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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on September 18th, 2025, has been entered.
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, 4-6, and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (CA3036102A1) in view of Dimanshteyn et al (US 2007/0197686 A1) and Kawamura (US 2017/0312951 A1).
With regards to claim 1, Watanabe discloses a gypsum-based building board (i.e., board for building) comprising a magnetic layer (i.e., a magnetic layer covering at least a part of a surface of the board for building) containing iron powder (i.e., a magnetic material) and an inorganic binder (Watanabe: page 3, line 28 through to page 4, line 2; page 5, lines 1-10; page 7, lines 29-30; claim 1). With regards to the limitation “a finishing material is disposed on the surface of the magnetic layer, and, except for the finishing material, a face of the magnetic layer opposite to a face of the magnetic layer facing the board for building is exposed” Watanabe further depicts its magnetic layer as coated with only an additional layer 21 (i.e., there is a finishing layer disposed on a surface of the magnetic layer, and with the exception of this finishing layer, the face of the magnetic layer opposite to the board for building is exposed) (Watanabe: Fig. 2). Watanabe further notes that the finishing layer may be, for example, a wallpaper or a layer of paint (Watanabe: page 13: lines 1-13)
Although Watanabe includes an inorganic binder, Watanabe does not expressly disclose an inorganic binder in the form of an alkali metal silicate-based binder including lithium silicate, sodium silicate, and zinc borate. In addition, although Watanabe acknowledges the incorporation of a filler, Watanabe does not appear to expressly state the incorporation of either talc or titanium oxide.
Dimanshteyn is directed to a protective coating for a building material or panel comprising a water-soluble alkali metal silicate binder which includes lithium silicates, sodium silicates, and hydrated zinc borate (Dimanshteyn: para. [0030], [0034], and [0048]). The combination of the silicates and zinc borate as disclosed in Dimanshteyn results in a protective coating which is non-flammable and further releases a nonflammable gas in the presence of heat in a manner which does not result in the production of large bubbles which lead to substrate exposure during intumescent reaction (Dimanshteyn: para. [0003], [0008], and [0049]). Dimanshteyn further teaches that incorporation of titanium dioxide can provide an opacifying, or “hiding” effect, and that titanium dioxide is a known filler (Dimanshteyn: para. [0058] and [0088]). Watanabe and Dimanshteyn are analogous art in that they are related to the same field of endeavor of building materials comprising inorganic coatings. A person of ordinary skill in the art would have found it obvious to have selected the inorganic binder composition of Dimanshteyn for the inorganic binder of Watanabe, in order to provide improved fire-protective properties (i.e., to render the coating of Watanabe non-flammable, and to provide the additional function of releasing gas upon heating to form an intumescent material which does not separate from underlying panel) (Dimanshteyn: para. [0003], [0008], and [0049]). In addition, a person of ordinary skill in the art would have further found it obvious to have incorporated titanium dioxide, and to have further optimized the amount of titanium dioxide present depending on the desired degree of opacity of the formed coating (Dimanshteyn: para. [0058] and [0088]).
Watanabe and Dimanshteyn still do not appear to disclose the incorporation of an inorganic additive in the form of talc having an average particle diameter of 16 microns, wherein the average particle diameter is a particle diameter at a cumulative value of 50% in a particle diameter distribution determined by a laser diffraction/scattering method.
Kuwamura is directed to a building material comprising an inorganic filler preferably in the form of talc, the inorganic filler having an average particle diameter D50 of greater than or equal to 0.5 microns and less than or equal to 20 microns (Kuwamura: para. [0073] and [0115]-[0117]). The average particle diameter D50 represents a 50% cumulation (i.e., cumulative value) as measured by a laser type particle size analyzer (i.e., average particle diameter at a cumulative value of 50% in a particle diameter distribution determined by a laser diffraction/scattering method) (Kuwamura: para. [0073] and [0115]-[0117]). However, the Examiner notes that the present claim language directed to a laser diffraction/scattering method, as best understood, does not structurally limit the claims, as the presence of a given property does not depend on its method of measurement. Watanabe, Dimanshteyn, and Kuwamura are analogous art in that they are related to the same field of endeavor of building materials. A person of ordinary skill in the art would have found it obvious to have selected the talc filler of Kuwamura for the inorganic filler of Watanabe and Kuwamura, in order to provide an improved combination of lightness, rigidity, low heat storage amount, and high thermal resistance (Kuwamura: para. [0010]). The particle diameter range overlaps the claimed value of 16 microns, thereby establishing a prima facie case of obviousness, per MPEP 2144.05. With regards to the claimed amount of talc filler relative to iron powder, the Examiner notes that Watanabe expressly teaches adjusting the amount of inorganic filler relative to the iron powder in order to enable bulking (Watanabe: page 20, lines 10-23). Therefore, a person of ordinary skill in the art would have found it obvious to have optimized the amount of talc relative to the amount of iron powder based on the desired level of bulk in the achieved coating.
Furthermore, the present specification admits that the incorporation of talc in the composition is responsible for the Hunter whiteness degree of over 25 in the claims. Therefore, the magnetic layer of Watanabe, Dimanshteyn, and Kuwamura, which contains talc, would inherently possess the claimed Hunter whiteness degree (see above discussion). Furthermore, a composition and its properties are inseparable. Since the composition of Watanabe and Li is substantially identical to that of the claimed invention, it is expected to possess the claimed Hunter whiteness degree. See MPEP 2112. For the same reason, as best understood, the claimed WB property with respect to penetration of color through a surface of the finishing material is expected of the prior art composition.
With regards to the recitation of a lack of rust preventative agent, it is noted that the composition according to Watanabe, Dimanshteyn, and Kuwamura does not include materials other than those which are claimed. Therefore, it is clear that other materials, such as a rust preventative agent, are not present.
With regards to claim 2, Watanabe discloses a board for building as applied to claim 1 above (see above discussion). Watanabe acknowledges that the amount of iron powder relative to the total in the magnetic material layer is adjusted to provide sufficient magnetic adsorption force, but also such that the material is solidified and its other properties can be ensured (Watanabe: page 23, lines 21 through to page 24, line 6). In other words, Watanabe expressly teaches optimization of the amount of magnetic powder, under the motivation of providing a magnetic layer with enough iron powder such that a sufficient magnetic adsorption force is generated, but not an excessive amount such that the material cannot be solidified and its other properties impeded (Watanabe: page 23, lines 21 through to page 24, line 6). Therefore, the amount of iron powder is considered obvious to optimize.
With regards to claim 4, Watanabe discloses an amount of iron powder of greater than or equal to 0.3 kg/m2, which is identical to the claimed range (Watanabe: page 5, lines 29-30).
With regards to claim 5, Watanabe discloses a gypsum board (see above discussion).
With regards to claim 6, Watanabe discloses the incorporation of a fatty acid rust preventative agent (i.e., organic additive) in an amount of greater than 0.1% mass or more (i.e., 0.1 parts or more), which overlaps that of the claimed range (i.e., greater than or equal to 0.5 parts by mass and less than or equal to 30 parts by mass), thereby establishing a prima facie case of obviousness (Watanabe: page 25, lines 10-32). See MPEP 2144.05.
With regards to claim 8, Watanabe discloses a thickness for the material of, for example, 9.5 mm ore more and 10.0 mm or less, which as found in the present claim (Watanabe: page 13, lines 23-26).
With regards to claim 9, Watanabe expressly discloses its board as having a quasi-incombustible performance (Watanabe: page 15, lines 3-18).
With regards to claim 10, Watanabe expressly discloses its board as having incombustible performance (Watanabe: page 15, lines 19-33).
Response to Arguments
Applicant’s arguments have been fully considered but they are not found persuasive.
Applicant argues that Watanabe does not teach or suggest a finishing material in the form of paint or wallpaper. This argument is not found persuasive, since, upon further review, page 13, lines 1-13, of Watanabe, are found to disclose the finishing in the form of a paint or wallpaper.
Applicant argues that Watanabe does not teach or suggest the claimed WB value. Applicant further argues that the combination of Watanabe, Dimanshteyn, and Kuwamura do not teach the claimed WB value. While it is agreed that Watanabe is not explicit as to the claimed WB value, Applicant’s arguments are not found persuasive since the combination of Watanabe, Dimanshteyn, and Kawamura teach a composition which is substantially identical to that of the claimed invention, and therefore, the taught composition is expected to possess the claimed WB value. That Watanabe does not expressly disclose the claimed WB value does not negate the findings supporting the present case of inherency.
Applicant argues that Dimanshteyn and Kawamura do not separately teach the claims as amended. This argument is not found persuasive as only Watanabe, and neither of Dimanshteyn and Kawamura, were relied upon to teach the claimed finishing material in the form of a wallpaper or paint. Further, Applicant’s arguments are unpersuasive as neither Dimanshteyn nor Kawamura were individually relied upon to teach the claimed WB value.
Conclusion
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/E.W./
Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783