DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Disposition of Claims
Claims 1-20 are pending in the application.
Withdrawn Rejections
The 35 U.S.C. §103 rejections of claims 1-20 over Shooshtari et al. (WO 2011/019597 A1), Floyd (US Patent No. 4,505,712) and Srinivasan et al. (US 2007/0292618 A1), made of record in the office action mailed 10/10/2025, are hereby withdrawn.
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 19 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 19 recites the limitation “wherein the nitrogen-containing compound is a diamine chosen from the group consisting of ethylene diamine, 1,3-propanediamine, 1,4-butanediamine, 1,5-pentanediamine, 1,6-hexanediamine, α, α'-diaminoxylene, diethylenetriamine, triethylenetetramine, tetraethylenepentamine, and diamino benzene.” It is unclear what the nitrogen-containing compound is as claim 1 recites the limitation “the nitrogen-containing compound comprises a reaction product of a urea compound and glyoxal.”
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 10 of U.S. Patent No. 10,815,593 B2 in view of Shooshtari et al. (WO 2011/019597 A1).
Claim 1 of U.S. Patent No. 10,815,593 B2 meets all the limitations of claims 1 and 20 of the present application except for a glass fiber mat (claim 1) or insulation product (claim 20) comprising glass fibers and a binder, wherein the binder comprises cured products from the claimed carbohydrate binder composition.
However, Shooshtari teaches that fiberglass binders have a variety of uses ranging from stiffening applications where the binder is applied to woven or non-woven fiberglass sheet goods and cured, producing a stiffer product; thermo-forming applications wherein the binder resin is applied to a sheet or lofty fibrous product, following which it is dried and optionally B-staged to form an intermediate but yet curable product; and to fully cured systems such as building insulation (claim 1, lines 9-14). Shooshtari also teaches a curable composition for use in the binding of fiberglass, wherein the composition upon curing is capable of forming a water insoluble binder which exhibits good adhesion to glass (p. 4, lines 1-6). In a preferred embodiment the resulting fiberglass product is a fiberglass mat (p. 4, lines 13-14). Shooshtari teaches that it has been found that, in particular, curable compositions comprising a thickener and/or rheology modifier provide improved properties, such as improved dry tensile strength and hot/wet tensile strength, of fiberglass mats (p. 7, lines 3-5).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have applied the carbohydrate binder composition to a fiberglass mat in order to obtain a bound fiberglass mat that has been stiffened and/or thermoformed and can potentially be used in applications requiring such properties, such as a facer, printed circuit board, battery separator, filter stock, or reinforcement scrim (p. 4, lines 13-16; and p. 1, lines 9-14).
With respect to claims 2-3 of the present application, Shooshtari teaches roofing membranes, facer mats, battery separators, filter stock and reinforcement scrim (see p. 8, lines 9-14).
With respect to claims 4-5 of the present application, claims 1 and 3 of U.S. Patent No. 10,815,593 B2 meet the claimed limitations.
With respect to claims 6-7 of the present application, Shooshtari teaches a fiber diameter within the range of 1 to 30 μm, most preferred within the range of 7μ to 13μ (p. 9, lines 11-14).
With respect to claim 8 of the present application, Shooshtari teaches lengths of about 0.20 inches to 1.5 inches, more preferred from about 0.25 inches to 0,6 inches (p. 9, lines 32-35).
With respect to claims 9-10 of the present application, Shooshtari teaches a minor portion of other fibers, either in addition to or in replacement of glass fibers, such as mineral fibers, such as mineral wool, slag wool, ceramic fibers, carbon fibers, metal fibers, refractory fibers, or mixtures thereof; or other synthetic or polymer fibers, such as melt blown micro denier fibers or melt spun fibers of polyester, nylon, polyethylene, polypropylene, or the like, may also be used (pp. 10-11, lines 34-4).
With respect to claim 11 of the present application, Shooshtari does not explicitly disclose wherein the non-glass fibers do not exceed 25 wt.% of the total weight of the glass fibers and the non-glass fibers. However, Shooshtari teaches that beside the chopped glass fibers, the web may contain a minor portion of other fibers, either in addition to or in replacement of glass fibers, such as mineral fibers, such as mineral wool, slag wool, ceramic fibers, carbon fibers, metal fibers, refractory fibers, or mixtures thereof (pp. 10-11, lines 34-4).
It would have been obvious to one having ordinary skill in the art at the time of the invention to have included non-glass fibers in an amount not exceeding 25 wt.% of the total weight of the glass fibers and the non-glass fibers because Shooshtari teaches that the web may contain a minor portion of such fibers, which implies that such fibers would account for less than 50 wt.% of the total weight of the combined fibers, and further as Shooshtari in other embodiments provides an example of a range for a “minor portion” being about 1 to about 30 weight percent (pp. 10-11, lines 34-4, and p. 9, lines 25-30).
With respect to claims 12-13 of the present application, Shooshtari teaches the amount of cured binder at the conclusion of the curing step commonly is approximately 10 to 30 percent by weight, and most preferably 12 to 20 percent by weight of the total weight of the mat, see p. 8, lines 29-31). The examiner notes that the glass fibers would be present in an amount of 70-90 percent by weight, or 80-88 percent by weight, when the glass fiber mat consists of the fibers and the binder.
With respect to claim 14 of the present application, claim 1 of U.S. Patent No. 10,815,593 B2 meets the claimed limitations.
With respect to claim 15 of the present application, claim 2 of U.S. Patent No. 10,815,593 B2 meets the claimed limitations.
With respect to claims 16-17 of the present application, claims 4-5 of U.S. Patent No. 10,815,593 B2 meet the claimed limitations.
With respect to claim 18 of the present application, claim 10 of U.S. Patent No. 10,815,593 B2 meets the claimed limitations.
With respect to claim 19 of the present application, Shooshtari teaches ethylene diamine, 1,3-propanediamine, 1,4-butanediamine, 1,5-pentanediamine, 1 ,6-hexanediamine, α, α'-diaminoxylene, diethylenetriamine, triethylenetetramine, tetraethylenepentamine, and mixtures of these (p. 5, lines 30-35).
Conclusion
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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