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 .
DETAILED ACTION
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.
Claim(s) 1, 3, 5, 8-11 and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron et al. (US 4552793) in view of Chen (US 2011/0003522).
**The claims are product-by-process claims. The examiner will evaluate these claims as directed by MPEP 2113: “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.”
Additionally, “"The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974).” MPEP 2113. Thus, the claims do not expressly require the method steps be performed — they only require the presence of a product that is the same as or obvious from the product in applicant’s claim.
Claim 1 requires a product with two or more elements with surfaces, at least one of the two elements being a mineral wool element comprising man-made vitreous fibers bonded together by a cured mineral wool binder, wherein a cured adhesive bonds the surfaces of the two or more elements to each other, the adhesive comprising (i) at least one protein, and (ii) at least one phenol and/or quinone containing compound and/or at least one enzyme.As to claim 1, Cameron discloses a mineral wool product, wherein the product is obtained by a method which comprises providing two or more elements 30 whose surfaces are to be adhered to each other, at least one of the two or more elements being a mineral wool element comprising man-made vitreous fibers 16 bonded together by a cured mineral wool binder (cure oven 26, C4, L30 – C5, L7, figs 1-3), applying an adhesive (via 32) to at least one of two or more surfaces to be adhered to each other before or during contacting the two or more surfaces to be adhered to each other, (C4, L30 – C6, L3, fig 1-3).
Cameron does not disclose the adhesive comprising (i) at least one protein, and (ii) at least one phenol, and curing the adhesive to adhere the two or more surfaces to each other.
Chen discloses a mineral wool product, wherein an adhesive (para 13, 36, 45) is used to adhere surfaces of two or more mineral wool elements 30 (para 36, example 1), curing the adhesive to adhere the two or more surfaces to each other (para 13, 31, 57, example 1-2), the adhesive comprising (i) at least one protein (para 32), and (ii) at least one phenol (para 36, example 1. Claim 7; para 32-42, 45-59).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Cameron such that the adhesive comprises (i) at least one protein, and (ii) at least one phenol, and curing the adhesive to adhere the two or more surfaces to each other as taught by as taught by Chen above as doing such provides an adhesive from a renewable source, reduces emissions and improves worker safety (para 14-16).
As to claim 3, Cameron discloses the two or more elements comprise two or more mineral element 30 (fig 2, 3, C5, L1-31)
As to claim 5, Cameron discloses the product is an insulation panel (C7, L10-15)
As to claim 8, Chen discloses the adhesive further comprises at least one additive (para 36).
As to claim 9, Chen discloses the at least one additive comprises at least one linker which contains amine groups (para 36).
As to 10, Chen discloses curing the adhesive at temperatures as low as 100 deg C (para 51). This temperature is only 5 deg different than the upper limit, 95 deg C, of applicant’s claimed range. Because the applicant has not demonstrated an adhesive cured at 100 deg C would produce a materially different product from a product having an adhesive cured at 95 deg C, the examiner asserts that curing at 100 deg C rather than 95 deg C meets the limitation requiring a product with an adhesive cured between 5 deg C and 95 deg C. See discussion of MPEP 2113 above.
As to claim 11, Chen discloses the at least one protein comprises an animal based or plant derived soy fluor protein (para 32).
As to claims 13 and 14, Chen discloses the phenol comprising tannic acid (example 1, para 36)
As to claim 15, Chen discloses the at least one phenol and/or quinone containing compound selected from one or more synthetic or semisynthetic molecules that contain phenols or polyphenols (example 1, para 36).
As to claim, 16, example 1 and table 4 disclose tannins are present in a concentration of from 1 to 70 wt. %, based on dry protein.
As to claim 17, para 34 discloses the adhesive has a pH value of from 7 to 10.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron and Chen as applied to claim 1 above, and further in view of Li (US 2008/0213597).
If it is not taken that Cameron as modified by Chen discloses the limitations of claim 10 as detailed above, the following alternative rejection is set forth:
Chen discloses a product wherein the adhesive is cured as low as 100 deg C (para 51), but stops short of expressly discloses curing between 5-95 deg C. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the mineral wool product of Cameron and Chen such that the adhesive is cured between 5-95 deg C as taught by Li (para 32) as such has a reasonable expectation of success and reduces energy and manufacturing costs.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron and Chen as applied to claim 1 above, and further in view of Omura (US 2014/0148532)
Ameron and Chen do not disclose the at least one protein comprises collagen and/or gelatin originating from one or more of mammal, bird species, including cow, pig, horse, fowl, and/or from scales, skin of fish.
Omura discloses an adhesive for bonding (para 2) comprising a protein (para 30) with gelatin derived from mammals and bird species, including cow, pig, horse, fowl, and scales and skin of fish (para 30). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify the mineral wool product of Cameron and Chen such that the protein comprises gelatin originating from one or more of mammal, bird species, including cow, pig, horse, fowl, and/or from scales, skin of fish as taught by Omura above as gelatin reduces production costs (para 43). Deriving the gelatin from one or more of mammal, bird species, including cow, pig, horse, fowl, and/or from scales, skin of fish reduces the toxicity of the adhesive (para 30).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron and Chen as applied to claim 1 above, and further in view of CN103938457 (herein ‘457, see attached machine translation for text citations).
Cameron and Chen do not disclose the adhesive comprises an enzyme recited in claim 18. ‘457 discloses a binder that can be used for wool, said binder comprising a peroxidase enzyme (para 34, 46).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Cameron and Chen such that the adhesive comprises a peroxidase enzyme as taught by ‘457 above as such has a reasonable expectation of success and improves drying time and reduces maintenance (para 28).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron and Chen as applied to claim 1 above, and further in view of Rosenberg et al. (US 2012/0190262)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Cameron and Chen such that the product has a density of between 10 kg/m to 1200 kg/m3 as taught by Rosenberg (para 2, 21, 114) as such a density provides good acoustic and insulating properties (para 2).
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cameron and Chen as applied to claim 1 above, and further in view of Hummerich et al. et al. (US 6071994)
Hummerich discloses a thermoset polymeric mineral wool binder (C2, L25-68, C9, L30-50, claim 19). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention, to modify Cameron and Chen such that the binder is a thermoset polymeric binder material as taught by Hummerich above as such reduces harmful emissions while providing good mechanical properties (C2, L11-27).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art does not disclose a mass ratio of lysine plus cysteine in the at least one protein to phenol plus quinone in the at least one phenol and/or quinone containing compound being from 1: 5.78 to 1 :0.08.
Response to Arguments
Applicant's arguments filed 12/22/25 have been fully considered but are either not persuasive or moot in view of the new ground(s) of rejection. Applicant’s arguments with respect to Chen as a primary anticipatory reference are moot in light of the new grounds of rejection. The examiner asserts however, that a binder is an adhesive, in that a binder bonds at least two objects together.
With respect to claim 12, the applicant has amended the claim, because claim 12 is dependent upon amended claim 1. See MPEP 706.07(a): “A dependent claim is treated as amended if the independent claim or any claim it references is amended because a dependent claim incorporates all the subject matter of the referenced claim(s).” Applicant’s amendment necessitated new grounds of rejection of claim 12. Thus, this action is Final. See MPEP § 706.07(a) and the Conclusion section below.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER T SCHATZ whose telephone number is (571)272-6038. The examiner can normally be reached Monday through Friday, 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 571-270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER T SCHATZ/ Primary Examiner, Art Unit 1746
