DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-16, drawn to a binder composition for fibrous materials and a fibrous material classified in C08L77/06.
II. Claim 17-20, drawn to a method of making a fibrous material, classified in
C08J5/04.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product can be made by another and materially different process, such as curing at a temperature greater than 220 ˚C.
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:
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
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 Robert Touslee on 10/8/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action.
Claims 17-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 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.
Claims 15-16 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.
Claims 15-16 recite the limitation "the fibrous material" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-6, 8-14, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Husemoen et al. (US 2004/0024170).
Regarding claim 1: Husemoen is directed to a binder composition for fibrous materials, comprising:
A beta hydroxy alkyl amide crosslinked with a monomer or polymeric polycarboxylic acid.
Specifically, Husemoen discloses the reaction of an amine and an anhydride, wherein suitable amines include diethanolamine (DEA) and suitable anhydrides include trimellitic anhydride, and are further crosslinked with polyacrylic acid (PAA).
Husemoen doesn't specifically recite a cure rate of greater than or about 4 MPa/C at 160 ˚C. However, the binder composition produced in Husemoen is substantially identical to the binder composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Husemoen suggests a cure rate of greater than or about 4 MPa/C at 160 ˚C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claims 2-4: A secondary alkanolamine of diethanolamine reacted with mono- or polybasic acids or anhydrides, i.e. trimellitic anhydride, adipic acid, are utilized in the working examples ([0036]-[0042] Husemoen).
Regarding claims 5-6: succinic anhydride, adipic acid, trimellitic anhydride, phthalic anhydride, and tetrahydrophthalic anhydride are utilized in the working examples ([0036]-[0042] Husemoen).
Regarding claim 8: A homopolymer of acrylic acid, polyacrylic acid (PAA) is utilized in the working examples ([0044] Husemoen).
Regarding claim 9: Husemoen doesn't specifically recite the binder composition has an exothermic onset temperature of greater than 275 ˚C. However, the binder composition produced in Husemoen is substantially identical to the binder composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Husemoen suggests a binder composition has an exothermic onset temperature of greater than 275 ˚C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 10: The ratio of carboxyl groups to hydroxyl groups is at least 0.5:1. For instance, Formulation 1 comprises DEA:THPA in a molar ratio of 1:1.4 (Table 1 Husemoen).
Regarding claim 11: Husemoen is directed to a fibrous material comprising:
A cured binder composition, the cured binder composition comprising:
A beta hydroxy alkyl amide crosslinked with a monomer or polymeric polycarboxylic acid.
Specifically, Husemoen discloses the reaction of an amine and an anhydride, wherein suitable amines include diethanolamine (DEA) and suitable anhydrides include trimellitic anhydride, and are further crosslinked with polyacrylic acid (PAA).
A plurality of fibers is disclosed.
Husemoen doesn't specifically recite a cure rate of greater than or about 4 MPa/C at 160 ˚C. However, the binder composition produced in Husemoen is substantially identical to the binder composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Husemoen suggests a cure rate of greater than or about 4 MPa/C at 160 ˚C. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 12: An amount of unreacted portion of homopolymer or copolymer of acrylic acid is not mentioned. However, the binder composition produced in Husemoen is substantially identical to the binder composition produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Husemoen suggests an amount of unreacted portion of homopolymer or copolymer of acrylic acid within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 13: Mineral fibers and glass fibers are disclosed ([0001] Husemoen).
Regarding claim 14: Husemoen teaches that fibers are in the form of a mat when coated ([0002] Husemoen).
Regarding claim 16: Husemoen doesn’t mention the fibrous material is thermally stable for a time greater than or about 100 minutes at a temperature of greater than or about 230 ˚C.
However, the composition produced in Husemoen is substantially identical to the fibrous material produced in the instant invention.
Case law holds that 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Husemoen suggests a fibrous material having a thermal stability within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Husemoen as applied to claim 1 above, and further in view of Crescimanno et al. (US 2014/0094560).
Regarding claim 7: Husemoen doesn’t mention a polycarboxylic acid of acrylic acid and maleic acid.
Crescimanno is directed to a binder composition comprising a polyol including an alkanolamine ([0012] )which is crosslinked with a polyacid homopolymer or copolymers including maleic acid and acrylic acid ([0054] Crescimanno). One skilled in the art would have been motivated to have included maleic acid in the crosslinking agent to increase the crosslinking density in the cured binder ([0054] Crescimanno). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included maleic acid in the crosslinking agent of Husemoen.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Husemoen as applied to claim 1 above, and further in view of Arkens et al. (US 6,136,916).
Regarding claim 7: Husemoen doesn’t mention a polycarboxylic acid of acrylic acid and maleic acid.
Arkens is directed to a formaldehyde free binder composition comprising an alkanolamine and a crosslinking agent of either polyacrylic acid or a copolymer of acrylic acid and maleic acid utilized in the working examples (Table 2.1).
At the time of filing, a person of ordinary skill in the art would have found it obvious to substitute polyacrylic acid for a copolymer of acrylic acid and maleic acid, and would have been motivated to do so because they are art recognized equivalents used for the same purpose and one of ordinary skill in the art would have a reasonable expectation of success in substituting one for the other. Further, the substitution of one crosslinker for another is within the level of ordinary skill in the art. In addition, the substitution of is obvious when it does no more than yield predictable results. MPEP 2144.06(II).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Husemoen as applied to claim 11 above, and further in view of Srinivasan et al. (US 2007/0292619).
Regarding claim 15: Husemoen mentions fibers, although doesn’t specifically mention thermal insulation or acoustic insulation.
Srinivasan is directed to a binder composition comprising an alkanolamine for making fiberglass thermal insulation. One skilled in the art would have been motivated to have used the binder composition of Husemoen to produce fiberglass thermal insulation to produce a formaldehyde free fiberglass thermal insulation finished product ([0069] Srinivasan). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have used the binder composition of Husemoen to produce fiberglass thermal insulation.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
