see ANDERSEN at paragraph [0021], teaching adding bi-component fibers as a bonding agent).
Regarding claims 13 and 30, ANDERSEN teaches an insulation product according to claim 1.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein at least some of the one or more feedstock components of the second portion are in a dry condition when treated with the dry fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN does not mention that the fibers are wet when treated with the dry fire retardancy material (i.e., the disclosure is interpreted as meaning that the fibers are dry when treated with the dry material, as the synthetic fibers are a solid material and the reference does not mention that they are wet).
Regarding claim 16, ANDERSEN teaches an insulation product according to claim 1.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein the one or more feedstock components is a combination of dry treated feedstock and wet treated feedstock” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN teaches that the cellulose fibers are a combination of dry treated feedstock and wet treated feedstock (see ANDERSEN at paragraphs [0012] and [0018], teaching treating the cellulose fibers with a fire-retarding liquid and treating the synthetic fibers with a powder fiber-retarding chemical).
Regarding claim 17, ANDERSEN teaches an insulation product according to claim 16.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein a ratio of dry treated feedstock to wet treated feedstock is in a range of about 10% to about 90% to about 90% to about 10% by weight” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN teaches that a ratio of dry treated feedstock to wet treated feedstock is in the claimed range (see ANDERSEN at Abstract and paragraph [0012], teaching 2-20% of the synthetic fibers (which may be treated with powder fire retardant) and 50-90% of the cellulose fibers (treated with liquid fire retardant), i.e., a ratio as claimed of 0.02:1 to 0.4:1; a ratio of 0.1:0.9 to 0.9:0.1 is 0.1:1 to 9:1).
Claims 1-8, 11-13, 16-17 and 30 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Strimling, et al. (WO-2019/108893-A2) (hereinafter, “STRIMLING”).
Regarding claim 1, STRIMLING teaches an insulation product (see STRIMLING generally at Abstract and paragraph [0001]) comprising:
one or more feedstock components comprising a fire retardancy material (see STRIMLING at Abstract and paragraph [0001], teaching cellulosic material)
wherein at least a portion of the one or more feedstock components comprises fibers with fire retardancy material integrated within the fibers (see STRIMLING at Abstract and paragraphs [0001], [0012] and [0017], teaching chemical treatment of the cellulose fibers with liquid fire retardant and with dry fire retardant).
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein a first portion of the one or more feedstock components is treated with wet fire retardancy material… and a second portion of the one or more feedstock components is treated with dry fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches that a first portion of the one or more feedstock components is treated with wet fire retardancy material, and a second portion of the one or more feedstock components is treated with dry fire retardancy material (see STRIMLING at paragraphs [0012] and [0017]).
Regarding claim 2, STRIMLING teaches an insulation product according to claim 1.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein at least some of the one or more feedstock components of the second portion are in a wet condition when treated with the dry fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches that at least some of the one or more feedstock components of the second portion are in a wet condition when treated with the dry fire retardancy material (see STRIMLING at paragraph [0012]).
Regarding claim 3, STRIMLING teaches an insulation product according to claim 1, wherein the one or more feedstock components include cellulose fibers (see STRIMLING at Abstract).
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “cellulose fibers that are wet when treated with the wet fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches cellulose fibers that are wet when treated with the wet fire retardancy material (see STRIMLING at paragraph [0012]); it is also noted that any fibers would be necessarily wet when mixed with a wet material.
Regarding claim 4, STRIMLING teaches an insulation product according to claim 3.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein the wet cellulose fibers contain between about 25% and about 75% by weight of moisture when treated with the wet fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches cellulose fibers containing an amount of moisture overlapping with the range of between about 25% and about 75% by weight when treated with the wet fire retardancy material (see STRIMLING at paragraph [0009], teaching treating the feedstock for fire retardancy with a ratio of liquids to solids by weight of 20/80 to 99/1).
Regarding claim 5, STRIMLING teaches an insulation product according to claim 1, wherein the one or more feedstock components include one or more cellulose feedstocks, one or more agricultural fiber sources and combinations thereof (see STRIMLING at Abstract and paragraph [0008]).
Regarding claim 6, STRIMLING teaches an insulation product according to claim 1, wherein the one or more feedstock components include cellulose fibers, wherein the cellulose fibers are sourced from one or more of corrugated board, liner board, Old Corrugated Containers, Old Newsprint, recycled cellulose, virgin kraft pulp, virgin ground wood pulp, sawdust, wood chips, pine chips, and combinations thereof (see STRIMLING at Abstract and paragraph [0008]).
Regarding claim 7, STRIMLING teaches an insulation product according to claim 1, wherein the one or more feedstock components include agricultural fibers, wherein the agricultural fibers are sourced from one or more of straw, wheat, rice hulls, feathers, hemp, and combinations thereof (see STRIMLING at paragraphs [0008] and [0030]).
Regarding claim 8, STRIMLING teaches an insulation product according to claim 1, wherein the wet fire retardancy material and the dry fire retardancy material are selected from one or more of boric acid, borax, poly- hydrated boron compounds, sodium tetraborate, ammonium sulfate, magnesium sulfate, calcium sulfate, zinc sulfate, ferrous sulfate, and mixtures thereof (see STRIMLING at paragraph [0010]).
Regarding claims 11-12, STRIMLING teaches an insulation product according to claim 1, further comprising one or more additives, as recited by claim 11, wherein the one or more additives are selected from the group consisting of one or more biocides, one or more enzymes, one or more fungicides, one or more lubricants, one or more bonding agents, or any combination thereof, as recited by claim 12 (see STRIMLING at paragraph [0011]).
Regarding claims 13 and 30, STRIMLING teaches an insulation product according to claim 1.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein at least some of the one or more feedstock components of the second portion are in a dry condition when treated with the dry fire retardancy material” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches that at least some of the one or more feedstock components of the second portion are in a dry condition when treated with the dry fire retardancy material (see STRIMLING at paragraphs [0017] and [0032], teaching that a fire retardancy chemical in dry form may be combined with the fibers before adding the solvent to be in liquid form).
Regarding claim 16, STRIMLING teaches an insulation product according to claim 1.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein the one or more feedstock components is a combination of dry treated feedstock and wet treated feedstock” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches that the cellulose fibers are a combination of dry treated feedstock and wet treated feedstock (see STRIMLING at paragraphs [0012] and [0017]).
Regarding claim 17, STRIMLING teaches an insulation product according to claim 16.
The present claims are directed to an insulation product, not a method of making an insulation product; the recitation of “wherein a ratio of dry treated feedstock to wet treated feedstock is in a range of about 10% to about 90% to about 90% to about 10% by weight” is considered product-by-process claim language and is not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that STRIMLING teaches that a ratio of dry treated feedstock to wet treated feedstock in the claimed range (see STRIMLING at paragraph [0012], [0016]-[0017] and [0032], teaching that all of the fibers are treated with the liquid and the dry fire retardant, i.e., a ratio as claimed of 1:1; a ratio of 0.1:0.9 to 0.9:0.1 is 0.1:1 to 9:1).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 9-10 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over ANDERSEN.
Regarding claims 9-10 and 14-15, ANDERSEN teaches an insulation product according to claims 1 and 13, wherein at least some of the one or more feedstock components of the second portion are treated with a fire retardancy material loading overlapping with and thereby rendering obvious the ranges of at least about 3%, as required by claims 9 and 14; at least 5%, as required by claim 10; and at least 7%, as required by claim 15; by weight on a dry weight percent basis (see ANDERSEN at paragraph [0012], teaching that the fire retarding chemical content is between 1-30% of the fiber material). It is noted that the clear structural limitations imparted by the process steps recited in claims 9-10 and 14-15 are that at least a portion of at least some of the one or more feedstock components comprises the recited minimum fire retardancy material loading for each claim. As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
The present claims are directed to an insulation product, not a method of making an insulation product; the recitations in claims 9-10 and 14-15 of “wherein at least some of the one or more feedstock components of the second portion are treated with a loading of the dry fire retardancy material of about 3% to about 20% by weight on a dry weight percent basis”, “wherein the dry fire retardancy material loading is about 5% to about 12%”, “wherein the at least some of the one or more feedstock components of the second portion in a dry condition are treated with a dry fire retardancy material loading of about 3% to about 25% by weight on a dry weight percent basis” and “wherein the dry fire retardancy material loading is about 7% to about 18%” (claims 10 and 15 based on the interpretations set forth in the 112(b) rejection above), respectively, are considered product-by-process claim language and are not given patentable weight. “Even 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); see MPEP § 2113.
Although not considered to be required to meet the limitations of the present product claim, it is noted that ANDERSEN teaches that at least some of the one or more feedstock components of the second portion are treated with a dry fire retardancy material loading of 1-30% (see ANDERSEN at paragraph [0012], teaching that the synthetic fibers are treated with a powder fiber-retarding chemical and the fire retarding chemical content is between 1-30% of the fiber material), which encompasses all of the ranges recited by claims 9-10 and 14-15.
Claims 9-10 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over STRIMLING.
Regarding claims 9-10 and 14-15, STRIMLING teaches an insulation product according to claims 1 and 13.
STRIMLING does not explicitly teach that at least some of the one or more feedstock components of the second portion are treated with a fire retardancy material loading of at least about 3%, as required by claims 9 and 14; at least 5%, as required by claim 10; and at least 7%, as required by claim 15; by weight on a dry weight percent basis (it is noted that the clear structural limitations imparted by the process steps recited in claims 9-10 and 14-15 are that at least a portion of at least some of the one or more feedstock components comprises the recited minimum fire retardancy material loading for each claim). However, STRIMLING teaches that the saturation of the fire retardant chemical is selectable to ensure that the finished cellulose insulation contains a sufficient amount of fire-retardancy material adhered in and to the fibers of the insulation (see STRIMLING at paragraph [0033]), i.e., STRIMGLING explicitly teaches that the fire retardancy material loading is a result-effective variable which may be optimized by one of ordinary skill in the art via routine experimentation and optimization in order to achieve desired fire retardancy performance. MPEP states that “[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 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
STRIMGLING does not explicitly teach that at least some of the one or more feedstock components of the second portion are treated with a loading of the dry fire retardancy material of about 3% to about 20% by weight on a dry weight percent basis, as recited by claim 9; that the dry fire retardancy material loading is about 5% to about 12%”, as recited by claim 10; that at least some of the one or more feedstock components of the second portion in a dry condition are treated with a dry fire retardancy material loading of about 3% to about 25% by weight on a dry weight percent basis, as recited by claim 14; or that the dry fire retardancy material loading is about 7% to about 18%, as recited by claim 15 (claims 10 and 15 based on the interpretations set forth in the 112(b) rejection above); however, this is considered product-by-process claim language and is not given patentable weight. The present claims are directed to an insulation product, not a method of making an insulation product. “Even 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); see MPEP § 2113.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Shutt (WO-2016/186645-A1) (hereinafter, “SHUTT”):
SHUTT teaches an insulation product comprising cellulose fibers which are treated with a liquid fire retardant, a powdered fire retardant and an additive, with a loading of the powdered fire retardant of up to 15 wt% (see SHUTT at paragraphs [0001], [0011], [0017], [0032], [0045] and [0052]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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, Amber Orlando can be reached on (571) 270-3149. 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.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights