DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 2-15 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.
Regarding claim 2-5, claims 2 and 12 recites that the thermal insulation product is in the form of a single layer panel. It is unclear what the scope of a product “in the form of a single layer panel” necessarily entails. For example, it is unclear what the qualifier “in the form”, in regards to a single layer panel necessarily entails, as it is unclear if only a single layer panel is a product which is similar in form to a single layer panel is required.
Additionally, it is unclear what a “single layer panel” necessarily entails, as it is unclear what constitutes a “layer” within the scope of a single layer panel. For example, it is unclear if the claim is requiring the panel to be a homogeneous panel structure (although such a structure is not recited in the specification), or merely a unitary structure (although such a structure is also not recited in the specification) where the entirety of the panel is bonded together such that the panel is a single panel.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 2-15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US Pub. No. 2004/0112093 to Beaufils in view of EP 0672803 to Kummermehr and US Pub. No. 2006/0281622 to Maricourt.
Regarding claims 2-15, Beaufils teaches glass fiber insulation products through the process of internal centrifugation combined with drawing by a gaseous current, to be used in the composition of thermal and/or acoustic insulation products (Beaufils, Abstract, paragraph 0001, claim 1). Beaufils teaches that the glass fibers have an average diameter of no greater than about 3.5 microns, followed by combining the fibers into an insulation product (Id., paragraph 0019). Beaufils teaches that a binder required to bond the fibers into a wool product is sprayed onto the fibers as they are drawn downward (Id., paragraph 0003). Note that the glass fiber insulation product is a single layer panel, as Beaufils does not recite multiple layers.
Beaufils teaches that the fibers formed are carried along by a gaseous drawing current towards a receiving mechanism generally consisting of a gas-permeable strip (Beaufils, paragraph 0003). Such a process of fiber collecting is substantially similar to Applicants’ manner of aligning the fibers and therefore, would appear to inherently result in such alignment. In support, Kummermehr teaches a similar insulating board comprising mineral wool bonded with a curable binding agent, where fibers are produced from a molten material and deposited on a reception means having the form of a production conveyor and continuously carries the fibers compiled into a layer of mineral wool and thus forming a mineral fiber web (Kummermehr, column 1 lines 1-19). Kummermehr teaches that as a result of such deposition, the large majority of fibers are deposited while having an orientation wherein their longitudinal extension is in parallel with the receiving surface (Id., column 1 lines 20-30). Therefore, Kummermehr establishes that collecting the fibers as set forth in Beaufils results in the fibers being aligned parallel with the receiving surface.
Additionally, Kummermehr teaches that the fibers should only be aligned essentially in parallel with a support surface, thus crossing the direction of the thermal flow and only minimally contributing to an increased thermal flow (Kummermehr, column 3 lines 27-41).
Therefore, even if the fibers are inherently aligned, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the glass insulation product of Beaufils, wherein the fibers are aligned as claimed, as taught by Kummermehr, motivated by the desire of forming a conventional glass fiber insulation product wherein the fibers are aligned to predictably minimize heat flow through the product.
Beaufils teaches that the fibers have an average diameter of no greater than about 3.5 microns. Beaufils does not appear to teach the claimed thermal conductivity and density. However, Maricourt teaches a mineral fibre-based product and a thermal and/or acoustic insulation product based on mineral fibers obtained by internal centrifugation (Maricourt, Abstract). Maricourt teaches that the fibers have a micronaire less than or equal to 18 l/min and a thermal conductivity of at most 35 mW/m∙K (Id., Abstract, paragraph 0038). Maricourt teaches an example where the density of the product is at least 40 kg/m3 and a micronaire per 5 grams of 3.5 (Id., paragraph 0063). Maricourt that the product may be used to manufacture panels with a binder content of around 10% and a thickness of about 80 mm (Id., paragraph 0038). Maricourt teaches that the fibers may comprise even smaller diameters (Id., paragraph 0100).
It would have been obvious to one of ordinary skill in the insulation product art at the time the invention was made to form the glass insulation product of the prior art combination, and adjusting, varying and optimizing the properties of the product, such as the thermal conductivity, density and thickness within the claimed ranges, as taught by Maricourt, motivated by the desire of forming a conventional glass insulation product having the desired properties known in the insulation art as being predictably suitable for insulation materials comprising glass fibers.
Regarding the claimed micronaire values, note that Applicants’ specification at page 2 line 22 to page 4 line 8 establishes a relationship between micronaire values and average diameters, wherein a micronaire value of about 12 l/min corresponds to an average diameter of 2.5 to 3 µm, and an 18 l/min value corresponds to an average diameter of about 4 to 5µm. Additionally, Applicants' specification teaches that Applicants' product has an average diameter of less than 2µm or even less than 1µm (Applicants' specification at page 5 lines 14-15). Additionally, at least Table 1 of Beaufils establishes fibers having a diameter of less than 1.0 microns. Based on Applicants' disclosure, an average diameter of no greater than about 3.5 microns and less than 18 l/min would appear to be within the ranges as claimed.
Alternatively, Beaufils establishes that that for a given density of a blanket, the finer the fibers, the greater the thermal resistance of the layer (Beaufils, paragraph 0013). Therefore, it would have been obvious to one of ordinary skill in the thermal insulation art at the time the invention was made to form the thermal insulation material of the prior art combination, and adjusting and varying the fineness of the fiber thereby resulting in a micronaire value, such as within the claimed ranges, as suggested by Beaufils, motivated by the desire of forming a conventional thermal insulation material having the desired thermal resistance, and properties including thickness and density, based on the totality of the teachings of the prior art.
Regarding claim 6, the insulation product of the prior art combination does not appear to require any unfiberized material.
Regarding claims 12, 13, and 15, the prior art combination teaches that a binder is required to bond the fibers, although the prior art combination teaches that a binder is not always required (Beaufils, paragraph 0018). The prior art combination teaches that an exemplary binder content is around 10%. Based on the combined teachings of the prior art It is reasonable for one of ordinary skill in the art to expect that the amount of binder initially present can predictably vary based on the desired cohesion, strength and bulkiness desired in the final product, such as values between 0% and around 10%. Therefore, it would have been obvious to one of ordinary skill in the insulation art at the time the invention was made to form the glass insulation product of the prior art combination, and adjusting and varying the amount of binder, such as within the claimed ranges, motivated by the desire of forming a conventional thermal insulation material having the desired properties, such as strength and bulkiness, suitable for the intended application.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2-15 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1-14 of prior U.S. Patent No. 12,098,089. This is a statutory double patenting rejection.
Conclusion
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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