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 .
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.
Claims 1-3, 5-10, 28-30, 32, and 33 are rejected under 35 U.S.C. 103 as obvious over USPN 5,837,621 to Kajander in view of US Pub. No. 2010/0116179 to Baker and US Pub. No. 2005/0191922 to Xing.
Regarding claims 1-3, 5-10, 28-30, 32, and 33, Kajander teaches fire resistant glass fiber products produced by coating glass fibers with at least one nitrogen containing compound, drying the glass fibers and curing a binder that is in the coating (Kajander, Abstract). Kajander teaches that the nitrogen containing compound may be urea, phenol formaldehyde or epoxy in a small amount preferably under 10 percent (Id., column 5 lines 52-67). Kajander teaches an example where urea-bound nonwoven glass mats or blankets can be coated or first shredded or ground up to recover coated fibers or clumps of coated fibers, which are sprayed with a powder or solution of a boron compound, and then air laid and needled to form a fire resistant insulating blanket (Id., column 11 line 40 to column 12 line 6). Kajander teaches that the fibers may be compressed or molded and the binder cured (Id., column 12 lines 7-30). Note that Kajander does not require the binder to be foamed. Kajander teaches that many types of fire resistant glass products are made including insulation blankets, doors, ceilings, wall components, and roof components (Id., column 1 lines 7-20, column 6 lines 34-65).
Kajander teaches urea-bound nonwoven glass mats or blanket. Although urea appears to be known in the art as being derived from an isocyanate, Baker teaches a polyurethane composite matrix material and composite thereof having high strength and used in building or construction materials such as siding and roofing panels (Baker, Abstract). Baker teaches that the composite matrix has polyurethane, inorganic particles and a silane coupling agent, wherein at least a portion of the inorganic particles are in contact with the silane coupling agent (Id.). Baker teaches a composite comprising a polymeric matrix core and a thermoset layer (Id., paragraph 0047). Baker teaches that the polymer matrix core or thermoset layer each may comprise glass fibers (Id., paragraph 0051). Baker teaches that the thermoset layer may be cured, wherein the thermoset may be selected from epoxies, non-foamed polyurethanes, urea-formaldehyde polymers, and polyureas (Id., paragraph 0054). Baker teaches that to further strengthen the thermoset layer, a silane coupling agent may be used (Id., paragraph 0055). Baker teaches that substances including flame retardants may be added (Id., paragraphs 0079-0080).
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 fire resistant glass fiber products of Kajander, substituting the nitrogen-containing compound of Kajander with a polyurea or polyurethane, as taught by Baker, motivated by the desire of forming a conventional fire resistant glass fiber product comprising a thermoset binder known in the art as being predictably suitable for use with glass fibers in building applications.
Regarding the claimed glass fibers defining voids inside the layer, the prior art combination teaches forming a nonwoven or a blanket of intermingled fibers (Kajander, column 1 lines 8-20). It is reasonable for one of ordinary skill in the art to expect that a nonwoven or a blanket of intermingled fibers comprise voids defined by the glass fibers, as the invention of the prior art combination does not appear to require additional components other than coated glass fibers (see for example Id., claim 1). Therefore, the claimed feature appears to naturally flow from the teachings of the prior art combination. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Regarding the claimed amounts of glass fiber and binding agent, the prior art combination teaches that glass fiber constitutes most preferably at least about 25 percent of the first resistant glass fibers and that a small amount of binder, preferably under 10 percent can be used based on the weight of the glass fibers (Kajander, column 4 lines 12-32, column 5 line 52 to column 5 line 10, claim 10). Additionally, Xing teaches a similar fiber mat of improved tensile strength comprising fibers, a resinous fiber binder, and a urethane binder modifier (Xing, Abstract). Xing teaches that the plurality of fibers is distributed in a composition, wherein the composition comprises between about 0.05 wt.% and about 45 wt.% fiber binder (Id., paragraphs 0012-0014), and the fibers are glass fibers, wherein the fiber content may be in the range of from about 55 wt.% to about 98 wt.% (Id., paragraphs 0022-0024). Xing teaches that the mat is dried and cured (Id., paragraph 0032). Xing teaches that the mat has improved tensile strength and may be suitable for use in building materials (Id., paragraph 0001).
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 fire resistant glass fiber products of the prior art combination, and adjusting and varying the amount of fibers and binder, such as within the claimed ranges, as taught by Xing, motivated by the desire of forming a conventional fire resistant glass fiber product comprising amounts of fibers and binder resin known in the art as being predictably suitable for cured glass fiber mats in building applications.
Regarding claims 5-7, the prior art combination teaches an example where nonwoven glass mats or blankets can be coated or first shredded or ground up to recover coated fibers or clumps of coated fibers. Additionally, the recitation of the glass fibers comprising at least one of the claimed fibers, such as a used fiber, fiberglass insulation material, or fiberglass insulation, appears to be directed to the source or classification of the glass fibers and does not appear to distinguish the claimed fibers from the glass fibers of the prior art combination. Therefore, the glass fibers of the prior art combination would appear to be within the scope of the claimed fibers.
Alternatively, the recitation of the source of the glass fibers (i.e. used fibers or from fiberglass insulation material or construction materials), is interpreted as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art ether anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 8, Baker teaches that to further strengthen the thermoset layer, a silane coupling agent may be used. Since the layer comprises glass fibers, a silane coupling agent, and a thermoset including a polyurea or polyurethane, it is reasonable for one of ordinary skill to expect that the silane coupling agent is present or coated between the fibers and the thermoset. Therefore, 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 fire resistant glass fiber products of the prior art combination, and including a silane coupling agent between the fibers and the polyurea or polyurethane, as suggested by Baker, motivated by the desire of forming a conventional fire resistant glass fiber product having predictably increased strength for building applications.
Regarding claims 9 and 10, Kajander teaches that many types of fire resistant glass products are made including doors, ceilings, wall components, and roof components, wherein the fibers may be compressed or molded and the binder cured.
Regarding claim 28, the prior art combination teaches that the glass fibers are made fire resistant by applying a boron compound and nitrogen compound, and curing the binder (Kajander, column 6 lines 21-33), and that it was known to add substances including flame retardants (Baker, paragraphs 0079-0080). Although the prior art combination does not appear to teach the claimed Class A rating, it is reasonable for one of ordinary skill to expect that the blanket comprises the claimed property, as the prior art combination teaches a substantially similar structure and composition as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Alternatively, 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 fire resistant glass fiber products of the prior art combination, wherein the material has a fire rating by including a fire retardant, such as the claimed fire rating, as it is within the level of ordinary skill to determine suitable properties of the fire resistant insulating blanket based on the inclusion of known materials, based on the intended application.
Regarding claims 29 and 30, the prior art combination teaches a fire resistant insulating blanket comprises glass fibers coated and cured as claimed, wherein the coating is applied in a small amount preferably under 10 percent. Note that since the prior art combination teaches a fire resistant insulating blanket and does not require additional layers (i.e. is a single layer), it forms the top and bottom surfaces as claimed.
Claims 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kajander in view of Baker and Xing, as applied to claims 1-3, 5-10, 28-30, 32, and 33 above, and further in view of US Pub. No. 2007/0012414 to Kajander (herein referred to as “Kajander II”).
Regarding claims 11-13, Kajander does not appear to teach the claimed polymeric fibers and fillers. However, Kajander II teaches multilayer nonwoven fibrous mats having high strength and smooth surfaces (Kajander II, Abstract, paragraph 0001), wherein at least one of the layers comprises fibers bonded together with a resinous binder (Id., paragraph 0008). Kajander II teaches that the binders may include urea formaldehyde resins, phenol formaldehyde resins and polyurethane resins (Id., paragraph 0020). Kajander II teaches the inclusion of filler particles including carbon particles and thermoplastic polymer particles (Id., paragraph 0021). Kajander II teaches that at least one of the layers is comprised of glass fibers, but the fibers can be of any kind including polymer fibers (Id., paragraph 0019). Kajander II teaches that additions of polymer fibers make the mats improve flexibility, bend strength, and tear strength, while the glass fibers give the mat more stiffness and fire resistance (Id.). Kajander II teaches an Example comprising a slurry of glass fibers and a binder resin (Id., Example 1), and a second slurry of polyester fibers and the same binder, wherein the multilayer mat was dried and the binder cured (Id., Example 4). Kajander II teaches that the mats are useful for reinforcing substrates including gypsum board, duct board, fiber glass insulation, and wood products (Id., paragraph 0001).
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 fire resistant glass fiber products of the prior art combination, and including polymeric fibers and fillers as claimed, as taught by Kajander II, motivated by the desire of forming a conventional fire resistant glass fiber product comprising fillers known in the art as being predictably suitable for similar applications, based on the desired properties of the resulting mats.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Kajander in view of Baker and Xing, as applied to claims 1-3, 5-10, 28-30, 32, and 33 above, and further in view of US Pub. No. 2004/0161993 to Tripp.
Regarding claim 14, Kajander does not appear to teach the claimed thickness. However, Tripp teaches a similar inorganic fiber composite insulation batt fabricated from mineral or inorganic fibers and plastic-containing bonding fibers, with or without using conventional resin binders (Tripp, Abstract, paragraph 0010). Tripp teaches that the thickness of the mat may be fabricated to be in the range of about 13 to 89 mm (Id., paragraph 0027).
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 fire resistant glass fiber products of the prior art combination, and adjusting and varying the thickness, such as within the claimed range, as taught by Tripp, motivated by the desire of forming a conventional fire resistant glass fiber product comprising a suitable thickness known in the art as being predictably suitable for insulation applications.
Claims 34 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Kajander in view of Baker and Xing, as applied to claims 1-3, 5-10, 28-30, 32, and 33 above, and further in view of US Pub. No. 2006/0234026 to Huusken.
Regarding claims 34 and 36, the prior art combination does not appear to teach the claimed paper. However, Huusken teaches a laminate including a first layer of resin impregnated paper and a layer of fiber reinforced veil, which includes a binder and filler (Huusken, Abstract). Huusken teaches that each fiber reinforced veil includes chopped glass fibers (Id., paragraph 0011) impregnated with a binder, such as phenol-formaldehyde, urea-formaldehyde and polyurethane resin (Id., paragraph 0027). Huusken teaches that including a layer of resin impregnated paper further enhances the aesthetic appeal of the product (Id., paragraph 0045). Huusken teaches that laminates are well known in the art for use as panels in the building industry (Id., paragraphs 0002, 0003).
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 multilayer nonwoven mat of the prior art combination, and including a resin impregnated paper above a layer, as taught by Huusken, motivated by the desire of forming a conventional multilayer nonwoven mat having the desired aesthetics known in the art as being predictably suitable for building materials.
Claims 34 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Kajander in view of Baker, as applied to claims 1-3, 5-10, 28-30, 32, and 33 above, and further in view of US Pub. No. 2005/0058818 to West.
Regarding claims 34 and 35, the prior art combination does not appear to teach the claimed fiberglass film. However, West teaches a composite having fiberglass laminated to a plastic layer (West, Abstract), including a non-porous fiber-reinforced flat sheet film (Id., paragraph 0016). West teaches that the film is highly adherent to polyurethane surfaces and improves the strength of the composite product and molded articles (Id., paragraph 0021).
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 multilayer nonwoven mat of the prior art combination, and including a fiberglass film above a top layer, as taught by West, motivated by the desire of forming a conventional multilayer nonwoven mat having predictably improved strength based on the intended application.
Response to Arguments
Applicants’ arguments filed March 26, 2026, have been fully considered but they are not persuasive. Applicants argue that Kajander and Baker fail to disclose, teach, or suggest at least the limitations of claim 1, as Kajander’s products include at most 70 wt% of glass fibers and Baker’s polymeric matric core can include at most 70 wt% of glass fibers. Examiner respectfully disagrees. As set forth above, the prior art combination teaches that the glass fibers constitute at least 10 weight percent of the product, such as at least about 50 weight percent of the product, wherein a small amount of binder, preferably under 10 percent based on the weight of the fibers can be added to bond the fibers together. Additionally, Xing establishes that the claimed amounts of glass fibers and resin binders used in cured glass fiber mats for building applications was known and predictably suitable for use in such applications.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786
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