Election/Restrictions
Applicants’ election without traverse of Group I, claims 1-11 in the reply filed on 2 July 2026 is acknowledged.
Claims 12-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse.
Information Disclosure Statement
The Japanese office action in the information disclosure statement filed 29 June 2026 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
JP 2004-504251 cited in the information disclosure statement filed 29 June 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the provided English abstract is illegible. It has been placed in the application file, but the information referred to therein has not been considered as to the merits.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings are objected to because the meaning of the symbols in figure 3 are not defined.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Double Patenting
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 1-8, 10 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/290,615 (‘615) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed thermal and/or acoustic insulation product of the copending application suggests the claimed thermal and/or acoustic insulation product of this application.
Claims 1-8, 10 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, and 7-12 of copending Application No. 18/290,650 (‘650) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed thermal and/or acoustic insulation product of the copending application suggests the claimed thermal and/or acoustic insulation product of this application.
Both copending applications claim a thermal and/or acoustic insulation product comprising a glass wool and a total amount of 0.4-1.2 wt% inclusive of at least one additive, wherein the glass wool comprises mineral fibers and is suitable to be blown. The additives and additive amounts of claims 7-10 of copending application ‘650 and claims 6-9 of copending application ‘615 are the same as the additives and amounts of claims 3-6 of this application. Claim 1 of copending application ‘650 and claims 2 and 5 of copending application ‘615 teaches the product has a density of 100-180 kg/m3 inclusive and a micronaire of between 4-9 L/min. These density and micronaire ranges are the same as that taught in claims 2 and 11 of this application. Claim 12 of both copending applications teaches the product exhibits, after being blown, a thermal performance factor χ between 0.45-0.8 Wkg/Km4, which is the thermal performance factor χ range of the product claimed in this application after being blown, as taught in claim 10. Claim 2 of copending application ‘650 and claim 11 of copending application ‘615 teach the volume-weighted median diameter of the fibers is between 5-15 microns, which is the diameter of the fibers claimed in this application in claim 8. Claim 11 of copending application ‘650 and claim 10 of copending application ‘615 teach the average length of the fibers is between 0.5-1.5 mm microns, which is the average of the fibers claimed in this application in claim 7. Claim 5 of copending application ‘650 and claim 4 of copending application ‘615 teach the median length of the fibers is 2 mm or less, which is the medium length of the fibers claimed in this application in claim 1. Claim 4 of copending application ‘650 and claim 3 of copending application ‘615 teach the fiber length equal to the 90th percentile in distribution number is strictly greater than 1 mm. This means that 90% of the population in number of the glass fibers has a length strictly greater than 1 mm. This percentile fall within the at least 10% of a population range claimed in claim 1 of this application and the taught length range of strictly greater than 1 mm overlaps the “strictly greater than 1.5 mm” length range claimed in claim 1 of this application. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. For the above reasons, he claimed insulation product of copending Application No. 18/290,615 and copending Application No. 18/290,650 suggest the claimed insulation product of this application.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-6, 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2017/0198472 in view of the Yliniemi et al article.
U.S. patent application publication 2017/0198472 teaches an unbonded loosefill insulation, which can be blown, comprising mineral fiber-based glass wool and 0.1-0.6 wt% of a mineral oil, which acts as an anti-dust additive (para 23). The taught amount of mineral oil overlaps the claimed amount of anti-dust additive. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05. Paragraph [0048] teaches a 33 lb. bag of unbonded loosefill insulation comprising mineral fiber-based glass wool coated with 0.375 wt% mineral oil and 0.75 wt% of a siloxane, a known hydrophobing additive, wherein the insulation has a volume of about 6,484 cubic inches. The density of the insulation in this bag is about 140.8 kg/m3 (about 8.79 lb/ft3), which falls within the density of claim 2. The total amount of anti-dust and hydrophobing additives is 0.45 wt%, which falls within the range of claim 1. The taught amount of polysiloxane falls within the range of claim 6.
The patent application publication does not teach the dimensions of the mineral fibers of the taught unbonded loosefill insulation. The Yliniemi et al article discusses mineral wool waste and teaches that the disclosed dimensions of the mineral fibers are those conventionally used in insulations, including unbonded loosefill insulation. The taught glass fibers GW3-GW5 have a median fiber length of 347-480 microns, which is less than 2 mm and in the range of claim 9; and a median diameter of 8.2-9.2 microns, which falls within the range of claim 8. Figure 2 shows that about 85% of the population has a length greater than 1.5 mm, which falls within population range of claim 1. Since the taught fibers have dimensions that fall within the claimed range One of ordinary skill in the art would have found it obvious to use the conventional mineral fiber-based glass wool insulation GW3-GW4 as the mineral fiber-based glass wool in the unbonded loosefill insulation of U.S. patent application publication 2017/0198472 since it is obvious to use a material for its known and conventional uses. Since the taught fibers have dimensions that fall within the claimed ranges, one of ordinary skill in the art would expect the taught fibers to have a micronaire range that falls within the claimed range, absent any showing to the contrary. This is because the micronaire is based on the surface area of the fibers, as determined by the length and diameter of the fibers. The references suggest the claimed insulation product.
Claims 1, 3-5, 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2016/0159687 in view of Yliniemi et al article and U.S. patent 3,584,796.
U.S. patent application publication 2016/0159687 teaches an insulation, which can be unbonded and capable of being blown, comprising glass wool comprising mineral fibers, an antistatic additive and up to 0.8 wt% of a dedusting, of anti-dust, additive (para 38 and example). The antistatic additive can be polyethylene glycol or a quaternary amine, which is also known as a quaternary ammonium. While U.S. patent application publication 2016/0159687 does not teach the amount of antistatic additive, U.S. patent 3,584,796 teaches the conventional and effective amount of antistatic additive used in mineral fiber-based glass wool insulation is 0.02 wt%. These two patent documents teach insulation, which can be unbonded and capable of being blown, comprising glass wool comprising mineral fibers, 0.02 wt% an antistatic additive and up to 0.8 wt% of a dedusting, of anti-dust, additive, wherein the antistatic additive can be polyethylene glycol or a quaternary ammonium. The amount and composition of taught and suggested antistatic additive each fall within the composition and amount of claims 4 and 5 and the suggests total amount of antistatic additive and anti-dusting additive of 0.02-8.02 wt% overlaps the range of claim 1. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05.
The patent documents do not teach the dimensions of the mineral fibers of the taught mineral fiber-based glass wool insulation. The Yliniemi et al article discusses mineral wool waste and teaches that the disclosed dimensions of the mineral fibers are those conventionally used in insulations, including those taught by the patents. The taught glass fibers GW3-GW5 have a median fiber length of 347-480 microns, which is less than 2 mm and in the range of claim 9; and a median diameter of 8.2-9.2 microns, which falls within the range of claim 8. Figure 2 shows that about 85% of the population has a length greater than 1.5 mm, which falls within population range of claim 1. Since the taught fibers have dimensions that fall within the claimed range One of ordinary skill in the art would have found it obvious to use the conventional mineral fiber-based glass wool insulation GW3-GW4 as the mineral fiber-based glass wool in the insulation of U.S. patent application publication 2016/0159687 since it is obvious to use a material for its known and conventional uses. Since the taught fibers have dimensions that fall within the claimed ranges, one of ordinary skill in the art would expect the taught fibers to have a micronaire range that falls within the claimed range, absent any showing to the contrary. This is because the micronaire is based on the surface area of the fibers, as determined by the length and diameter of the fibers. The references suggest the claimed insulation product.
Claims 1-6, 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2019/0314935 in view of Yliniemi et al article and U.S. patent 3,584,796.
U.S. patent application publication 2019/0314935 teaches an unbonded loosefill insulation, which can be blown, comprising mineral fiber-based glass wool, preferably 0.1-0.5 wt% of a hydrophobing silicone (para 34), an effective amount of a quaternary ammonium salt antistatic additive (para 38) and 0.5-4 wt% of an anti-dust oil additive (para 39). U.S. patent 3,584,796 teaches the conventional and effective amount of antistatic additive used in mineral fiber-based glass wool insulation is 0.02 wt%. In view of this teaching, U.S. patent application publication 2019/0314935 teaches an unbonded loosefill insulation, which can be blown, comprising mineral fiber-based glass wool, preferably 0.1-0.5 wt% of a hydrophobing silicone, 0.02 wt% of a quaternary ammonium salt antistatic additive and 0.5-4 wt% of an anti-dust oil additive. The amount and composition of taught and suggested antistatic additive each fall within the composition and amount of claims 4 and 5, the preferred amount of silicone hydrophobing agent overlaps the range of claim 6 and the suggests total amount of antistatic additive, hydrophobing additive and anti-dusting additive of 0.62-4.52 wt% overlaps the range of claim 1. The taught fiber insulation has a density of 0.1-20 lb/ft3, which corresponds to about 1.6-320 kg/m3. This density range overlaps that of claim 2. Product claims with numerical ranges which overlap prior art ranges were held to have been obvious under 35 USC 103. In re Wertheim 191 USPQ 90 (CCPA 1976); In re Malagari 182 USPQ 549 (CCPA 1974); In re Fields 134 USPQ 242 (CCPA 1962); In re Nehrenberg 126 USPQ 383 (CCPA 1960). Also see MPEP 2144.05.
The patent application publication does not teach the dimensions of the mineral fibers of the taught unbonded loosefill insulation. The Yliniemi et al article discusses mineral wool waste and teaches that the disclosed dimensions of the mineral fibers are those conventionally used in insulations, including unbonded loosefill insulation. The taught glass fibers GW3-GW5 have a median fiber length of 347-480 microns, which is less than 2 mm and in the range of claim 9; and a median diameter of 8.2-9.2 microns, which falls within the range of claim 8. Figure 2 shows that about 85% of the population has a length greater than 1.5 mm, which falls within population range of claim 1. Since the taught fibers have dimensions that fall within the claimed range One of ordinary skill in the art would have found it obvious to use the conventional mineral fiber-based glass wool insulation GW3-GW4 as the mineral fiber-based glass wool in the unbonded loosefill insulation of U.S. patent application publication 2019/0314935 since it is obvious to use a material for its known and conventional uses. Since the taught fibers have dimensions that fall within the claimed ranges, one of ordinary skill in the art would expect the taught fibers to have a micronaire range that falls within the claimed range, absent any showing to the contrary. This is because the micronaire is based on the surface area of the fibers, as determined by the length and diameter of the fibers. The references suggest the claimed insulation product.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
8/27/26
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