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
This Office action is in response to the communication filed on 7/14/2026. Currently claims 1-20 are pending in the application.
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 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.
Claims 1, 20 are rejected under 35 U.S.C.102 as being anticipated over Appley et al. (US Patent Application Publication Number 2016/0347652 A1), hereafter, referred to as “Appley”.
Regarding claim 1, Appley teaches a loose thermosetting mineral wool, comprising binding mineral fibers surrounded by a dry layer of thermosetting organic binder; by teaching an uncured mineral wool, i.e., uncured glass wool (fiberglass) and/or uncured stone wool, products (articles) prepared with formaldehyde-free binders with improved shelf life (title, para. [0002]). Appley teaches that the "shipout uncured" and "plant uncured" fiberglass insulation is manufactured with an uncured, thermosetting binder. The resulting uncured insulation products are collected, packaged into rolls, bagged, and sealed in plastic bags. At various times thereafter, the bagged insulation material is i) transported to, ii) stored at, and iii) ultimately processed via a distinct separate manufacturing sequence by, a customer to yield a finished part (para. [0003]). Appley also teaches that the composition comprising a substantially uncured binder disposed on mineral fibers, wherein the binder comprises: (a) a mixture of at least two carbohydrates; and (b) an acid precursor derivable from an inorganic salt; and/or (c) an ammonium salt of a polycarboxylic acid. It is noted that carbohydrate-based binders are often considered thermoset-based when they are crosslinked with agents (such as citric acid or polycarboxylic acids or its salts) to form insoluble, rigid, and infusible materials. Appley further teaches that the binder, which is eventually cured, for example in a curing oven; is a thermoset binder. In its cured form, the binder may: comprise melanoidins; and/or be thermoset; and/or be water insoluble or substantially water insoluble (para. [0051]). Additionally, Appley also teaches that the fibers are surrounded by a dry layer of thermosetting binder by teaching that the application of the binder system, for example, by spraying onto mineral wool fibers, and the reaction between the binder components may occur in a substantially dry state. which polymerizes in a substantially dry state or through a bulk polymerization (para. [0047}, thereby ensuring a dry layer of thermosetting organic binder. Moreover, a dry material usually still contains a small amount of moisture, and “Dry” does not mean 0% moisture.
It is noted that the claim defines a product. Therefore, if a prior art product, even if made by an undisclosed process, appears to be inherently same as, or indistinguishable from, the claimed invention., the claim should be construed as a claim to the product per se that possesses the characteristics derived from a different manufacturing process. Therefore, the patentability of a product claim does not depend on the method of production. A product is not rendered patentable merely by the fact that it is produced by means of a new process, such that the product in such a claim is the same as a product described in an item of prior art was made by a different process such as binder is sprayed onto “hot mineral wool fibers”.
It is further noted that the use of non-binding fibers is optional.
Regarding claim 20, Appley teaches a loose thermosetting mineral wool. Appley teaches that the loose thermosetting mineral wool consisting of said binding mineral fibers surrounded by a dry layer of thermosetting organic binder.
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 103 that form the basis for the rejections under this section made 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-19 are rejected under 35 U.S.C.103 as being obvious over Appley et al. (US Patent Application Publication Number 2016/0347652 A1), in view of Forte et al. (US Patent Application Publication Number 2014/0004766 A1), hereafter, referred to as “Forte”.
Regarding claim 2, Appley teaches an uncured mineral wool (loose mineral wool) (uncured glass wool (fiberglass) and/or uncured stone wool, products (articles) prepared with a thermosetting binder for an improved shelf life. But Appley fails to explicitly teach that the loose thermosetting mineral wool would also comprise of fibers of virgin mineral wool and/or fibers of recycled mineral wool and/or natural organic fibers. However, Forte teaches a mineral wool and fibrous material composite and insulation formed thereby (title). Forte also teaches that a mineral wool and fiberglass insulation product formed by a process comprising the steps of: (1) generating mineral wool fibers using at least one fiberizing device; (2) pre-processing recycled fiberglass material to form fiberglass nodules of pre-selected size; (3) delivering the fiberglass nodules to a location proximate the at least one fiberizing device to cause the fiberglass nodules to mix with the mineral wool fibers to form a first mixture that is subsequently received within a collector that allows to form the article (para. [0007]). Forte further teaches in Fig. 1 that the conduit 235 delivers recycled material (from material source 20) along with conduit 124 supplying mineral wool fiber (after binder application). Forte also notes that the material source 20 is not limited to being recycled material and instead the material 20 can be a first quality (non-recycled) product, such as first quality fiberglass insulation (para. [0016]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Forte and combine the feature that loose thermosetting mineral wool would also comprise of fibers of virgin mineral wool and/or fibers of recycled mineral wool and/or natural organic fibers; because that would ensure use of recycled waste/scrap material to form a green environmental product and at the same time possess improved properties (KSR Rationale A, MPEP 2143). Since both the references deal with thermosetting mineral wool, one would have reasonable expectation of success from the combination.
Regarding claim 3, Appley, in view of Forte teach a loose thermosetting mineral, comprising a binding mineral fiber surrounded by a dry layer of thermosetting organic binder having non-binding fibers. It would have been obvious to any ordinary artisan that the property of the final article will depend on the amount of binding mineral fibers and the amount of non-binding fibers. Therefore, the amount of the ingredients would be considered a result effective variable. Additionally, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, maintaining the binding mineral fibers in an amount of 100 parts by weight and the non-binding fibers in an amount of 30 to 200 parts by weight, would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claims 4-5, Appley, in view of Forte teach a loose thermosetting mineral, comprising a binding mineral fiber surrounded by a dry layer of thermosetting organic binder. It would have been obvious to any ordinary artisan that the property of the final article will depend on the amount thermosetting organic binder. Therefore, the amount of the ingredients would be considered a result effective variable. Additionally, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, maintaining the thermosetting organic binder in an amount of 3-20% by dry weight (as claimed in claim 4), and in an amount of 5-15% by dry weight (as claimed in claim 5), would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claim 6, Appley, in view of Forte teaches a loose thermosetting mineral, wherein the loose thermosetting mineral wool comprises the non-binding fibers. Forte teaches that the non-binding fibers are fibers of virgin mineral wool; by teaching that the material 20 can be a first quality (non-recycled) product, such as first quality fiberglass insulation (para. [0016]).
Regarding claim 7, Appley, in view of Forte teaches a loose thermosetting mineral, wherein the loose thermosetting mineral wool comprises the non-binding fibers. Forte teaches that the non-binding fibers are fibers of recycled mineral wool, by teaching in Fig. 1 that the conduit 235 delivers recycled material (from material source 20).
Regarding claim 8, Appley, in view of Forte teaches a loose thermosetting mineral, wherein the loose thermosetting mineral wool comprises the non-binding fibers. Forte teaches that the non-binding fibers are fibers of natural organic fibers, by teaching to use cellulose fibers (para. [0018]).
Regarding claims 9-14, Appley, in view of Forte teach a loose thermosetting mineral, comprising a binding mineral fiber surrounded by a dry layer of thermosetting organic binder. It would have been obvious to any ordinary artisan that the property of the final article will depend on the amount thermosetting organic binder. Therefore, the amount of the ingredients would be considered a result effective variable. Additionally, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, maintaining the thermosetting organic binder in an amount of 3-20% by dry weight (as claimed in claims 9-14), would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claims 15-19, Appley, in view of Forte teach a loose thermosetting mineral, wherein the said thermosetting organic binder is formaldehyde-free (abstract).
Responses to Arguments
Applicant’s argument filed on 7/14/2026 for the 102 rejections has been fully considered. Applicant’s argument with respect to claim 1 has been considered but is not persuasive. Applicant argues that claim 1 describes a loose, thermosetting mineral wool comprising binding mineral fibers surrounded by a dry layer of thermosetting organic binder and, optionally, non-binding fibers. The present specification defines the terms "loose" and "thermosetting mineral wool", wherein “Loose" is defined in paragraph [0065] of Applicants' published U.S. application (US 2025/0042809) as "consists of individual fibers that can interlace, but which do not adhere to one another so as to form a mat of fibers'", and ''[T]hermosetting mineral wool" is defined in paragraph [0011] of the published U.S. application as "mineral fibers, sized with an organic binder, dried, not sticky and having retained their capacity to set by crosslinking when heated to a high enough temperature". Applicant argues that Appley does not disclose such a "loose thermosetting mineral wool" according to the pending claims, which can be discerned from the way in which Appley uses his binder compositions with mineral wool fibers. Appley generally requires the use of a wash water system (para. [0045]). In Appley, the binder is sprayed onto "hot mineral wool fibers" wherein ''a significant portion of any water in the binder solution evaporate[s]" (para. [0046]). The Examiner takes the position that both the terms "loose" and "thermosetting mineral wool" fits the prior art teaching. Additionally, it is noted that the claim defines a product. Therefore, if a prior art product, even if made by an undisclosed process, appears to be inherently same as, or indistinguishable from, the claimed invention., the claim should be construed as a claim to the product per se that possesses the characteristics derived from a different manufacturing process. Therefore, the patentability of a product claim does not depend on the method of production. A product is not rendered patentable merely by the fact that it is produced by means of a new process, such that the product in such a claim is the same as a product described in an item of prior art was made by a different process such as binder is sprayed onto “hot mineral wool fibers”. Therefore, the Examiner maintains that based on the teaching of Appley, the rejection set forth in this office action addresses the scope of the claim, and is relevant.
Because the rejections are being maintained on the independent claim, and since there is no substantive arguments on the rejections against the references applied against rest of the dependent claims, these rejections are being maintained.
Conclusion
Applicant’s amendment necessitated the rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD M AMEEN whose telephone number is (469) 295 9214. The examiner can normally be reached on M-F from 9.00 am to 6.00 pm (Central Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached on (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD M AMEEN/Primary Examiner, Art Unit 1742
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