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 .
Response to Amendment
1. Applicant’s amendment and accompanying remarks filed 12/29/25 have been fully considered and entered. Claims 1, 12, 13 and 14 have been amended. Claim 6 is canceled. New claim 21 has been added. Applicant’s amendment to claim 1 is found sufficient to overcome the obviousness type rejections made over the combination of Dovetta et al., US 20190048499 A1 in view of Evans et al., US 20170198472 A1 and the combination of Dovetta et al., US 20190048499 A1 in view of Evans et al., US 20170198472 A1 as applied to claim 1 and further in view of Zeng et al., US 20160159687 A1. Specifically, the cited combination of prior art does not teach the claimed density of the insulation product prior to being blown. As such, these rejections are hereby withdrawn. With regard to the 112 2nd paragraph rejections set forth in the previous action, Applicant’s amendments to claims 12, 13 and 14 are found sufficient to overcome these rejections. As such, these rejections are hereby withdrawn. However, upon further consideration the following new ground of rejection is set forth herein below.
Claim Rejections - 35 USC § 112
2. 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.1
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.
3. Claim 17 is 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.
4. Claim 17 is indefinite because Applicants recite in claim 1 that the density of the insulation product ranges from 100-180 kg/m^3 and claim 17 recites a density that ranges from 5-18 Kg/m^3. Since claim 1 recites a closed range of 100-180 kg/m^3, and the range of claim 17 does not fall within the range of claim 1, the Examiner is of the position that claim 17 is indefinite.
Claim Rejections - 35 USC § 103
5. 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.
6. Claim(s) 1-5, 7-8 and 10-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dovetta et al., US 20190048499 A1 in view of Babbitt et al., US 5683810 and further in view of Evans et al., US 20170198472 A1.
With regard to claims 1, 2, 7, 8, 10, 15, 18, 20 and 21, the published patent application issued to Dovetta et al., teach an insulating product made from blown mineral wool (title, abstract and paragraph 0012). Said mineral wool is selected from glass or rock wool (paragraph 0028). The mean diameter of the discontinuous glass fibers of the glass wool are less than 5 microns (paragraph 0077). Dovetta et al., teach a micronaire value ranging from less than 10 L/min and greater than 2 L/min (paragraph 0066-0068). Dovetta et al., teach a thermal conductivity less than 42 mW/(m·K)(paragraph 0056). With regard to the claimed additive, Dovetta et al., teach that the mineral wool can comprise an anti-static/anti-dust additive such as an oil (paragraph 0071). Dovetta et al., teach that the insulation is used to fill cavities in building applications (paragraph 0013).
Dovetta et al., does not teach the density of the insulation product prior art to being blown.
The patent issued to Babbitt et al., teach a loose fill insulation comprising glass fibers with a density prior to being blown ranging from 128-288 kg/m^3 (abstract, column 2, 55-column 3, 5). With regard to claims 13 and 17, Babbitt et al., further teach that the loose fill insulation can have a blown density ranging form 4-20 kg/m^3 (column 3, 10-25). Babbitt et al., teach that the present invention provides a pourable or blowable loose-fill insulation which may be compressed to a high density (128-288 kg/m^3) in a container which may be easily handled and installed by consumers. It is a further feature of the present invention to provide a loose-fill insulation product comprised of irregularly-shaped glass fibers having a substantially uniform volume filling nature. Babbitt et al., further teach that the insulation may be poured or blown at an efficient density (4-20 kg/m^3) with low dust. It would have been obvious to a person of ordinary skill in the art to package the insulation product of Dovetta et al., with a higher density which can be easily handled and installed by consumers which can later then be blown at an efficient density with low dust as taught by Babbitt et al.
Dovetta et al., is silent with respect to the amount of additive.
The published patent application issued to Evans et al., teach a blown insulating product also made from fiberglass fibers (title, abstract and paragraph 0028). Said insulating product further comprise an anti-static/anti-dust mineral oil additive/silicone in amount ranging from .1-.6 wt. % (paragraph 0023-0024 and abstract). The Examiner considers mineral oil capable of hydrophobing. With specific regard to claim 21, the Examiner is of the position that absent unexpected results there is not a patently distinguishable difference between .6 wt. % additive add on and .7 wt. % additive add on. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of Amer. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of “having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium” as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. Evans et al., discloses a range which touches the claimed range and there is no allegation of criticality or any evidence demonstrating any difference across the claimed range.
Therefore, motivated by the desire to form an insulating product having anti-static/anti-dust properties it would have been obvious to a person of ordinary skill in the art to coat the mineral wool of modified Dovetta et al., with the mineral oil additive in the amounts taught by Evans et al.
With regard to claims 3-5, the combination of cited prior art does not teach the claimed fiber length distribution. The Examiner is of the position that absent unexpected results it would be within the skill of a person in the art to optimize the fiber length distribution of the mineral fiber based on desired end use and insulating properties. It has been held that, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA).
With regard to claim 11, the combination of cited prior art does not teach the claimed fiber length. Dovetta et al., teach that the fibers are discontinuous. Discontinuous fibers typically have a broad length ranging from 2-46 cm. The Examiner is of the position that absent unexpected results it would be within the skill of a person in the art to optimize the fiber length of the mineral fibers based on desired end use and insulating properties. It has been held that, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA).
With regard to the claims 12 and 16, the combination of cited prior art does not teach the claimed thermal performance. The Examiner is of the position that absent unexpected results it would be within the skill of a person in the art to form a mineral wool/fiber-based insulation with a desirable thermal performance as a function of insulating properties. It has been held that, 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. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA).
With regard to claims 14 and 19, Evans et al., teach coating the mineral fibers with the mineral oil, but fails to explicitly teach the claimed spraying method. Absent unexpected results it would have been obvious to a person of ordinary skill in the art to coat the via fibers via a spray method. Such a known coating method would be within a skilled worker in the art and could be performed without undue experimentation.
7. Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dovetta et al., US 20190048499 A1 in view of Babbitt et al., US 5683810 and further in view of Evans et al., US 20170198472 A1 as applied to claim 1 and further in view of Zeng et al., US 20160159687 A1.
The combination of cited prior art does not teach the claimed polyethylene glycol.
The published patent application issued to Zeng et al., teach an anti-static agent for glass insulation (title and abstract). Said anti-static agent is polyethylene glycol (paragraph 0012-0013). It would have been obvious to person of ordinary skill in the art to coat the fibers of the wool insulation product provided by the combination of Dovetta et al., in view Evans et al., with the specific anti-static agent of polyethylene glycol as taught by Zeng et al.
Double Patenting
8. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/290615 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is encompassed by copending Application No. 18/290615.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 stand provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18/290669 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter sought is encompassed by copending Application No. 18/290669.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
9. 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 LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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