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 in the reply filed on August 18, 2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 32 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 32 recites, “The method of claim 1, further comprising forming the cut thermal or acoustical insulation product into rigid, rectangular boards by folding along the cuts.” Applicant’s disclosure does not provide any mention of folding. Accordingly, the disclosure lacks an adequate written description to support “folding along the cuts.”
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 4 and 32 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 4 contains the trademark/trade name GlassMaster®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe blades from GlassMaster® and, accordingly, the identification/description is indefinite.
Claim 32 recites, “The method of claim 1, further comprising forming the cut thermal or acoustical insulation product into rigid, rectangular boards by folding along the cuts.” As noted above, Applicant’s disclosure does not provide any explanation of what is meant by folding. Perhaps Applicant intends to convey a partial cutting followed by bending along the cut line for a more complete break, similar to cutting down a tree. However, without such context, the meaning is unclear. As best understood based on pages 21-23 of Applicant’s disclosure, the insulation is cut into rectangular shapes. Claim 32 will be examined based on an interpretation that the cutting results in rigid, rectangular boards.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-25, 27-30, and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swift (US 2016/0280950) in view of Suda (US 2005/0153616).
Regarding claim 1, Swift discloses a method of fabricating a thermal or acoustical insulation product ([0019] [0065]), the method comprising: providing a thermal or acoustical insulation product having a density of from about 0.4 lbs/ft3 to about 6 lbs/ft3 (0.4-4.5 lbs/ft3, [0019] [0065] [0104]), wherein the thermal or acoustical insulation product comprises: (a) a collection of glass fibers, the glass fibers being present in the insulation product in the range from about 80% by weight to about 99% by weight (glass fibers, 80-99%, [0019] [0099]); and (b) a cured, formaldehyde-free binder disposed on the collection of glass fibers (cure, formaldehyde-free binder, [0008] [0015] [0019]), wherein the cured binder comprises i) at least one Maillard reaction product of a carbohydrate reactant and an amine reactant ([0051] [0053-54] [0057] [0062]), wherein the carbohydrate reactant is selected from one or more carbohydrate reactants having one or more reducing sugars ([0054]), one or more carbohydrate reactants which yield one or more reducing sugars in situ under thermal curing conditions ([0057]), and combinations thereof ([0054] [0057]), wherein the amine reactant is selected from an ammonium salt of one or more monomeric polycarboxylic acids ([0062]), an ammonium salt of one or more polymeric polycarboxylic acids ([0062]), and combinations thereof ([0062]), and wherein the percent by dry weight of the reducing sugar from the carbohydrate reactant with respect to the total weight of reactants ranges from about 73% to about 96% ([0057]), ii) a silicon-containing coupling agent ([0069]), and iii) optionally, a corrosion inhibitor ([0072]), and Swift teaches cutting with a band saw ([0120]) . Swift teaches a method substantially as claimed.
Swift does not disclose performing at least 40,000 linear feet of cuts on the thermal or acoustical insulation product with a single cutting blade.
However, in the same field of endeavor of manufacturing a fiberglass insulation product with a cured binder and cutting it ([0003-04] [0008]), Suda teaches performing at least 40,000 linear feet of cuts on the thermal or acoustical insulation product with a single cutting blade (improved/facilitated cutability, [0009] [0037] [0049] [0060]; produced in rolls at 300ft/min or higher and chopped with a shopper 112, [0035-36], it would have been obvious to optimize for industrial production to maximize durability of production tools, particularly for a method with material of improved cutability). It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Swift to include the reinforcing layer of Suda ([0009]) and cut at least 40K linear feet with a single blade because [0009] [0037] [0049] [0060] of Suda teaches that doing so improves cuttability and [0035-36] teaches cutting at an industrial scale that would have made it obvious to optimize the industrial production to maximize durability of production tools, with the benefit of the improved cutability.
Regarding claim 2, Swift as modified teaches wherein the thermal or acoustical insulation product is selected from the group consisting of air duct board, duct liner, and pipe insulation (Swift [0118]).
Regarding claim 3, Swift as modified teaches wherein the single cutting blade provides a cutability rating of less than 4 over all of the at least about 40,000 linear feet of cuts (improved cuttability taught by Swift [0009] [0037] [0049] [0060]; as modified in view of Sude ([0035-36]), teachings on industrial scale production with improved cutting is obvious to optimize for this).
Regarding claim 4, Swift as modified teaches wherein the single cutting blade is a GlassMaster® blade (routine experimentation for cuttability, with a cutting implement in the field, as modified, Suda [0031] [0049]).
Regarding claim 5, Swift as modified teaches wherein the single cutting blade maintains a durability, wearability, and/or longevity comparable to a single cutting blade used to cut a thermal or acoustical insulation product comprising a collection of glass fibers and a cured, phenol-formaldehyde binder (Swift [0008] [0015] [0019]) over the at least 40,000 linear feet of cuts (routine experimentation for cuttability, with a cutting implement in the field, as modified, Suda [0031] [0049]).
Regarding claim 6, Swift as modified teaches where the ratio of mean weathered tensile strength to mean dry tensile strength for the thermal or acoustical insulation product is in the range from about 0.7 to about 1 (Swift [0095-97], Table 3-6).
Regarding claim 7, Swift as modified teaches wherein the amine reactant comprises an ammonium salt of a monomeric polycarboxylic acid (Swift [0058]).
Regarding claim 8, Swift as modified teaches wherein the monomeric polycarboxylic acid is selected from the group consisting of citric acid, aconitic acid, adipic acid, azelaic acid, chlorendic acid, citraconic acid, fumaric acid, glutaric acid, isophthalic acid, itaconic acid, maleic acid, malic acid, mesaconic acid, oxalic acid, phthalic acid, sebacic acid, succinic acid, tartaric acid, terephthalic acid, and trimellitic acid (Swift [0037]).
Regarding claim 9, Swift as modified teaches wherein the monomeric polycarboxylic acid is citric acid (Swift [0037]).
Regarding claim 10, Swift as modified teaches wherein the carbohydrate reactant includes a monosaccharide reducing sugar (Swift [0057].
Regarding claim 11, Swift as modified teaches wherein the monosaccharide reducing sugar is selected from the group consisting of erythrose, threose, erythrulose, ribose, arabinose, lyxose, ribulose, arabulose, xylulose, lyxulose, mannose, galactose, allose, altrose, talose, gulose, psicose, sorbose, tagatose, and sedoheptulose (Swift [0057]).
Regarding claim 12, Swift as modified teaches wherein the monosaccharide reducing sugar is selected from the group consisting of dextrose, xylose, fructose, and dihydroxyacetone (Swift [0057]).
Regarding claim 13, Swift as modified teaches wherein the monosaccharide reducing sugar comprises dextrose (Swift [0057]).
Regarding claim 14, Swift as modified teaches wherein the carbohydrate reactant comprises a carbohydrate selected from the group consisting of a pentose, a pentose used in combination with other reducing sugars, xylose, xylose used in combination with other reducing sugars, a hexose, a hexose used in combination with other reducing sugars, dextrose, dextrose used in combination with other reducing sugars, fructose, fructose used in combination with other reducing sugars, sucrose, and sucrose used in combination with monosaccharides (Swift [0054] [0057]).
Regarding claim 15, Swift as modified teaches wherein the carbohydrate reactant comprises one or more carbohydrate reactants which yield one or more reducing sugars in situ under thermal curing conditions selected from the group consisting of sucrose, lactose, maltose, starch, and cellulose (Swift [0057]).
Regarding claim 16, Swift as modified teaches wherein the silicon-containing coupling agent is amino-substituted (Swift [0069]).
Regarding claim 17, Swift as modified teaches wherein the silicon-containing coupling agent is a silyl ether (Swift [0069]).
Regarding claim 18, Swift as modified teaches wherein the silicon-containing coupling agent includes at least one of gamma-aminopropyltriethoxysilane, gamma- glycidoxypropyltrimethoxysilane, aminoethylaminopropyltrimethoxysilane, and n-propylamine silane (Swift [0069]).
Regarding claim 19, Swift as modified teaches wherein the cured binder comprises a corrosion inhibitor (Swift [0072]).
Regarding claim 20, Swift as modified teaches wherein the corrosion inhibitor is selected from at least one of the group consisting of dedusting oil, monoammonium phosphate, sodium metasilicate pentahydrate, melamine, tin(II)oxalate, and a methylhydrogen silicone fluid emulsion (Swift [0072]).
Regarding claim 21, Swift as modified teaches wherein the cured binder disposed on the collection of glass fibers is dehydrated and subsequently cured (Swift [0017] and claim 54).
Regarding claim 22, Swift as modified teaches wherein the cured binder disposed on the collection of fibers is a substantially water-insoluble thermoset resin (Swift [0067]).
Regarding claim 23, Swift as modified teaches wherein the cured binder disposed on the collection of glass fibers comprises water-insoluble melanoidins (Swift [0015] and claim 56).
Regarding claim 24, Swift as modified teaches wherein the ammonium salt includes an ammonium ion selected from the group consisting of +NH4, +NH3R1 and +NH2R1R2, wherein R and R2 are each independently selected in +NH2R1R2, R is alkyl which is substituted by at least one group selected from aminoalkyl, amide, nitrile, amino, dialkylamino, acylamino and combinations thereof, and wherein R2 is selected from alkyl, cycloalkyl, alkenyl, cycloalkenyl, heterocyclyl, aryl, and heteroaryl, each of which may be optionally substituted (Swift [0074]).
Regarding claim 25, Swift as modified teaches wherein the ammonium ion is +NH4 (Swift [0074]).
Regarding claim 27, Swift as modified teaches wherein the amine reactant comprises an ammonium salt of one or more monomeric polycarboxylic acids, wherein the ammonium salt includes an ammonium ion +NH3R1, wherein R is alkyl which is substituted by at least one group selected from aminoalkyl, amido, nitrile, amino, dialkylamino, acylamino and combinations thereof (Swift [0034-35] [0050]).
Regarding claim 28, Swift as modified teaches wherein the amine reactant comprises an ammonium salt of one or more monomeric polycarboxylic acids, wherein the ammonium salt includes an ammonium ion +NH3R1, wherein R1 is selected from alkyl, cycloalkyl, alkenyl, cycloalkenyl, and heterocyclyl, each of which is substituted by at least one group selected from aminoalkyl, amide, nitrile, amino, dialkylamino, acylamino and combinations thereof (Swift [0034-35] [0050]).
Regarding claim 29, Swift as modified teaches wherein the cured binder disposed on the collection of glass fibers consists essentially of i) at least one Maillard reaction product of a carbohydrate reactant and an amine reactant (Swift [0057-62]) and ii) a silicon-containing coupling agent (Swift [0069]).
Regarding claim 30, Swift as modified teaches wherein the cured binder disposed on the collection of glass fibers consists of i) at least one Maillard reaction product of a carbohydrate reactant (Swift [0057-62]) and an amine reactant and ii) a silicon-containing coupling agent (Swift [0069]).
Regarding claim 32, Swift as modified teaches forming the cut thermal or acoustical insulation product into rigid, rectangular boards by folding along the cuts (forming air duct board, Swift [0135]; see also, as modified, chopping of Suda, [0036]).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Swift (US 2016/0280950) in view of Suda (US 2005/0153616) as applied to claim 25 above, and further in view of Grant (US 2022/0390059).
Regarding claim 26, Swift as modified teaches wherein the wherein the monomeric polycarboxylic acid is citric acid (Swift [0037]) and the carbohydrate reactant is a mixture of sugars (Swift [0057]). Swift as modified teaches a method substantially as claimed.
Swift does not explicitly disclose that the mixture of sugars is high fructose corn syrup (HFCS-42).
However, in the same field of endeavor of manufacturing a fiberglass insulation product with a cured binder and cutting it ([0003-04] [0008]), Grant teaches wherein the monomeric polycarboxylic acid is citric acid ([0072]) and the carbohydrate reactant is high fructose corn syrup (HFCS-42) ([0076]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the method of Swift such that the carbohydrate reactant is high fructose corn syrup because [0057] of Swift teaches a mixture of sugars, high fructose corn syrup is a mixture of sugars, and [0076] of Grant teaches high fructose corn syrup is an alternative to the sugars listed in [0057] of Swift. Further, Grant teaches high fructose corn syrup in the same technical context, including wherein the monomeric polycarboxylic acid is citric acid ([0072]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Swift (US 9,926,464) teaches subject matter similar to Swift (US 2016/0280950), cited above. Suda (US 7,252,868) teaches subject matter similar to Suda (US 2005/0153616), cited above. Grant (US 12,578,051) teaches subject matter similar to Grant (US 2022/0390059), cited above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J CHIDIAC whose telephone number is (571)272-6131. The examiner can normally be reached 8:30 AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS J CHIDIAC/ Examiner, Art Unit 1744
/John J. DeRusso/ Primary Examiner, Art Unit 1744
