DETAILED ACTION
In the preliminary amendment filed on June 4, 2024 and in view of the response to the restriction requirement filed on July 2, 2026, claims 1 – 20 are pending. Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14 have been amended. Claims 15 – 20 have been added. Claims 13 – 14 have been withdrawn from consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant's election with traverse of Invention Group I, claims 1 – 12 in the reply filed on July 2, 2026 is acknowledged. The traversal is on the ground(s) that:
a.) The common technical feature linking Group I and Group II is the use of a sizing composition (and the cured organic binder derived therefrom) comprising the specific combination of (i) at least one lignin (potentially oxidized) and (ii) at least one non-polymeric polycarboxylic organic acid.
b.) Huang does not disclose, teach or suggest lignin in a sizing composition. The Office equated the lignin present in the fibers themselves and lignin present in the sizing composition (binder) applied to the fibers. That equivalence is not supported by Huang and is contrary to the claim language.
c.) Huang does not disclose, teach or suggest a step of curing or crosslinking lignin via the binder.
d.) The examiner's reference to a "non-polycarboxylic acid" appears to be a typographical inversion. Present claim 1 recites a "non-polymeric polycarboxylic organic acid," as defined in the specification and exemplified in dependent claims 7 and 20. Applicant understands the Office's reference as a typographical inversion of "non-polymeric polycarboxylic," and notes that the present traversal is directed to the actual claim language.
This is not found persuasive because:
a.) As a preliminary matter, the Examiner notes that withdrawn Group II claims 13 – 14 are product-by process claims. As referenced in footnote 1 as found on page 4 of the Restriction Requirement filed on April 24, 2026, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113.
Accordingly, the Examiner submits the corresponding features between the claimed methods defined by Invention Group I and the claimed products defined by Invention Group II are the structures implied by practice of the claimed method, not the use of the sizing composition as argued by the Applicant. The Examiner reproduces independent claim 1 and independent claim 13 below with emphasis added to indicate where the Examiner had derived the corresponding features:
1. A method for manufacturing an insulation product comprising mineral fibers or natural organic fibers bound by an organic binder, comprising:
(a) applying a sizing composition to said mineral fibers or said natural organic fibers,
(b) forming an assembly of said mineral fibers or said natural organic fibers,
(c) heating the assembly of said mineral fibers or said natural organic fibers until said sizing composition has cured to form the organic binder,
wherein said sizing composition comprises:
at least one lignin, potentially oxidized, and
at least one non-polymeric polycarboxylic organic acid.
13. An insulating product obtained by a method according to claim 1, comprising mineral fibers or natural organic fibers and [a cured] organic binder obtained by curing a sizing composition comprising at least one lignin, which is potentially oxidized, and a non-polymeric polycarboxylic organic acid.
With the understanding that, under the broadest reasonable interpretation, the corresponding features are the resultant structures shared between invention groups, the Examiner respectfully disagrees with the Applicant as to what are the common technical features linking the invention groups. The Examiner submits that the common technical features linking Group I and Group II are a product having mineral fibers or natural organic fibers, and an organic binder, wherein the organic binder (a product-by-process limitation itself) is a cured structure derived from a lignin (“potentially” oxidized) and a non-polymeric polycarboxylic organic acid. Such a cured binder is not required to be derived from a sizing composition because the derivation itself is a method of production, when what is required and shared are the resulting structures.
b.) As discussed above, the common technical features would not be the sizing composition, but the resultant structure. Huang discloses that “[b]oth BSF larval rearing residue and rice husk are [non-woody lignocellulosic biomass] feedstocks that comprise high content of holocellulose and lignin which would make them react effectively with citric acid/starch as a natural binder” (page 634 2nd col). Huang therefore teaches the required precursors to the organic binder and the resultant cure of such precursors (page 635 “2.3 Preparation of particleboards”).
Once the examiner provides a rationale tending to show that the claimed product (in this case the shared technical features) appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983). Accordingly, the Examiner submits that the common technical features are not special technical features, as required for unity of invention.
c.) As discussed above, the common technical features would not be the sizing composition, but the resultant structure. Huang expressly discloses a reacted lignin component with citric acid, which under the broadest reasonable interpretation would map to the cured organic binder, regardless of the source of the precursor lignin being endogenous or exogenous (page 634 2nd col).
d.) The Examiner thanks the Applicant for pointing out the typographical error and affirms that the statement is a typo. For the sake of clarity, the term "non-polycarboxylic acid" is meant to state “non-polymeric polycarboxylic organic acid”.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 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.
Regarding claim 1:
Present claim 1 recites “… at least one lignin, potentially oxidized …” The phrase " potentially oxidized" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. While “potentially” may indicate possibility, there is a lack of clarity what sense of “potentially” would be required to define the metes and bounds of the claims. Must it be capable of being oxidized, is it optionally an oxidized lignin? Ect.
Present dependent claim 5 and claims dependent on claim 5 are not rejected under this deficiency because the additional limitations of claim of claim 5 resolve and render clear that an oxidized lignin is required.
Regarding claim 9:
Claim 9 recites “natural organic fibers are chosen from fibers from wood … or even cereal straw or rice straw. The phrase "or even" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention.
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:
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.
Claim 1 – 8, 10 – 12, 15 – 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bartnik Johansson et al. US 20230175178 A1 (hereinafter “Bartnik”) and its family members (WO 2021197638 A1).
Regarding claims 1, 7, 10, 11, 20:
Bartnik is directed to mineral fiber product and a method of making such a mineral fiber product for applications such as thermal/acoustic insulation (Abstract; [0002]). Bartnik discloses that their method comprises (Claim 41; [0014] – [0017], [0059] – [0062], [0181] – [0193], [0194] – [0201]:
providing a non-cured aqueous binder composition [sizing composition] comprising:
component (i): oxidized lignins ([0034] – [0062]),
component (ii): one or more cross-linkers ([0063] – [0084]), and
component (iii): optionally one or more plasticizers ([0085]) – ([0130]), such as adipic acid [non-polymeric polycarboxylic organic acid] ([0086], [0089], [0345]);
contacting mineral fibers with the non-cured aqueous binder composition, such as by spraying ([0261], [0002]) to form a mineral web;
shaping [assembling] mineral fiber web into a form such as a batt [molded product or fiber mat] ([0265]); and
curing the binder composition by heating the resultant fibers to a temperature such as between 100 to 300°C for a time such as between 30 seconds to 20 minutes ([0194] – [0201]).
Bartnik does not expressly teach a specific embodiment of their method that utilizes a non-polymeric polycarboxylic organic acid.
However, as discussed above, Bartnik does expressly teach that adipic acid is suitable as a plasticizer for the organic binder, and that incorporating plasticizers improves the resultant mechanical properties of mineral fibre products ([0092]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have envisioned an embodiment of Bartnik’s method or otherwise would have modified a example embodiment of Bartnik’s method that uses adipic acid as a plasticizer because as taught by Bartnik, the use of adipic acid is known to be suitable for the purpose of a plasticizer component meant for improving mechanical properties. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
Regarding claim 2:
Bartnik discloses that the oxidized lignin may be one or more kraft lignin or oxidized soda [alkaline] lignin ([0048] – [0054]).
Regarding claim 3, 15:
Bartnik discloses that the oxidized lignins may be present in an amount of e.g. 35 to 85% by weight of the total dry weight of the binder composition ([0056]). With regards to the present claims that overlap with the disclosed ranges, 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 4, 16:
Bartnik discloses that the plasticizer/adipic acid may be present in an amount of 0.5 to 50% by weight of the total dry weight of the bonder composition ([0117]). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Regarding claims 5, 6, 17, 18, 19:
Bartnik discloses that the oxidized lignins may be present in an amount of e.g. 35 to 85% by weight of the total dry weight of the binder composition ([0056]). Bartnik also discloses that the carboxylic acid group content of the oxidized ligands can be e.g. 0.05 to 10 mmol/g of carboxylic acid group content ([0055]).
Bartnik does not expressly teach the specific carboxylic acid and alcohol function percentages as recited.
However, Bartnik does disclose that the oxidation process operates by abstracting protons from phenolic [aromatic alcohol and therefore remnant alcohol function] groups in the lignin and then forming carboxylic acid groups [carboxylic acid function] ([0337] – [0343]). The oxidation process may be controlled by the choice of oxidation agents, alkalinity conditions and temperature. The resultant oxidation process also controls the amount of hydrophilicity of the oxidized lignin to polar substrates such as mineral fibers ([0343]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have formulated an oxidized ligand with the claimed carboxylic acid function and alcohol function amounts as a matter of routine experimentation to best optimize the hydrophilicity of the resultant oxidized lignin to mineral fibers. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
Regarding claim 8:
Bartnik discloses that the mineral fiber may be e.g. glass fibers, slag fibers or basalt [rock] fibers ([0002]).
Regarding claim 12:
Bartnik discloses curing the binder composition by heating the resultant fibers to a temperature such as between 100 to 300°C for a time such as between 30 seconds to 20 minutes ([0194] – [0201]). 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, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66(Fed. Cir. 1997). See MPEP 2144.05.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bartnik as applied to claims 1 – 4, 7 – 8, 10 – 12, 15 – 16, 20 above, and further in view of Hawkins et al. US 20110086567 A1 (hereinafter “Hawkins”).
Regarding claim 9:
Bartnik does not expressly teach that the fibers are organic fibers among the recited species of organic fibers.
Hawkins is directed to an aqueous binder composition for producing insulation and non-woven mats, wherein the binder composition comprises inter alia a crosslinking agent, a carbohydrate and an extender (Abstract). Hawkins discloses that the binder composition may be used for binding reinforcement fibers ([0067]). The crosslinking agent may be adipic acid or citric acid (Abstract; [0010]), and that the extender may be a lignin ([0065]). The reinforcement fibers may be mineral fibers, or organic fibers used in alone or in combination with the mineral fibers ([0003]). The organic fibers may be e.g. hemp, cotton or jute ([0072]).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the method of Bartnik by combining the mineral fibers with a recited organic fiber or combine the mineral fiber with such organic fibers because as taught by Hawkins, the use of organic fibers such as cotton, jute or hemp fibers are known to be suitable for the purpose of being reinforcement fibers for the production of an insulation product. The courts have held that the selection of a known material/device/product based for its intended use supports a prima facie case of obviousness. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988).
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, 2, 3, 6, 7, 12, 15, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 – 14, 16 –20 and indirectly claims 1 – 10 of copending Application No. 19/140204 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of application claims 1, 2, 3, 6, 7, 12, 15, 20 are to be found in copending application claims 11 – 14, 16 –20 and indirectly claims 1 – 10 (as the application claim 1, 2, 3, 6, 7, 12, 15, 20 fully encompasses the recited copending application claims). The difference between the application claims 1, 2, 3, 6, 7, 12, 15, 20 and the recited copending application claims lies in the fact that the copending application claim includes many more elements and is thus more specific. Thus the invention of claim 11 – 14, 16 –20 and indirectly claims 1 – 10 of the copending application are in effect a "species" of the "generic" invention of the application claims 1, 2, 3, 6, 7, 12, 15, 20. It has been held that the generic invention is “anticipated" by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir.1993). Since application claim 1, 2, 3, 6, 7, 12, 15, 20 is anticipated by claim 11 – 14, 16 –20 of the copending application, it is not patentably distinct from claims 11 – 14, 16 –20 and indirectly claims 1 – 10 of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 4, 5, 8, 10, 11, 16, 17, 18, 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 – 14, 16 –20 and indirectly claims 1 – 10 of copending Application No. 19/140204 in view of Bartnik. Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 – 14, 16 –20 and indirectly claims 1 – 10 of copending Application No. 19/140204 in view of Bartnik and Hawkins.
The copending application claims teach and/or render obvious the subject matter of the parent claims of claims 4, 5, 8, 9, 10, 11, 16, 17, 18, 19. The copending application claims do not expressly teach the further limitations found within dependent claims 4, 5, 8, 9, 10, 11, 16, 17, 18, 19.
The disclosure of such further limitations are found in Bartnik and Hawkins in the manner mirroring the rejection of the claims under 35 USC 103 as discussed above and are rendered obvious to one of ordinary skill in the art to consider the subject matter of the application claims as patentably indistinct for the reasons set forth above.
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
Prosecution Insights