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 .
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 1-11 and 14-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 8-9, 11-13, 15-18, 20-23 and 26-29 of copending Application No. 18/866,718. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 18/866,718 are almost identical to the claims of the present invention including the biochar, inorganic fiber and flame retardant in the claimed amounts and the claimed ratio is present.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 3-12, 14 and 16-19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 3-12, 14 and 16-19 are rejected for being dependent upon claim 0. The claims has been examined as depending upon claim 1, Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claims 13 and 15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 13 and 15 are rejected for being dependent upon claim “Error”. The claims has been examined as depending upon claim 1, Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 is rejected for being dependent upon claim 0. The claims has been examined as depending upon claim 1, Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (CN 108358537).
Regarding claim 20, Li et al. teaches a method of manufacturing an acoustic building panel comprising, mixing inorganic fibers (glass wool), biochar (charcoal), flame retardant (calcium carbonate), a liquid carrier to form a blend and shaping and drying the blend into a body (panel) having a first major surface opposite a second major surface extending between the first and second major surface wherein the body is substantially free of the liquid carrier [0074]. The biochar and the flame retardant are present in the claimed weight ratio.
Claim Rejections - 35 USC § 103
Claims 1, 3, 8 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Li et al. (CN 108358537).
Regarding claims 1, 3 and 8, Li teaches an acoustic building panel comprising inorganic fiber (glass wool fiber) in the claimed amount based on the weight of the body [0010], biochar (charcoal) in an amount in the claimed range based on the total weight of the body [0010] and flame retardant (calcium carbonate) in the amount claimed based on the total weight of the body [0010]. Li teaches the biochar and the flame retardant are present in a weight ratio in the claimed range on Example 1. Therefore Li teaches all the limitations of claim 1, In the alternative, Li teaches the claimed ratio of the biochar and the flame retardant and it would have been obvious to one of ordinary skill in the art use the ratio of the biochar and the flame retardant in the claimed range in order to balance improvement air purification and flame retardancy property and arrive at the claimed invention.
Regarding claims 14-15, Li teaches the body further comprises a filler (such as mica or titanium dioxide) the claimed amount by weight of the total body [0010].
Claim Rejections - 35 USC § 103
Claims 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 108358537) in view of Saito et al. (JP 2011032383).
Regarding claims 1-2 and 4-9, Li teaches the claimed components in the claimed amounts as set forth in claim 1 and fully incorporated herein by reference. Li is silent regarding the claimed colemanite. However, Saito et al. teaches using colemanite (calcium borate) and magnesium hydroxide as flame retardant materials (the active filler flame retardant can be construed as the colemanite or magnesium hydroxide) in order to provide improved flame retardancy. The flame retardant decomposes endothermically at an elevated temperature in the claimed range (about 325 degrees includes temperature of about 350and water is emitted upon decomposition. The flame retardant has an average particle size in the claimed range [Examples]. It would have been obvious to one of ordinary skill in the art to use the colemanite of Saito et al. in Li in order to provide improved flame retardancy and arrive at the claimed invention.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 108358537) in view of Tatsumi (WO 0110251).
Regarding claim 10, The previous combination is silent regarding the claimed size of the biochar. However, Tatsumi teaches biochar with particle size in the claimed range in order to provide improved adsorption. It would have been obvious to one of ordinary skill in the art to use the particle size of biochar taught by Tatsumi in the previous combination in order to improve adsorption and arrive at the claimed invention.
Claim 11-13 and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN 108358537) in view of Krick et al. (PG Pub. 20210002890).
Regarding claims 11-13, the previous combination is silent regarding the claimed organic fiber and amount of organic fiber and starch based binder and amount. However, Krick et al. teach organic fiber (microfibrillated cellulose) in the claimed amount because it improves the strength of the composite without compromising the porosity. Krick et al. also teaches starch based binder in the claimed amount because it has low VOC and renewability. It would have been obvious to one of ordinary skill in the art to use the organic fiber in the amount taught by Krick et al. because it improves the strength of the composite without compromising the porosity and the starch based polymer and amount of Krick et al. in the previous combination because it has low VOC and renewability and arrive at the claimed invention.
Regarding claims 16-18, the previous combination is silent regarding the claimed porosity and, skeletal density and bulk density. However, Krick et al. teach an acoustical building panel with a porosity, skeletal density and bulk density in the claimed range in order to allow airflow and function as an acoustical panel and superior sag resistance [0005, 0048, 0056, 0058 and 0069].
Regarding claim 19, Li teaches a building panel so it is clear the panel body has a first major surface opposite a second major surface and a side surface extending therebetween. The previous combination is silent regarding the claimed airflow resistance measured between the first major surface and the second major surface. However, Krick et al. teaches airflow resistance measured between the first major surface and the second major surface in the claimed range in order to attain sound attenuation and noise reduction properties. It would have been obvious to one of ordinary skill in the art to use the airflow resistance measured between the first major surface and the second major surface of Krick et al. in the previous combination in order to attain sound attenuation and noise reduction properties and arrive at the claimed invention.
Prior Art Not Used but Relevant
US Patent 5,972,434 teaches fire retardant building materials.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789
