DETAILED ACTION
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 .
Status of the Claims
The preliminary claim amendment dated 06/27/2025 has claims 1-4 and 6-47 cancelled and claim 5 active and pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/27/26, 1/27/26 and 06/27/25 have been considered by the Examiner and remitted herewith.
Specification
The abstract of the disclosure is objected to because the abstract is too long. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). The abstract needs to be less than 150 words. Appropriate correction is required.
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.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 19/269,459 [USPUB 2026/0139419]. The claims filed on 10/31/25 were considered for analysis. The inventive entity lists different inventors, but the same assignee. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented. Although the conflicting claims are not identical, they are not patentably distinct from each other because the embodiment of the instant claims would be rendered obvious by the embodiments of claim 2 of 19/269,459. Both require instant application and the pending a non-woven fiber web made from glass fibers; thermal conductivity reducing and an air permeability less than or equal to 5 CFM. This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over
USPUB 20240313291A1 issued to Williams et al.
Regarding Claim 5, where Applicant seeks a thermal barrier material, comprising: a non-woven fiber web, comprising: glass fibers; and silicon carbide particles; wherein the non-woven fiber web has an air permeability less than or equal to 5 CFM; Applicant is directed to the teachings of Williams et al. Williams et al., at ¶ 0040, teach making a thermal barrier made from a nonwoven(s) where the composition of the fiber can be glass. The nonwoven can further comprise additives such a silicon carbide. from inorganic fibers a batt [nonwoven ¶¶ 0009-0010].
With regards to requirements of air permeability less than or equal to 5 CFM, it is the position of the Office that the claimed resultant property of air permeability as sought, would be inherent if not obvious to the composite of Williams et al., It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. same glass nonwoven fibers with particles of silicon carbide and the same final end use). The burden shifts to Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties as set forth above, it would obviously have been present once the Williams et al., product is provided. Note In re Best, 195 USPQ at 433, footnote (CCPA 1977) as to the providing of this rejection made above under 35 USC 102. Reliance upon inherency is not improper even though rejection is based on Section 103 instead of Section 102. In re Skoner, et al. (CCPA) 186 USPQ 80.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPUB 20140057516A1 issued to Young et al. Young et al teaches nonwoven made from inorganic fibers having additives, used for thermal insulation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Arti Singh-Pandey whose telephone number is (571)272-1483. The examiner can normally be reached Monday-Thursday 8:30-5:00 and 8:00-10:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melvin Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Arti Singh-Pandey/
Primary Patent Examiner
Art Unit 1759
asp
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