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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/09/2026 has been entered.
Claim Rejections - 35 USC § 112
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.
Claim 12 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.
Claim 12 is rejected for depending upon claim 11 which has been cancelled. Claim 12 has been examined as depending upon claim 1. Applicant has been advised to amend claim 12 to depend upon a current claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 recites monomeric polyols that include less than 5 hydroxyl groups such as pentaerythritol and therefore claim 12 does not include all the limitations of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 8-10, 12, 14, 17-22, 25, 27-28, 30, 37-38Nand 41 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez-Torrez (PG Pub. 2013/0334726).
Regarding claims 1-4, 8, 10-12, 22, 25, 27-28 and 30, Hernandez-Torrez teaches a fibrous insulation product comprising a plurality of glass fibers and a crosslinked formaldehyde-free binder at least partially coating the fibers [0025, 0030, 0050, 0052 and 0099]. The crosslinked formaldehyde-free binder is formed from an aqueous binder composition comprising 5-37% by weight of at least one monomeric polyol having at least five hydroxyl groups (hexose monosaccharides is taught and the polyols having at least two hydroxyl groups which would include polyols with at least 5 hydroxyl groups and are considered primary alcohol as they contain a primary alcohol) and at least 54% by weight of crosslinking agent comprising a polymeric carboxylic acid having at least two carboxylic acid groups (as admitted by Applicant in the Remarks dated 06/09/2026, Hernandez-Torrez teaches at least about 50 weight percent which includes amount above 50 weight percent including 54 weight percent) based on the total solids content of the aqueous binder composition [0015, 0055 and 0057]. It is apparent, however, that the instantly claimed crosslinking agent weight percent and that taught by Hernandez-Torrez are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the crosslinking agent weight percent disclosed by Hernandez-Torrez and the crosslinking agent weight percent disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the crosslinking agent weight percent, it therefore would have been obvious to one of ordinary skill in the art that the crosslinking agent weight percent disclosed in the present claims is but an obvious variant of the crosslinking agent weight percent disclosed in Hernandez-Torrez, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
The quantity of the formaldehyde-free crosslinked binder on the fibers is in the claimed range (1-30% is taught) [0026]. The R-value of the fibrous insulation product is in the claimed range [Examples]. The glass fibers have an average fiber diameter in the claimed range [0025]. The fibrous insulation product when uncompressed has a density in the claimed range [0033]. Hernandez-Torrez teaches such a similar fibrous insulation made of similar materials in such similar amounts the claimed maximum failure force (wall) per product weight, maximum failure force (ceiling) and average normal force is inherent to the fibrous insulation product of Hernandez-Torrez. Further, the present specification teaches “The inventive insulation products (i.e., the packaged NGFG batts) are believed to have an improved stiffness owing, at least in part, to the use of a binder containing a monomeric polyol, the processing/curing of which leads to stronger cross-linking in the fiber matrix” and “The inventive insulation products (i.e., the packaged NGFG batts) are believed to have an improved stiffness owing, at least in part, to the use of a binder containing a monomeric polyol, the processing/curing of which leads to stronger cross-linking in the fiber matrix.” and therefore, it is clear the fibrous insulation product of Hernandez-Torrez et al. inherently possesses the claimed properties as the binder contains monomeric polyol and is crosslinked and is composed of such similar components in such similar quantities.
Hernandez-Torrez teaches the ratio of molar equivalents of carboxylic acid groups to hydroxyl groups in the aqueous binder composition is in the claimed range [0052]. Further, the claimed range is taught by the range of Hernandez-Torrez and further the claimed range includes 1:1 which would have been obvious to one of ordinary skill in the art to create stoichiometrically balance and provide a stronger and more dimensionally stable cure. Hernandez-Torrez is silent regarding the claimed aqueous binder composition being free of polyols comprising less than 4 hydroxyl groups. However, it would have been obvious to one of ordinary skill in the art to have an aqueous binder composition free of polyols comprising less than 4 polyols in order to provide more reactive sites and thereby improve strength and arrive ta the claimed invention.
Regarding claim 9, the crosslinking agent is polyacrylic acid [0070].
Regarding claims 21 and 41, Hernandez-Torrez teaches the quantity of the cross-linked formaldehyde-free binder on the fibers is in the claimed range by weight of the fibrous insulation product (2-20% is taught in 0026). The R-value of the fibrous insulation product is in the claimed range (R-19 is taught in Example 1). The glass fibers have an average fiber diameter in the claimed range (3-6micrometers is taught in 0025). The fibrous insulation product has a density when uncompressed in the claimed range (0033 teaches 0.2-10 pcf and further 0034 teaches the density as a results effective variable that is selected to tailor the product to the end use application and it would have been obvious to one of ordinary skill in the art to arrive at the claimed density in order to tailor the product to the end use application and arrive at the claimed invention). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 26, the aqueous binder composition further comprises at least 50% by weight a crosslinking agent comprising a polymeric polycarboxylic acid having at least two carboxylic acid groups based on the total solids content of the aqueous binder composition [0072]. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Hernandez-Torrez is silent regarding 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 or 0.8/1.0 to 1.0 to 0.8 However, it would have been obvious to one of ordinary skill in the art to optimize the ratio of molar equivalents of carboxylic acid groups to hydroxyl groups in the aqueous binder composition including equivalent amount of 1.0/1.0 by adjusting the amount of the polycarboxylic acid and polyhydroxyl compound in the binder by routine experimentation in order to improve the performance of the fibrous insulation product, especially because Hernandez claims a wide range of values for the amount of polyhydroxyl compound in the binder and wide variety of compounds to be used as the polycarboxylic acid and polyhydroxyl compound [0055], the polyhydroxy compound or polyol is polyvalent, having two or more hydroxyl groups that can be available for reaction...the polyol may be smaller monomeric compounds like glycerol, ethylene glycol, propanediols, propanetriols, tri ethylol propane, erythritol or other butane-based polyols, pentaeythritol; and [0057]. Hernandez-Torrez also teaches the carboxylic acid groups and the hydroxyl groups as a results effective variable to affect crosslinking and therefore it would have been obvious to one of ordinary skill in the art to arrive at the claimed ratio of molar equivalents of carboxylic acid groups to hydroxyl groups in the aqueous binder composition in order to affect crosslinking and arrive at the claimed invention. Thus, polyol (polyhydroxyl) component may be present in the binder composition in an amount from about 1% to about 99% by weight of the total solids in the binder composition; and para [0070].
Regarding claim 14, Hernandez-Torrez teaches the polyol is polyvinyl alcohol (long chain polyol with at least 2 hydroxyl groups). Hernandez-Torrez teaches varying the molecular of the polyol and such is also known in the art to a person of ordinary skill and arriving at the claimed molecular weight would have been obvious to one of ordinary skill in the art in order to affect the binder properties such as mechanical properties including strength, adhesion, and viscosity.
Regarding claims 17-18 and 37-38, Hernandez-Torrez is silent regarding the claimed viscosity. However, Hernandez-Torrez teaches inclusion of viscosity modifiers in order to tailor the viscosity and it would have been obvious to one of ordinary skill in the art to use any viscosity, including that presently claimed, in order to tailor the binder to improve properties of the insulation such as strength, uniformity, flexibility and other mechanical properties.
Regarding claims 19-20, Hernandez-Torrez is silent regarding the claimed R-value. However, Hernandez-Torrez teaches the R-value can vary depending on the desired properties needed and it would have been obvious to one of ordinary skill in the art to arrive at the claimed R-values in order to improve insulation effect and energy savings or to lower cost and tailor the insulation to a warmer climate and arrive at the claimed invention.
Regarding claims 21 and 41, Hernandez-Torrez teaches the quantity of the cross-linked formaldehyde-free binder on the fibers is in the claimed range by weight of the fibrous insulation product (2-20% is taught in 0026). The R-value of the fibrous insulation product is in the claimed range (R-19 is taught in Example 1). The glass fibers have an average fiber diameter in the claimed range (3-6micrometers is taught in 0025). The fibrous insulation product has a density when uncompressed in the claimed range (0033 teaches 0.2-10 pcf and further 0034 teaches the density as a results effective variable that is selected to tailor the product to the end use application and it would have been obvious to one of ordinary skill in the art to arrive at the claimed density in order to tailor the product to the end use application and arrive at the claimed invention). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Response to Arguments
Applicant's arguments filed 06/09/2026 have been fully considered but they are not persuasive.
Applicant argues Hernandez-Torrez does not teach the monomeric polyol having at least five hydroxyl groups based on the total solids content of the aqueous binder composition and admits Hernandez-Torrez teaches at least about 50 weight percent. About 50 weight percent includes amount above 50 weight percent including 54 weight percent. Hernande-Torrez teaches hexose monosaccharides is taught and the polyols having at least two hydroxyl groups which would include polyols with at least 5 hydroxyl groups. Applicant argues Hernandez-Torrez does not teach the claimed ratio of carboxylic acid groups to hydroxyl groups. Hernandez-Torrez teaches the ratio of molar equivalents of carboxylic acid groups to hydroxyl groups in the aqueous binder composition is in the claimed range [0052]. Further, the claimed range is taught by the range of Hernandez-Torrez and further the claimed range includes 1:1 which would have been obvious to one of ordinary skill in the art to create stoichiometrically balance and provide a stronger and more dimensionally stable cure. Hernandez-Torrez is silent regarding the claimed aqueous binder composition being free of polyols comprising less than 4 hydroxyl groups. However, it would have been obvious to one of ordinary skill in the art to have an aqueous binder composition free of polyols comprising less than 4 polyols in order to provide more reactive sites and thereby improve strength and arrive at the claimed invention.
Applicant is invited to amend the claims over the cited art.
Art Not Used but Relevant
EP 1517959 teaches a fibrous insulation product with glass fibers and a formaldehyde free binder with the claimed monomeric polyol with the claimed number of hydroxyl groups.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
