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
Election/Restrictions
Applicant’s election of Group I, Species A, in the reply filed on 5/52025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 4, 6, 7 and 20 are withdrawn without traverse.
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 1-3, 5 and 8-19 are 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.
As to claim 1, the “applying adhesive to one or more surfaces” is not clear because “surfaces” does not properly refer back to the previously recited surfaces.
As to claim 1, it is not clear how adhesive can be applied after the surfaces are contacted with each other. Additionally, it is not clear how the surfaces can be contacted if adhesive is applied to at least one of said surfaces.
With respect to claim 1, is the “mineral wool binder” the same as the adhesive? For the purposes of this examination, the examiner will assume they are same.
Claims 2, 11, 13, 14 and 18 are indefinite because they contain parenthetical phases. It’s not clear if the limitations contained within the parenthesis further limit the claims. For the purposes of this examination, the examiner will assume that the limitations within the parenthesis are not required by the claim.
Claim 2 is entirely unclear. It’s not clear what components are part of the alleged ratio.
Claim 10 does not properly refer back to the previously recited curing step.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 5, 8-11 and 13-17 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chen et al. (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 mineral wool elements bonded together by a mineral wool cured adhesive binder, 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, Chen discloses a mineral wool product, wherein the product can be 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 (para 44) bonded by a mineral wool binder (para 36), applying an adhesive (example 1) to one or more surfaces to be adhered to each other before, during or after contacting the surfaces to be adhered to each other, and curing (para 11-13, 16, example 1) the adhesive to adhere the one or more surfaces to each other, 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).
As to claim 3, Chen discloses the two or more elements comprise two or more
As to claim 5, Chen discloses the product is an insulation panel (para 52)
As to claim 8, Chen discloses the adhesive further comprises at least one additive (para 36)
As to claim 9, wherein 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 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(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of Li (US 2008/0213597).
If it is not taken that Chen anticipates 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 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 Chen as applied to claim 1 above, and further in view of Rand (US 2008/0213597).
Rand discloses a wool binder (para 65) comprising a protein with gelatin from scales/skin of fish (para 48). 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 Chen such that the protein comprises gelatin originating from scales/skin of fish as taught by Rand above as such is a known protein and has a reasonable expectation of success.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen as applied to claim 1 above, and further in view of CN103938457 (herein ‘457, see attached machine translation for text citations).
Chen does 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 the mineral wool product of 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 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 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).
Conclusion
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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/CHRISTOPHER T SCHATZ/ Primary Examiner, Art Unit 1746