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 .
Priority
2. . Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.Information Disclosure Statement3. . The information disclosure statement (IDS) submitted on 08/14/25 and 04/02/26 have been considered by the examiner.
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 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1 and 13, claim 1 defines that "the first surface of the inorganic fibrous mat exhibits a lower friction coefficient than the second major surface". The feature attempts to define the subject matter in terms of the result to be achieved, which merely amounts to a statement of the underlying problem, without providing the technical features necessary for achieving this result. lt seems that the only way to achieve the result is the one second organic surface additive different from the at least one first organic coating comprised in the second major surface. The feature "wherein the first surface of the inorganic fibrous mat exhibits a lower friction coefficient than the second major surface" is not clearly indicated as a feature of the invention or only an optional feature. ln the independent claims 1 and 13 the feature is part of the mounting mat. Applicant’s disclosure treats the feature as only optionally. It refers to the second organic surface additive, as optional. This would also make the dependent claims 2-12 and 14-15 inconsistent. Regarding claim 2, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation less than 50 ppm, and the claim also recites less than 40 ppm, more preferably less than 30 ppm, even more preferably less than 20 ppm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination,
Examiner is interpreting the claim to refer less than 50 ppm Regarding claim 3, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation at least by 75 % by weight of polycrystalline fibers, and the claim also recites preferably at least 85 % by weight based on the total weight of the inorganic fibrous mat which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purpose of examination, Examiner is interpreting the claim to refer to at least by 75 % by weight Regarding claim 4, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation less than 2.9%, and the claim also recites preferably from 0.6% to 2.6% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, Examiner is interpret the claim to refer to less than 2.9%
Regarding claim 8, the claim is rendered indefinite because of the term “preferably”. The term “preferably” makes the claim unclear if the organic surface additive is a hydrocarbon compound or a solid hydrocarbon compound. For purposes of examination, Examiner is interpreting the claim to refer to hydrocarbon compounds.
Regarding claim 10, the claim is rendered indefinite because of the term “preferably”. The term “preferably” renders the claim indefinite because it is unclear if the claim refer to disaccharides selected from the group consisting of sucrose, lactose, maltose, trelalose, cellobiose, chitobiose and any mixtures thereof or if the claim refer sot disaccharides selected from the group consisting of sucrose, lactose, maltose and any combination thereof. For purposes of examination, Examiner is interpreting the claim to refer to disaccharides selected from the group consisting of sucrose, lactose, maltose, trelalose, cellobiose, chitobiose and any mixtures thereof.
Regarding claim 11, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation from 0.005 to 0.4 wt.-%,, and the claim also recites preferably from 0.008 to 0.2 wt.-%, more preferably from 0.01 to 0.1 wt.-%, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 14, the term “preferably” renders the claim indefinite. It is unclear if the claim refers to a second organic additive is applied to the second surface of the inorganic fibrous mat by spraying, by spraying as aqueous solution, by dipping the inorganic fibrous mat into a solution, by dipping the inorganic fibrous mat into the second surface additive in molten state, or by means of powder dry coating or if the claim refers to spraying as aqueous solution or by means of powder dry coating. For purposes of examination, Examiner is interpreting the claim to refer to a second organic additive is applied to the second surface of the inorganic fibrous mat by spraying, by spraying as aqueous solution, by dipping the inorganic fibrous mat into a solution, by dipping the inorganic fibrous mat into the second surface additive in molten state, or by means of powder dry coating
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 1-7, 12, 13 and 15 are rejected under 35 U.S.C. 102(a)(1) being anticipated
by, or in the alternative, 35 U.S.C. as being obvious over WO 2015/038366A1 issued to Middendorf.
Middendorf (see page 7, line 9 - page 8, line 17; claims 1,3,6,7,9 and 13) discloses a mounting mat for mounting a pollution control element in a housing, comprising:
(a) an inorganic fibrous mat having a first major surface and a second major surface, which is inherent in such mats;
b) at least one first organic surface additive comprised in the first major surface of the inorganic fibrous mat. (page 4, lines 20-24 for housing and mounting mat).
With regards to the limitation “wherein the first surface of the inorganic fiber mat exhibits a lower friction coefficient than the second major surface, it is presume that the limitation is inherent to Middendorf.
The mounting mat may include ceramic fibers, such as for example annealed melt- formed ceramic fibers, sol-gel formed ceramic fibers, polycrystalline fibers, glass fibers alumina-silica fibers, non-bio persistent alkaline-earth-silicate fibers (for example "ISOFRAX" from Unifax) and/or combinations thereof. (page 6, lines 14-17). The composition and amount of the fibers are taught at page 15, lines 25+ in the working examples and in the least amount to at least 75%, thereby meeting the limitation sought in claim 3.
The mounting mat comprising: - a non-woven mat of inorganic fibers, wherein - the lubricants are distributed in the mat. The lubricant serves equivalence to Applicant’s additives. The lubricants belong to a group consisting of: - saturated hydrocarbons (linear and/or branched and/or cyclic, - olefinically unsaturated hydrocarbons (linear and/or branched and/or cyclic), - fatty alcohols and fatty acids (linear and/or branched and saturated and/or olefinically unsaturated), - carboxylic acid esters - carbonic acid esters and/or - silicone oils and/or organofunctional silanes, siloxanes. (pages 3 line 30-page 4 line 5; page 5 lines 3-18). The lubricant according to Middendorf is a substance introduced to reduce the friction between moving surfaces, here introduced into the mat to reduce friction between fibers within the mat The amount of the lubricant present is at least 0.5%-3% by weight. (page 6, lines 28-32). This meets the amount sought in Claim 11 and overlaps with the range of 0.005-0.1 wt. %.
With regards to the limitation “wherein the first surface of the inorganic fiber mat exhibits a lower friction coefficient than the second major surface, it is presume that the limitation is inherent to Middendorf as Middendorf discloses the same components as required for the mounting mat as in Applicant’s claim 1. Also, Middendorf discloses a lubricant on the first surface. A lubricant functions to reduce friction. Burden is upon Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594.
Regarding claim 2, with regards to requirements of the mounting mat yields a sodium extract content according to DIN EN ISO 11885:2009 of less than 50 ppm, preferably less than 40 ppm, more preferably less than 30 ppm, even more preferably less than 20 ppm in Claim 2, it is the position of the Office that the claimed resultant property, would be inherent to the composite of Middendorf. It is reasonable to presume so, as support for said presumption is found in the use of like materials (i.e. same nonwoven, same compositional make up, same additives and same final end use). The burden is upon 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 Middendorf 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.
Regarding Claim 7 which requires that the mat does not comprise a binder. Since the compounds used in the Middendorf are the same as used by Applicant then the characteristics and the definition of the function as a binding element are identical.
Regarding method claims 13 and 14, at page 8, lines 4-18, the instant reference teaches that the lubricant may be provided by spraying it onto the fibers before they enter the forming chamber. It is also possible that the lubricant is provided by spraying it into the forming chamber. Lubricants can also be applied differently from the previously described. Fibers might have already have lubricant applied to them before bringing them into the mat forming process e.g. at the fiber manufacturer or in any other process step. The lubricant can preferably be sprayed in any pipe that conveyors the fiber between machines or at the end of a duct where the air is separated from the fiber so the fiber can fall by gravity into the next machine in the process or while fibers are conveyored on a transportation belt.
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.
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/038366A1 issued to Middendorf in view of WO 2008/121801A1 issued to Kunze .
Middendorf teaches what is set forth above and provides the latitude of having the additive present all over the nonwoven mat but does not specifically state a second additive.
Kunze et al. remedies this, as they are from the same art of endeavor in that the to make fiber mats used for pollution control.
Kunze et al., teach a second organic hydrocarbon additive is with the nonwoven. A person having ordinary skill in the art before the effective filing date of the invention would have found it obvious to have modified Middendorf’s nonwoven mat and used a second additive. One would have been motivated to do so to provide a higher friction coefficient for the second major surface of the inorganic fibrous mat as taught by Kunze et al.
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
EP 3763922A issued to Middendorf. The instant reference teaches a mounting mat for pollution control found within a housing. The mat is a non-woven made from polycrystalline fibers wherein the mat contains at least 50% by weight of the mat. The total organic content of less than 2.9 % (measured per LOI), preferably from 0.6 % to 2.6 %,preferably surface additives like wax or oil, wherein the mat has a canning force (Fc) of less than 5700 N, preferably less than 4500 N, for example from 3000 to 4500 N as measured according to the test described in the method section. Also provided are methods of making such mats and pollution control devices containing them. The mounting mat of any one of the preceding claims wherein the one or more organic surface additive includes an aliphatic hydrocarbon having from 10 to 40 carbon atoms or an aliphatic functionalized hydrocarbon having from 10 to 40 carbon atoms and wherein the functionalized hydrocarbon has one or more functional groups selected from hydroxy groups, carboxylic acid ester groups, ketone groups, oxygen-ether groups and combinations thereof.
WO 2007/143,437 A2 issued to Dietz, discloses a multilayer mounting mat comprising
fibers that may be sized to provide lubricity and to protect the fiber strands during manufacturing of the mat. WO 94/ 16,134 discloses a flexible nonwoven mat comprising ceramic oxide fibers. To facilitate processing and separation of the fibers, an antistatic lubricant may be provided. WO 2009/048,859 discloses a method of making mounting mats. In one embodiment the fibers are impregnated. discloses a multilayer mounting mat comprising fibers that may be sized to provide lubricity and to protect the fiber strands during manufacturing of the mat.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786
