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 .
Response to Amendment
This is a response to the amendment filed 5/28/2026. Claims 3-12 have been amended. See arguments below.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues the ranges of NRC and CAC overlap but are not identical, and the prior art does not teach portions of the claimed ranges. However, In the case where the claimed ranges "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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range). See MPEP 2144.05.
Applicant argues Frank et al. (US 20170204604) doesn’t teach the density, thickness, NRC, and CAC as claimed. However, Frank et al. is merely used to show the claimed diameters are known and advantageous in similar products such as Englert et al. (US 7,862,687), and Englart et al. teaches all over features of the claims, including rendering prima facie obvious all ranges. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant argues the instant method achieves an unexpected NRC, CAC, and density. However, Englert et al. teaches ranges overlapping all these ranges directly in a similar product, but is silent on fiber diameter. Applicant argues the diameter of the fibers is critical for the density, but Englert et al. teaches density in the claimed range similar to the panel and there is clear teaching the fibers used in Englert et al. do or could have fallen within the claimed range for increased loft. The fibers in Englert et al. must have some diameter and it would appear diameters as claimed would have predictably produced properties as desired in Englert et al. Examiner further notes Applicant’s data does not appear to support that their diameters of fibers are critical to achieving the claimed densities, and could not be achieved in any other ways.
As stated, Englert et al. already teaches panels having overlapping densities, NRC, and CAC and Applicant has not demonstrated all ranges could not exist within the claimed ranges at the same time, and there is not apparent reasoning or evidence on the record to suggest this. Note it is well settled that counsel's arguments are no substitute for objective evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Also, conclusory statements without supporting evidence are entitled to little probative value. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Wood, 582 F.2d 638, 642 (CCPA 1978); In re Greenfield, 571 F.2d 1185, 1188 (CCPA 1978); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Therefore, without any supporting evidence, applicant's argument is not persuasive. If Applicant desires claiming a density range below the lowest densities taught in Englert et al. to distinguish the instant claims, they are free to do so. As of now, the upper of 12 lbs per cubic foot is rendered obvious by the densities in Englert et al.
It is unclear how Applicant’s argument for Examiner 3 distinguishes from Englert et al. Applicant produces no critical data showing only the claimed diameter can unexpectedly achieve the claimed properties. Further, Englert et al. explicitly teaches thickness, CAC, NRC, and density in the claimed range in Board 2 in Table 7 and implies the make-up of Example 1 with 93% mineral wool, 4.7% thermoplastic binder, and 2% starch (See col. 12, lines 32-34 and col. 16, Table 7). Table 8 also has numerous boards in the claimed range and though it omits CAC, the desired CAC in Englert et al., i.e. 33-36, reads on the claims. Since the board is made exactly as claimed, it is unclear what Applicant posits their data distinguishes since only the wool diameter, which must exist, is missing. If diameter merely affects density, Englert et al. already teaches the claimed range. Further, since the claimed diameters are known for mineral wool in similar products to produce loft, it is unclear what Applicant thinks is inventive. Applicant’s data is not commensurate in scope with the claims and does not distinguish from Englert et al. See MPEP 716.02. Thus, the prima facie case of obviousness is not overcome.
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 8 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 8 uses “chosen from the group of,” which is incorrect Markush language. This should be “selected from the group consisting of” to make clear the choice is limited to those listed for the group.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2 and 6-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Englert et al. (US 7,862,687) in view Frank et al. (US 2017/0204604).
Regarding Claims 1, 8, 9, and 11, Englert et al. teaches a process for manufacturing an acoustical panel (See Abstract) comprising:
mixing an aqueous slurry comprising water and ingredients on a dry basis (See col. 7, lines 15-19, teaching mixing an aqueous slurry), by weight percent (wt.%);
at least about 90 wt.% of mineral wool (See col. 5, lines 33-34, teaching 90-95% mineral wool by dry weight), and
about 1 wt.% to about 10 wt.% of a binder (See col. 5, lines 30-36 and 50-60, teaching 6-7% binder including 1.5-2% starch and 4.5-5% latex);
continuously flowing the aqueous slurry onto a moving foraminous support wire to form a wet basemat (See col. 6, line 28-34, col. 7, line 27-31, and col. 7, 58-62, wherein the slurry is fed onto a porous metal wire forming surface, i.e. a foraminous support wire, in a process that may form a continuous sheet, suggesting the feeding/flowing must be continuous);
dewatering the wet basemat, the dewatering step including pressing the wet basemat to a thickness of about 1.1 inches to about 2.0 (See Fig. 3A, col. 7, lines 31-36, col. 8, lines 1-2, and col. 9, lines 64-65, teaching pressing with a nip [80] during dewatering to form a final pre-coated mat up to 1.2 inches, suggesting pressing to about this thickness or marginally thicker if minor compression occurs during further drying, but surely less than 1.4 inches, or at least rendering obvious a 1.1-1.4 inch range as claimed); and
pulling hot air through the wet basemat via a vacuum and drying to form a dried basemat (See Fig. 3B and col. 8, lines 29-33, wherein dryer [100] emits hot air that is pulled through the base mat [65] by vacuums [92]-[95]);
laminating a porous scrim to a facing side of the dried basemat (See col. 8, lines 49-54, teaching after drying that lamination may occur on a surface, and although silent as to the exact layer laminated, it would have been apparent any well-known layers would have been suitable, including non-woven scrims, which are known to be porous, see col. 2, lines 25-28, teaches a related product in the background wherein the laminated layer is a non-woven fiberglass scrim facer, which is a well-known porous facer for acoustic panels);
wherein the acoustical panel has a density between about 7 pounds per cubic foot (Ibs/ft3) to about 12 Ibs/ft3 (See col. 4, lines 31-36 and col. 10, lines 14-16, teaching densities in the claimed range and as low as 10.9 lbs/ft3 for the formed panel), wherein the acoustical panel has a thickness of greater than about 1.1 inches (See col. 9, lines 64-65, teaches finished basemat thicknesses of up to 1.2 inches before coating),
wherein the acoustical panel has a noise reduction coefficient (NRC) of about 0.80 to about 1.00, and
wherein the acoustical panel has a ceiling attenuation class (CAC) of about 30 to about 50 (See col. 4, lines 3-10, teaching the low-density panel formed has an NRC of 0.80-0.85 and a CAC of 33-36).
Englert et al. teaches the mineral wool is made from “fine filament” (See col. 5, lines 41-43), but is silent as to any specific diameter. However, in similar acoustical panels having a similar final density with nearly identical mineral fiber and binder loadings and similarly designed for excellent NRC and CAC characteristics (See, for example, Frank et al., page 1, paragraphs [0014]-[0016] and page 2, paragraphs [0032]-[0033]), it is known to utilize mineral wool with a diameter of about 6 microns in order to improve loft, reduce density, and improve tensile strength of the final acoustic panel product (See Frank et al., page 3, paragraph [0034], teaching specific advantages for using mineral fiber diameter of around 6 microns in acoustic panels). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize 6-micron fibers as the “fine filaments” of the mineral fiber utilized in the acoustic panel of Englert et al. Such fibers would have predictably been suitable for forming an acoustic panel as desired in Englert et al. while providing ideal loft, lower density, and improved tensile strength.
Regarding Claim 2, Engler et al. teaches painting and/or laminating (See col. 8, lines 51-55), thus suggesting painting, i.e. a decorative coating, may occur in association with laminating.
Regarding Claim 6, Englert et al. teaches a vacuum of 2-4 inHg (See col. 9, lines 25-30).
Regarding Claims 7 and 12, Engler et al. makes clear all further additives such as those recited in 7 and 12 are optional, and the panel may be substantially free of these additives (See col. 5, lines col. 5, line 63 to col. 6, line 9 and Table I, indicating additional additives are optional and specifically disclosing the lower range loading as 0%).
Regarding Claim 10, Englert et al. teaches “flocculants” as an additive that may be included (See col. 5, lines col. 5, line 63 to col. 6, line 9). Flocculants, which cause clumping and aggregation in slurries, would have been understood as flocculation/retention aid by keeping the slurry together during dewatering, etc.
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Englert et al. and Frank et al. as applied to Claim 1 and 2 above, and further in view of Kragness et al. (US 2020/0173172).
Regarding Claims 3 and 4, Englert et al. and Frank et al. teach the method of Claims 1 and 2 above. Englert et al. teaches coatings may be applied to a front and side-side of the acoustic panel, but is silent as to the coating weights. However, it would have been apparent known coating weight for coatings applied to acoustic panels would have predictably been suitable for the coatings in Englert et al. Examiner submits 10-70 g/ft2 is a known suitable coating weight range for coatings on acoustic panels (See, for example, Kragness et al., page 8, paragraph [0110], teaching a range of dry coating weights for coatings on a similar acoustic panel). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize the coating weights as claimed for the front and back coating. These coating weights fall within a typical range known for similar coatings in the prior art and thus would have predictably been suitable dry coating weights for the front and back coatings.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Englert et al. and Frank et al. as applied to Claim 1 above, and further in view of Englert et al. (US 2008/0060871, herein after “Englert2”).
Regarding Claims 5, Englert et al. and Frank et al. teach the method of Claim 1 above. Englert et al. teaches hot air drying as described above and teaches starch and thermoplastic latex binder with a Tg around 100 Celsius, suggesting heating should be above this range to integrate the binder during drying, but is silent as to specific drying conditions. However, using temperatures within the claimed range to implement drying in acoustical boards is well-known, such as 300 F or 149 C (See, for example, Englert2, Abstract, page 3, paragraph [0028] and page 5, paragraph [0045], teaching drying of the wet slurry of a acoustic panel including latex thermoplastic binder may occur at 300 F). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize hot air temperatures within the claimed range for drying. Such temperatures are known for drying similar panels and would have predictably been suitable for the hot air in Englert et al.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SCOTT W DODDS/Primary Examiner, Art Unit 1746
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