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 .
Response to Amendment
Applicant’s amendment filed on August 12, 2026 has been entered. Claims 7-15 have been added. As such, Claims 1-15 are currently pending in the application.
Claim Rejections - 35 USC § 103
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, 2, 4-8, 11, 12, 14, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,017,641 to Kempter et al. (“Kempter”) in view of U.S. Patent No. 6,194,512 to Chen et al. (“Chen”).
With regard to Claims 1 and 4, Kempter discloses an aqueous nonwoven binder composition useful for fiberglass products comprising condensation products of urea, formaldehyde, and glyoxal. See, e.g., Abstract, entire document. Kempter discloses the binder composition is contacted with the fibers via coating or impregnation, then the binder-fiber composite webs are heat treated to cure the binder composition. Column 6, lines 7-32. Kempter discloses that the cured binder-fiber composites undergo processing into a stable product, column 5, lines 1-19, which is stable under weeks of storage. Column 8, lines 3-6. Kempter discloses that the binder composition comprises a formaldehyde containing compound that is condensed with urea and glyoxal which, when reacted, form a cyclic urea-dialdehyde compound such as a 4,5-dihydroxyethyleneurea with or without urone groups. Column 1, lines 7-25 and column 2, lines 20-46. Kempter discloses that the formaldehyde-containing, cyclic urea dialdehyde-containing compounds can further be reacted with a formaldehyde scavenger, such as urea, to react with the remaining unreacted formaldehyde. Column 4, lines 29-62 and column 5, lines 47-54. However, Kempter does not disclose that the formaldehyde scavenger comprises a polyamine compound selected from melamine and dicyandiamide. Chen is also related to binder compositions used in fiberglass products comprising formaldehyde-based resins. See, e.g., Abstract, Examples, entire document. Chen teaches that such binder compositions preferably include a formaldehyde scavenger, such as urea, melamine, or dicyandiamide, to prevent release of formaldehyde fumes during processing. Column 5, lines 47-56. Chen teaches that the formaldehyde scavenger is added prior to curing, noting that the binder is initially mixed and then cured in combination with the glass fibers. Column 6, lines 39-48. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize a polyamine compound, such as melamine or dicyandiamide, in the binder composition disclosed by Kempter because Chen teaches that such a compound serves the purpose of scavenging formaldehyde during the processing and the curing of the binder composition, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 227 F.2d 197 (CCPA 1960). With regard to Claim 2, the formaldehyde of Kempter is a urea formaldehyde. See, e.g., Example 1. With regard to Claim 5, Kempter discloses that the binder is cured at a temperature in the range of 120 to 250 degrees C. Column 6, lines 4-6. With regard to Claim 6, Kempter discloses that the binder is used in conjunction with a fiberglass mat. Column 9, line 49 and Table. With regard to Claim 7, Kempter discloses using a cure catalyst with the binder composition. Column 5, lines 66-68. With regard to Claim 8, Kempter discloses the cure catalyst can be ammonium hydrogenphosphate, column 6, line 2, which is another name for diammonium phosphate. With regard to Claims 11 and 12, even though the combination of Kempter with Chen does not disclose the properties of the fiberglass product having a formaldehyde emission at 23 degrees C. of 20 ppb or less and an unaged tensile strength of 3.3 MPa or greater, it is reasonable to presume that the properties are inherent to the material disclosed by Kempter with Chen. Support for the presumption is found because the combination of references teaches using similar materials, i.e., a combination of a formaldehyde-containing compound, a cyclic-urea dialdehyde compound, and a polyamine compound, used in a similar process, i.e. formulating the combined ingredients into a binder that can be cured, to form a similar end-use material, i.e., a binder-containing fiberglass product. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Claims 3 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kempter in view of Chen as applied to Claim 1 above, and further in view of U.S. Patent No. 4,868,227 to Kempter et al. (“Kempter II”).
With regard to Claims 3 and 13, Kempter does not disclose that the cyclic urea-dialdehyde comprises 4,5-dihydroxyimidazoldin-2-one. However, such a compound is well known in the formaldehyde binder art. Kempter II is also related to formaldehyde-based binders for use in fiberglass. See, e.g., Abstract, entire document. Kempter II teaches that the cyclic condensation products of urea with glyoxal, which is the reaction utilized in Kempter, provides 4,5-dihydroxyimidazolidin-2-one. Column 2, lines 47-53. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize 4,5-dihydroxyimidazoldin-2-one in the reaction disclosed by Kempter because Kempter II teaches that such a compound is well known and suitable for use in combination with formaldehyde-based resins, and because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 227 F.2d 197 (CCPA 1960). Chen teaches that dicyandiamide is a suitable formaldehyde scavenger. Column 5, lines 47-56. With regard to Claims 11, 12, 14, and 15, even though the combination of Kempter with Chen and Kempter II does not disclose the properties of the fiberglass product having a formaldehyde emission at 23 degrees C. of 20 ppb or less and an unaged tensile strength of 3.3 MPa or greater, it is reasonable to presume that the properties are inherent to the material disclosed by Kempter with Chen and Kempter II. Support for the presumption is found because the combination of references teaches using similar materials, i.e., a combination of a formaldehyde-containing compound, a cyclic-urea dialdehyde compound, specifically, 4,5-dihydroxyimidazoldin-2-one, and a polyamine compound, specifically dicyandiamide, used in a similar process, i.e. formulating the combined ingredients into a binder that can be cured, to form a similar end-use material, i.e., a binder-containing fiberglass product. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). “[I]nherency may supply a missing claim limitation in an obviousness analysis where the limitation at issue is the natural result of the combination of prior art elements.” Persion Pharmaceuticals. V. Alvogen Malta Oper., 945 F.3d 1184, 1191 (Fed. Cir. 2019).
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kempter in view of Chen as applied to Claim 1 above, and further in view of U.S. Patent Application Publication No. 2015/0086803 to Srinivasan et al. (“Srinivasan”).
With regard to Claim 9, Kempter and Chen does not disclose the binder composition has a pH of 8.75 or greater. Srinivasan is also related to phenol-formaldehyde resin compositions suitable for use in insulation materials. See, e.g., Abstract, entire document. Srinivasan discloses such binder compositions can be made at a range of 7.5 to 12 and stored at a pH as high as 11. Paragraph [0038]. Srinivasan further discloses that a cyclic urea prepolymer can be reacted with the aldehyde component at pH greater than 8.75, such as 9.0 to 9.5. Paragraph [0042]. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to utilize a binder composition having a pH of 8.75 or greater in the composition disclosed by the combination of Kempter with Chen in order to provide a binder composition that is compatible with more basic environments, as shown to be well known to the person having ordinary skill in the art by Srinivasan. With regard to Claim 10, Srinivasan teaches that pH adjustments can be made using alkaline compounds. Paragraphs [0037] and [0038].
Response to Arguments
Applicant's arguments filed August 12, 2026 have been fully considered but they are not persuasive.
Applicant argues that Kempter’s results are tied to its particular reagent selection, pH history, and staged synthesis, and therefore the person having ordinary skill in the art could not freely substitute additives from another binder system. The Examiner disagrees. Kempter utilizes urea for the function of providing a formaldehyde scavenger in their binder composition. Chen, which is in the same field of endeavor of formaldehyde-based resin compositions used as binder in fiberglass products, teaches that alternative formaldehyde scavengers to urea, include melamine or dicyandiamide, to prevent release of formaldehyde fumes during processing. Column 5, lines 47-56. The person having ordinary skill in the art would be motivated to utilize these alternative means to formaldehyde scavenging because it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability and desired characteristics. In re Leshin, 227 F.2d 197 (CCPA 1960). Prior art based upon chemistry is still subject to the provisions of Section 103 obviousness.
Applicant argues that Chen does not teach using its scavengers in a cyclic urea-dialdehyde/glyoxal-urea staged resin. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). An anticipation rejection, finding each and every element in a single reference, is not required in an obviousness analysis.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that importing Chen’s optional melamine or dicyandiamide scavengers from a different binder system would have altered carefully taught chemistry of Kempter without any showing that Kempter’s intended performance would be maintained. However, absolute certainty is not a requirement in an obviousness analysis. “Where there is a reason to modify or combine the prior art to achieve the claimed invention, the claims may be rejected as prima facie obvious provided there is also a reasonable expectation of success.” M.P.E.P. 2143.02(I). In this instance, Kempter and Chen are both in similar fields of phenol-formaldehyde resins systems, used in fiberglass applications, that require an ingredient to provide formaldehyde scavenging. Kempter utilizes urea to scavenge formaldehyde, and Chen teaches that, while urea is suitable for this purpose, melamine or dicyandiamide represent later-developed materials that are also considered suitable for the same purpose. As such, there is a reasonable expectation of success in combining the references.
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.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/ Primary Examiner, Art Unit 1789
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