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 .
Applicant’s amendment and accompanying remarks filed November 20, 2025 are acknowledged.
Examiner acknowledges amended claims 1, 23-24 and 70.
Examiner acknowledges cancelled claims 5-6, 9, 11, 13, 15-18, 25, 27-29, 31-69, 71-74, 76-77 and 79-93.
Examiner acknowledges pending claims 1-4, 7-8, 10, 12, 14, 19-24, 26, 30, 70, 75 and 78.
The rejection of claims 1-4, 8, 10, 12, 14, 19-24 and 26 under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Grant et al., U.S. Pre Grant Publication 2021/0170715 is withdrawn due to Applicant’s argument.
The rejection of claims 1-4, 7-8, 10, 12, 14, 19-24,26 and 30 under the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6, 8-12, 17-22, 25-28, 30, 37-38 and 41 of co-pending Application No. 18/562,930 is withdrawn due to Applicant’s argument.
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 1-4, 7, 10, 12, 14, 19-21, 23, 26, 30, 70, 75 and 78 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hernandez-Torres et al., U.S. Pre Grant Publication 2013/0334726.
Regarding claims 1-4 and 23, Hernandez-Torres discloses fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)].
Hernandez-Torres teaches the claimed invention but fails to teach a thickness of the fibrous insulation product changes by less than 65% in response to application of 22.2 N on the fibrous product. It is reasonable to presume a thickness of the fibrous insulation product changes by less than 65% in response to application of 22.2 N on the fibrous product is inherent to Hernandez-Torres. Said presumption is based on Hernandez-Torres’ disclosure of fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 7, paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns.
Regarding claim 10, paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked.
Regarding claim 12, paragraph 0072 discloses that the cross-linking agent is present in the binder composition in the amount of up to about 50% by weight, based on the total solids content of the binder composition.
Regarding claim 14, paragraph 0015 discloses that the binder can include carbohydrate-based polyhydroxyl compound. Paragraph 0060 discloses that the carbohydrate can include sugar alcohol.
Regarding claim 19, Hernandez-Torres teaches the claimed invention but fails to teach that the aqueous binder composition has a viscosity at 40% solids at 25 ºC of 10 cP to 65 cP. It is reasonable to presume that the viscosity of the aqueous binder composition at 40% solids at 25 ºC of 10 cP to 65 cP is inherent to Hernandez-Torres. Said presumption is based upon Hernandez-Torres’s disclosure of fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 20, Hernandez-Torres teaches the claimed invention but fails to teach that the aqueous binder composition has a viscosity at 40% solids at 25 ºC of 300 cP to 500 cP. It is reasonable to presume that the viscosity of the aqueous binder composition at 40% solids at 25 ºC of 300 cP to 500 cP is inherent to Hernandez-Torres. Said presumption is based upon Hernandez-Torres’s disclosure of fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 21, Example 1 discloses an R-value of 19.
Regarding claims 24 and 26, Hernandez-Torres teaches the claimed invention but fails to teach wherein the fibrous insulation product has an uncompressed thickness x; wherein the fibrous insulation product recovers to a thickness y after application of 22.2 N on the fibrous insulation product for 60 seconds; and wherein the thickness y is at least 75% of the thickness x. It is reasonable to presume that wherein the fibrous insulation product has an uncompressed thickness x; wherein the fibrous insulation product recovers to a thickness y after application of 22.2 N on the fibrous insulation product for 60 seconds; and wherein the thickness y is at least 75% of the thickness x is inherent to Hernandez-Torres. Said presumption is based upon Hernandez-Torres’s disclosure of fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 30, paragraph 0025 of Hernandez-Torres discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns.
Regarding claim 70, Hernandez-Torres teaches the claimed invention but fails to teach wherein the plurality of batts have a total batt weight; wherein the package, when unopened, has a volume X; wherein the batts assume a volume y within 10 seconds of the package being opened; wherein the ratio of volume y to volume x/total batt weight is 1.3 or greater. It is reasonable to presume that wherein the plurality of batts have a total batt weight; wherein the package, when unopened, has a volume X; wherein the batts assume a volume y within 10 seconds of the package being opened; wherein the ratio of volume y to volume x/total batt weight is 1.3 or greater is inherent to Hernandez-Torres. Said presumption is based upon Hernandez-Torres’s disclosure of fibrous insulation products [abstract and 0007]. Paragraph 0025 discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns. Paragraph 0026 discloses that the binder is applied in an amount of from 1% to 30% by weight. Paragraph 0033 discloses a density of 0.2 pcf to about 5 pcf [3.2 kg/m3 to 80.1 kg/m3][uncompressed state]. Paragraph 0036 discloses a higher density when the product is compressed. It is disclosed in paragraph 0051 discloses formaldehyde-free binders including monomeric trihydric alcohol [monomeric polyol]. Paragraph 0057 discloses that the binder is cross-linked. Additionally, paragraph 0057 discloses that the polyol is present in the binder in the amount of 1 to about 99% by weight. Example 1 discloses an R-value of 19. Paragraph 0055 discloses that the polyol has two or more hydroxyl groups [which includes four(4)]. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Regarding claim 75, paragraph 0025 of Hernandez-Torres discloses that the fibrous products including glass fibers having a diameter ranging from about 2 to about 9 microns.
Regarding claim 78, paragraph 0026 Hernandez-Torres discloses that the binder is applied in an amount of from 1% to 30% by weight.
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 1-4, 7-8, 10, 12, 14, 19-24, 26, 30, 70,75 and 78 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5-6, 10-12, 14, 16, 18, 20-21,25-27 and 29 of U.S. Patent No. 12,297,342. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the present application and the patented reference recite
A fibrous insulation product comprising: a plurality of glass fibers; and a cross-linked formaldehyde-free binder at least partially coating the fibers, wherein the cross-linked formaldehyde-free binder is formed from an aqueous binder composition comprising 5.0% by weight to 37.0% by weight of at least one monomeric polyol having at least four hydroxyl groups, based on the total solids content of the aqueous binder composition; wherein the quantity of the cross-linked formaldehyde-free binder on the fibers is in the range of 2% to 10% by weight of the fibrous insulation product; wherein the R-value of the fibrous insulation product is in the range of 10 to 54; wherein the glass fibers have an average fiber diameter less than or equal to 3.81 µm; wherein the fibrous insulation product has a density, when uncompressed, in the range of 4.80 kg/m3 to 43.25 kg/m3.
The patented reference teaches the claimed invention but fails to teach but fails to teach a thickness of the fibrous insulation product changes by less than 65% in response to application of 22.2 N on the fibrous product. It is reasonable to presume a thickness of the fibrous insulation product changes by less than 65% in response to application of 22.2 N on the fibrous product is inherent to the patented reference. Said presumption is based on the patented references recitation of A fibrous insulation product comprising: a plurality of glass fibers; and a cross-linked formaldehyde-free binder at least partially coating the fibers, wherein the cross-linked formaldehyde-free binder is formed from an aqueous binder composition comprising 5.0% by weight to 37.0% by weight of at least one monomeric polyol having at least four hydroxyl groups, based on the total solids content of the aqueous binder composition; wherein the quantity of the cross-linked formaldehyde-free binder on the fibers is in the range of 2% to 10% by weight of the fibrous insulation product; wherein the R-value of the fibrous insulation product is in the range of 10 to 54; wherein the glass fibers have an average fiber diameter less than or equal to 3.81 µm; wherein the fibrous insulation product has a density, when uncompressed, in the range of 4.80 kg/m3 to 43.25 kg/m3. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
The claims in both the present application and the patented reference recite wherein the glass fibers have an average diameter in the range of 2.03 µm to 3.05 µm.
The claims in both the present application and the patented reference recite wherein the aqueous binder composition further comprises at least 50.0% by weight of a cross-linking agent comprising a polymeric polycarboxylic acid having at least two carboxylic acid groups, based on the total solids content of the aqueous binder composition; and wherein a ratio of molar equivalents of carboxylic acid groups to hydroxyl groups in the aqueous binder composition is between 0.60/1.0 and 1.0/0.6.
The claims in both the present application and the patented reference recite that the aqueous binder composition has a viscosity at 40% solids and 25 ºC of 10 cP to 65 cP.
The claims in both the present application and the patented reference recite that the aqueous binder composition has a viscosity at 40% solids and 25 ºC of 300 cP to 500 cP.
The patented reference teaches the claimed invention but fails to teach wherein the plurality of batts have a total batt weight; wherein the package, when unopened, has a volume X; wherein the batts assume a volume y within 10 seconds of the package being opened; wherein the ratio of volume y to volume x/total batt weight is 1.3 or greater. It is reasonable to presume that the plurality of batts have a total batt weight; wherein the package, when unopened, has a volume X; wherein the batts assume a volume y within 10 seconds of the package being opened; wherein the ratio of volume y to volume x/total batt weight is 1.3 or greater is inherent to the patented reference. Said presumption is based on the patented references recitation of A fibrous insulation product comprising: a plurality of glass fibers; and a cross-linked formaldehyde-free binder at least partially coating the fibers, wherein the cross-linked formaldehyde-free binder is formed from an aqueous binder composition comprising 5.0% by weight to 37.0% by weight of at least one monomeric polyol having at least four hydroxyl groups, based on the total solids content of the aqueous binder composition; wherein the quantity of the cross-linked formaldehyde-free binder on the fibers is in the range of 2% to 10% by weight of the fibrous insulation product; wherein the R-value of the fibrous insulation product is in the range of 10 to 54; wherein the glass fibers have an average fiber diameter less than or equal to 3.81 µm; wherein the fibrous insulation product has a density, when uncompressed, in the range of 4.80 kg/m3 to 43.25 kg/m3. Burden is upon Applicant to prove otherwise. Fitzgerald, In re, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Response to Arguments
Applicant’s arguments with respect to the present claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786