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 .
This Office Action is in response to the application filed 9/13/2023.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
Claim 1-11, drawn to a mineral wool plant substrate, classified in C08K5/17.
Claim 12-17, drawn a method of manufacturing a fiber-based plant substrate, classified in C08F8/30.
Claim 18-20, drawn to a mineral wool plant substrate comprising a distinct biner composition, classified C08K5/17.
The inventions are independent or distinct because:
Inventions I and II are related as product and process of making. However, the mineral wool plant substrate of I could be produced using alternative binder application techniques, curing conditions, fiber forming operations, or substrate forming methods that are material different from the specific manufacturing steps recited in II. Therefore, the product of I can be made by a materially different process than that of II, and the inventions are distinct.
Inventions I and III are directed to related product inventions. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed do not overlap in scope, i.e. are mutually exclusive. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Inventions II and III are directed to an unrelated product and process. Product and process inventions are unrelated if it can be shown that the product cannot be used in, or made by, the process. See MPEP § 802.01 and § 806.06. In the instant case, the mineral wool plant substrate of II can be made by process other than the method recited in III.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: (a) the inventions have acquired a separate status in art due to their different classifications; (b) the inventions required a different field of search, including different classes/subclasses and search queries; (c) the prior art applicable to one invention would not be likely be applicable to the other inventions.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr. Seth Niemi on May 12, 2026 a provisional election was made without traverse to prosecute the invention of I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Analysis
Summary of Claim 1:
A mineral wool plant substrate comprising mineral wool fibers bound by a binder formed from aqueous binder composition comprising
A crosslinking agent comprising at least two carboxylic groups
A polyol component having at least two hydroxyl groups
A nitrogen-based protective agent
From 0.05 wt.% to 0.7 wt.% of non-ionic surfactant
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, and 3-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jun et al. (WO2018061223) in view of Rautschek et al. (US2004087719).
Regarding claim 1, Jun teaches a binder composition comprising a non-reducing sugar and a molded article containing an inorganic fiber (claim 7) wherein the inorganic fiber is at least one mineral fiber comprising rock wool (claim 8) thereby reading on the claimed “mineral wool substrate comprising wool fibers bound by a binder.” Jun further teaches an aqueous binder composition (Claim 6), a crosslinking agent comprising polycarboxylic acids having at least two carboxylic acid groups ([0004], [0007]), a polyol component having at least two hydroxyl groups including non-reducing sugars such as sucrose, trehalose, and raffinose (Claims 1-2), and nitrogen based protective agent ([0014] – [0015]).
Jun does not teach a nonionic surfactant in an amount from about 0.05 wt.% to about 0.7 wt.%.
However, Rautschek, in the same field of endeavor, teaches aqueous compositions for use as binders for the preparation of structures based on mineral fibers (Abstract). Rautschek further teaches that the binder composition comprises a wetting agent, wherein the wetting agent many be a nonionic surfactant ([0068]), and teaches employing the wetting agent in amounts of 0.1 to 2 parts by weight per 100 parts by weight per weight silicone resin ([0095]), which overlaps the claimed range. Rautschek further teaches that the binder suspension achieves more immediate uniform wetting of inorganic fibers ([0124]). Therefore, one of ordinary skill in the art would have been motivated to incorporate the nonionic surfactant wetting agent taught by Rautschek into Jun’s mineral wool binder composition in order to achieve the improved wetting of mineral wool fibers taught by Rautschek.
Regarding claim 3, Jun teaches ammonium-containing additives and ammonium salts ([0014] – [0015]) corresponding to the claimed ammonium-based protective agent.
Regarding Claim 4, Jun teaches a substantially formaldehyde-free binder composition (Abstract, [0003] – [0005]).
Regarding claim 5, Jun in view of Rautschek teaches mineral wool plant substrate according to claim 1. Jun further teaches a density of approximately 29 kg/m3 [0082]).
Jun does not expressly teach a density in the claimed range of 30-150 kg/m3.
However, the disclosed density is substantially close to the claimed lower endpoint. Case law has held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.). It would have been obvious to one of ordinary skill in the art to select a density within the claimed range due to the close proximity of the prior-art value and claimed endpoint.
Regarding, claims 6-9 and 11, Jun in view of Rautschek teaches the mineral wool plant substrate according to claim 1.
Jun in view of Rautschek is silent regarding the claimed loss of ignition, bond strength, sink time, water absorption, and puncture resistance.
However, the physical and mechanical properties of loss of ignition, bond strength, sink time, water absorption and puncture resistance are functions of the composition of the mineral wool plant substrate. Jun in view of Rautschek teach the same mineral wool plant substrate comprising an aqueous binder, crosslinking agent, polyol component, nitrogen based protective agent and non-ionic surfactant as set forth in the rejection above. Therefore, the physical and mechanical properties of loss of ignition, bond strength, sink time, water absorption and puncture resistance in the mineral wool plant substrate of Jun in view of Rautshek are expected to be the same properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 10, Jun in view of Rautschek teaches the mineral wool plant substrate according to claim 1.
Jun does not expressly teach the claimed compressive strength.
However, Jun teaches the mineral fiber mat having high compression recovery [0086]. Therefore, the claimed compressive strength can be optimized via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the compressive strength of the mineral wool plant substrate for the intended application via a routine optimization, thereby obtaining the present invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Jun et.al. (WO201861223) in view of Rautschek et.al. ((US2004087719A1) in view of Bett et. al. (US 6,391,952 B1).
Regarding claim 2, Jun in view of Rautschek teaches the mineral wool plant substrate according to claim 1 as set forth above and incorporated herein by reference.
Jun in view of Rautschek does not expressly teach the nonionic surfactant comprises an ethoxylated propoxylated polyarylphenol ether.
However, Bett teaches polyoxyalkylenated surface-active agents including ethoxy-propoxylated alkylphenol, ethoxy-propoxylated di(1-phenylethyl)phenol, and ethoxy-propoxylated tri(1-phenylethyl)phenol (claim 10). The ethoxy-propoxylated phenolic surfactants taught by Bett corresponds to the claimed ethoxylated propoxylated polyarylphenol ether. Bett further teaches compositions containing such surfactants exhibit excellent wetting by water and spontaneous, rapid, and complete redispersion (col. 11, II. 1-5). One of ordinary skill in the art would therefore have been motivated to utilize the EO/PO-modified phenolic surfactants taught by Bett in the binder composition of Jun in order to improve wetting and distribution of the aqueous binder composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK ROY THOMAS whose telephone number is (571)270-0205. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK ROY THOMAS/Examiner, Art Unit 1764 /ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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