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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings filed 23 May 2024 are accepted.
Specification
The disclosure is objected to because of the following informalities:
Title: “Cemetitious” should read “Cementitious”;
Specification, pg. 2, ll. 28–30: “ferret diameter” should read “Feret diameter” (compare to pg. 3, l. 4).
Appropriate correction is required.
Claim Interpretation
Pursuant to MPEP 2111.01(I), the words of a claim must be given their “plain meaning” unless such meaning is inconsistent with the specification. In the instant case, the claimed “stone wool objects” (claims 16, 20–23, and 27–34) are typically understood to only refer to fibrous materials, because “stone wool” is inherently fibrous. However, applicants have defined “stone wool objects” to include “fibres, crossed fibres, and particles” (pg. 2, l. 28). Therefore, the broadest reasonable interpretation of the term “stone wool objects” in view of the specification includes non-fibrous particles.
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 16–35 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.
The term “a portion” in claim 16 is a relative term which renders the claim indefinite. The term “a portion” is not defined by the claim, the specification does not provide a standard, example or metric (e.g., by weight, by volume, by number) for determining what amount qualifies. Pursuant to MPEP 2173.05(b), a claim is indefinite when the claim language, read in light of the specification, does not permit one of ordinary skill to ascertain the scope of the invention with reasonable certainty. This ambiguity exists independent of any other claim in the application.
The relationship between claim 16 and its dependent claim 25 illustrates the scope of this ambiguity rather than curing it. Claim 25 limits the amount of stone wool fibers having a longest dimension greater than 250 µm to “at least 0.8% by number”. Dependent claims must further limit the subject matter of their parent claim, which would indicate that “a portion” in claim 16 must be broader than claim 25, i.e., it includes amounts less than 0.8% by number. However, claim 16 does not recite any metric by which the portion is actually measured. A composition comprising 0.5 wt.% of stone wool fibers with length >250 µm would appear to satisfy the limitations of claim 16 on a weight-basis reading, yet this might equate to more than 0.8% by number. This inconsistency demonstrates that a person having ordinary skill in the art cannot determine with a reasonable certainty either (i) what amount satisfies “a portion”, or (ii) by what metric that amount is to be measured. All that is clear is that some value below 0.8% by number must fall within claim 16’s scope, without identifying what that value is or by what metric is should be measured.
For purposes of examination, the Examiner will herein interpret claim 16 as reciting “any amount greater than 0%”, since that satisfies the plain meaning of “a portion” and holds true for any metric by which the portion is measured (i.e., 0.01 wt.%, 0.01 vol.%, and 0.01 n% are all greater than 0%).
Claims 17–35, being dependent on claim 16, inherit its deficiencies, and are rejected on the same grounds.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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.
Claims 16–19, 22–24, 29–30, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Gorazd et al. (EP 3187474 A1, hereinafter “Gorazd”).
Regarding claim 16, Gorazd teaches a cementitious product comprising cementitious material and stone wool objects (see generally abstract teaching an insulation panel [a cementitious product] comprising calcium sulfate [a cementitious material] and mineral wool fibers [a genus that includes stone wool]; also see paragraph 0005 teaching the mineral wool fibers as stone wool), wherein a portion of said stone wool fibers have a longest dimension greater than 250 µm (see paragraph 0005 teaching the average length of the fibers as being less than 20 mm, which means the average is effectively between 0 and 20 mm, which includes embodiments which have a portion with longest dimension >250 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claims 17 and 19, Gorazd teaches the cementitious product of claim 16, and further teaches the limitations wherein said cementitious material comprises at least one of calcium sulfate hemihydrate and calcium sulfate dihydrate (see paragraph 0006 teaching calcium sulfate hemihydrate and dihydrate). Gorazd further teaches the limitation wherein the cementitious product is a plasterboard and the cementitious material comprises calcium sulfate dihydrate (see paragraph 0018 teaching the cementitious product as being a plasterboard).
Regarding claim 18, Gorazd teaches the cementitious product of claim 17, but fails to explicitly teach the limitation wherein said cementitious product is a powder. Gorazd does teach the cementitious material as a powder, including calcium sulfate hemihydrate (see paragraph 0006, specifically col. 1, l. 45 teaching calcium sulfate hemihydrate, and col. 2, ll. 24–26 teaching the drying of a calcium sulfate slurry to form a powder, which is then mixed with the mineral fibers to form the cementitious product). Gorazd ultimately teaches the cementitious product as a plasterboard insulation panel (see paragraph 0018), which does not encompass the term “powder”. However, the insulation panel is formed by mixing mineral wool with calcium sulfate powder (see paragraph 0009), and while Gorazd does not explicitly recite the mineral wool as a “powder”, it encompasses the dimensions that applicants claim [i.e., if a portion of stone wool fibers with a longest dimension greater than 250 µm is recited in claim 16, it must be present in the powder product of dependent claim 18, meaning dimensions greater than 250 µm are considered by applicants to qualify as powders). The mixture of mineral wool and calcium sulfate taught by Gorazd forms an intermediate product that is then formed into an insulation panel, but the intermediate product is a cementitious product, comprising calcium sulfate hemihydrate and stone wool objects as claimed. Just as applicant’s claimed cementitious powder product can remain a powder or be used to make additional products, so too can Gorazd’s intermediate cementitious powder product, meaning it meets the claimed limitation.
Regarding claims 22 and 23, Gorazd further teaches the limitation wherein said stone wool objects are present in an amount of at least 4 wt.% (as claimed in claim 22), or at least 10 wt.% (as claimed in claim 23) relative to the cementitious material (see paragraph 0010 teaching 40–95 wt.% fibers with respect to the total mass of the product; see paragraph 0010 teaching 10–60 wt.% calcium sulfate with respect to the total mass of the product; this means the mass of stone wool objects with respect to the mass of the cementitious material is from 66.6–950 wt.% [40÷60; 95÷10], which overlaps with the claimed range; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Regarding claim 24, Gorazd further teaches the limitation wherein said cementitious product is free of vermiculite (see paragraph 0024 explicitly teaching the product as being free from vermiculite).
Regarding claims 29 and 30, Gorazd further teaches the limitation wherein at least 5% by number (as claimed in claim 29), or at least 20% by number (as claimed in claim 30) of said stone wool objects are fibers (see paragraph 0005 teaching fibers; no other shapes are mentioned, and “fibers” doesn’t generally encompass other shapes, so Gorazd effectively teaches 100 n% fibers, which satisfies the “at least” limitations of claims 29 and 30).
Regarding claim 35, Gorazd further teaches the limitation wherein the stone wool fibers have a mean fiber diameter of 6 µm or greater (see paragraph 0005 teaching the average diameter as being less than 10 µm, which overlaps with the claimed diameter from 6–10 µm; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges).
Claims 20–21, 25–28, and 31–34 are rejected under 35 U.S.C. 103 as being unpatentable over Gorazd as applied to claim 16 above, and further in view of Yliniemi et al. (Journal of Material Cycles and Waste Management, 2018, 20:1248–1256, hereinafter “Yliniemi”).
Regarding claims 20 and 21, Gorazd teaches the cementitious product of claim 16, but fails to explicitly teach the composition of the stone wool. Yliniemi teaches methods of comminuting mineral fibers to revalorize them and enable their re-use in cementitious products (see generally abstract), including gypsum board (see pg. 1, col. 2; gypsum is calcium sulfate dihydrate). Yliniemi further teaches rock wool comprising SiO2 and Al2O3 (see pg. 2, “Mineral Wools”; while “mineral wools” is technically a genus that encompasses rock wools, Yliniemi specifically teaches the mineral wool as being rock wool, and the composition being typical of rock wool). Yliniemi further teaches the amount of SiO2 as greater than the amount of Al2O3 by weight (see “Mineral Wools” teaching 40 wt.% SiO2 and 16 wt.% Al2O3), which satisfies the limitations of claims 20 and 21.
A person having ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the rock wool composition disclosed by Yliniemi can be used to modify the undisclosed rock wool composition of Gorazd. The motivation supporting this combination most closely aligns with KSR Rationale A, which states it is prima facie obvious to combine prior art elements (Gorazd’s rock wool and Yliniemi’s rock wool) according to known methods (no combination needed; Yliniemi is merely providing guidance that a person having ordinary skill in the art seeking to practice the invention of Gorazd would need, since rock wool has to have some composition, and Yliniemi teaches a composition that is typical of rock wool) to yield predictable results (Gorazd already teaches the inclusion of rock wool, so the results of the proposed modification are predictable). Gorazd, as modified by Yliniemi, arrives at the claimed invention.
Regarding claims 25 and 26, Gorazd teaches the cementitious product of claim 16, but fails to explicitly teach the limitation wherein at least 0.8 n% (as claimed in claim 25), or at least 2 n% (as claimed in claim 26), of said stone wool fibers have a longest dimension greater than 250 µm. Gorazd does teach an average length of less than 20 mm, which encompasses average lengths greater than 250 µm, but it is not known if this measurement is by number or by some other metric, and without a clear lower bound, Gorazd can be considered to teach average lengths less than 250 µm as well. Yliniemi teaches non-comminuted rock wool as having 50 n% or more fibers with length greater than 250 µm (see pg. 1253, Figure 7, black line; ~50% ≈ 250 µm, and the length only increases at higher percentages; the measurements are determined with fractionators, which count by number [see pg. 1251, “Tube-flow fractionation methods”]). A person having ordinary skill in the art would have understood to be obvious that Gorazd can be modified according to Yliniemi for the same reasons mentioned previously: Gorazd omitted details, and Yliniemi teaches the missing information for typical rock wool. The modification of Gorazd by Yliniemi arrives at the claimed invention.
Regarding claims 27 and 28, Gorazd teaches the cementitious product of claim 16, but fails to explicitly teach the limitation wherein at least 30% by number (as claimed in claim 27), or at least 40% by number (as claimed in claim 28), of said stone wool objects are spherical particles. Yliniemi teaches rock wool granulated by an RS200 vibratory disc mill, wherein an aspect ratio of 3.2 is achieved (see pg. 1254, Table 2, sample “RW RS200”). Applicants define “particle” to be an object with a diameter equal to or greater than 0.3 times the object length (see specification, pg. 3, ll. 13–14). An aspect ratio of 3.2 is the ratio of length to diameter, so 1÷3.2=0.3125 is the ratio of diameter to length, which meets Applicants’ own definition of “particle”. Applicants further define “spherical particles” as having circularity equal to or greater than 0.9, wherein circularity is
4πA
P
2
, wherein A is the area measured in 2D and P is perimeter. Using Yliniemi’s dimensions for the RS200 rock wool, and assuming the shape to be a perfect ellipse, the semi-major axis a = 37 µm ÷ 2 = 18.5 µm, the semi-minor axis b = 11.7 µm ÷ 2 = 5.85 µm, the area A = πab = 340 µm2, and the perimeter P is approximated using Ramanujan’s approximation, wherein P ≈ 81.8 µm. Plugging these values into Applicants’ equation for circularity, Yliniemi teaches, at best, a circularity of 0.8, which falls short of the definition of “spherical particles”. However, Yliniemi teaches the variable parameters as being optimized to produce material of uniform quality, and specifically teaches a milling speed of 1500 rpm and a milling time of 30 s. A person having ordinary skill in the art seeking to produce more spherical particles would have understood to be obvious that the variable parameters can be further optimized to achieve the desired particle dimensions, including altering the milling speed and milling time.
It is noted that Applicants have not recited any particular benefit arising from the use of spherical particles, and it is not known if spherical particles impart enhanced properties that would otherwise be unachievable with non-spherical particles. Interpreting the claim broadly, and absent any evidence of functionality stemming from the shape of the stone wool objects, the recited composition is encompassed by Gorazd, as modified by Yliniemi, and any properties of the claimed composition would inherently be expected to be shared by the prior art composition (see MPEP 2112.01(II)). The burden now shifts to the applicants to demonstrate any non-obvious properties stemming from the use of specific stone wool shapes. Furthermore, while Yliniemi fails to disclose the claimed proportions of spherical stone wool objects, this does not appear to be critical to applicants’ invention, as the data provided in applicants’ Table 3 shows two inventive examples comprising a mixture of stone wool shapes compared to two comparative examples with no stone wool at all. Tables 4 and 5 show very comparable properties between the inventive examples and the comparative examples, while Tables 6–8 and Figures 1–3 indicate better thermal resistance for the samples containing stone wool. But it isn’t clear if the thermal resistance is attributable to the presence of any stone wool, or if it is specifically a result of the proportions of each stone wool shape. If a person having ordinary skill in the art had a reason to combine different shapes of stone wool objects in a composition, it would have been obvious to modify Gorazd according to Yliniemi to arrive at the desired composition. The motivation supporting this combination most closely aligns with KSR Rationale E, which states it is prima facie obvious to choose from a finite number of known, predictable solutions (Yliniemi’s disclosed particle shapes and dimensions) with a reasonable expectation of success (the stone wool retains the same composition and only changes in shape, so one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success). Yliniemi teaches methods of comminution that arrive at spherical particles, and the selection of shapes and proportions thereof are considered result-effective variables, absent evidence of criticality or non-obviousness. Therefore, Gorazd, as modified by Yliniemi, arrives at the claimed invention.
Regarding claims 31 and 32, Gorazd teaches the cementitious product of claim 16, but fails to explicitly teach the limitation wherein at least 5% by number (as claimed in claim 31), or at least 15% by number (as claimed in claim 32), of said stone wool objects are crossed fibers. Applicants define crossed fibers to be objects with a diameter smaller than 0.3 times the object length and a straightness coefficient less than 0.9, wherein crossed fibers includes clusters of fibers that cross over one another, as well as very curved fibers (see specification, pg. 2, ll. 32–35). Yliniemi teaches rock wool as being comminuted with a hydraulic press, wherein an aspect ratio of 7.4 is achieved (see pg. 1254, Table 2, sample “RW press”; the aspect ratio is length ÷ diameter, so the ratio of diameter ÷ length is 1 ÷ 7.4 = 0.135, which meets the ratio of “smaller than 0.3” defined by applicants). While Yliniemi fails to explicitly teach the straightness coefficient of the crossed fibers, Figure 9, sample “RW Press” shows electron microscopy images of fibers which appear to be very curved, suggesting that Yliniemi is at least capable of meeting this limitation with the disclosed comminution method.
It is noted that Applicants have not recited any particular benefit arising from the use of crossed fibers, and it is not known if crossed fibers impart enhanced properties that would otherwise be unachievable with non-crossed fibers. Interpreting the claim broadly, and absent any evidence of functionality stemming from the shape of the stone wool objects, the recited composition is encompassed by Gorazd, as modified by Yliniemi, and any properties of the claimed composition would inherently be expected to be shared by the prior art composition (see MPEP 2112.01(II)). The burden now shifts to the applicants to demonstrate any non-obvious properties stemming from the use of specific stone wool shapes. Furthermore, while Yliniemi fails to disclose the claimed proportions of crossed fiber stone wool objects, this does not appear to be critical to applicants’ invention, as the data provided in applicants’ Table 3 shows two inventive examples comprising a mixture of stone wool shapes compared to two comparative examples with no stone wool at all. Tables 4 and 5 show very comparable properties between the inventive examples and the comparative examples, while Tables 6–8 and Figures 1–3 indicate better thermal resistance for the samples containing stone wool. But it isn’t clear if the thermal resistance is attributable to the presence of any stone wool, or if it is specifically a result of the proportions of each stone wool shape. If a person having ordinary skill in the art had a reason to combine different shapes of stone wool objects in a composition, it would have been obvious to modify Gorazd according to Yliniemi to arrive at the desired composition. The motivation supporting this combination most closely aligns with KSR Rationale E, which states it is prima facie obvious to choose from a finite number of known, predictable solutions (Yliniemi’s disclosed particle shapes and dimensions) with a reasonable expectation of success (the stone wool retains the same composition and only changes in shape, so one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success). Yliniemi teaches methods of comminution that arrive at crossed fibers, and the selection of shapes and proportions thereof are considered result-effective variables, absent evidence of criticality or non-obviousness. Therefore, Gorazd, as modified by Yliniemi, arrives at the claimed invention.
Regarding claims 33 and 34, Gorazd teaches the cementitious product of claim 16, but fails to explicitly teach the limitation wherein at least 5% by number (as claimed in claim 31), or at least 15% by number (as claimed in claim 32), of said stone wool objects are non-spherical particles. Applicants define particles to be objects with a diameter equal to or greater than 0.3 times the object (see specification, pg. 3, ll. 13–14). Yliniemi teaches rock wool granulated by an RS200 vibratory disc mill, wherein an aspect ratio of 3.2 is achieved (see pg. 1254, Table 2, sample “RW RS200”). An aspect ratio of 3.2 is the ratio of length to diameter, so 1 ÷ 3.2 = 0.3125 is the ratio of diameter to length, which meets Applicants’ own definition of “particle”. As discussed in the above rejection of claims 27 and 28, Yliniemi’s RS200 sample fails to meet applicants’ definition of “spherical particle”. This means that the RS200 sample must be a non-spherical particle.
It is noted that Applicants have not recited any particular benefit arising from the claimed proportions of non-spherical particle stone wool objects. This does not appear to be critical to applicants’ invention, as the data provided in applicants’ Table 3 shows two inventive examples comprising a mixture of stone wool shapes compared to two comparative examples with no stone wool at all. Tables 4 and 5 show very comparable properties between the inventive examples and the comparative examples, while Tables 6–8 and Figures 1–3 indicate better thermal resistance for the samples containing stone wool. But it isn’t clear if the thermal resistance is attributable to the presence of any stone wool, or if it is specifically a result of the proportions of each stone wool shape. If a person having ordinary skill in the art had a reason to combine different shapes of stone wool objects in a composition, it would have been obvious to modify Gorazd according to Yliniemi to arrive at the desired composition. The motivation supporting this combination most closely aligns with KSR Rationale E, which states it is prima facie obvious to choose from a finite number of known, predictable solutions (Yliniemi’s disclosed particle shapes and dimensions) with a reasonable expectation of success (the stone wool retains the same composition and only changes in shape, so one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success). Yliniemi teaches methods of comminution that arrive at non-spherical particles, and the selection of shapes and proportions thereof are considered result-effective variables, absent evidence of criticality or non-obviousness. Therefore, Gorazd, as modified by Yliniemi, arrives at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, Tu, W, F after 5:30 PM and Th from 8 AM to 6 PM.
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, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights