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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/11/2026 has been entered.
Response to Amendment
The Amendment filed June 11, 2026, has been entered. Claims 1-2, 6-12, 14, and 16-23 remain pending in the application. Claims 3, 5, and 13 were previously cancelled. Claims 4 and 15 are newly cancelled. Claim 1 was amended and support for amendments are found in the original Specification [Paragraphs 0010, 0014, 0040-0041, 0043-0044, 0048, 0058-0059, 0094]. Claims 22-23 are newly added. While Paragraphs 0039-0040, and Tables 2-3 of the original Specification show written descriptive support for new Claim 23, there is no written descriptive support for newly added Claim 22 for the reasons set forth below.
Claim Objections
Claims 1 and 23 are objected to because of the following informalities:
Newly amended Claim 1 recites “polymer thickener”, whereas the Paragraphs [0014, 0016, 0026-0028] of the original Specification recites “polymeric thickener”. Applicant is advised to change the language “polymer thickener” to “polymeric thickener” in Claim 1 to use consistent language with the original Specification.
Newly amended Claim 1 recites ““hydroxyl ethylcellulose”, whereas Paragraphs [0010,0055] of the original Specification recite “hydroxyethyl cellulose”. Applicant is advised to change the language “hydroxyl ethylcellulose” to “hydroxyethyl cellulose” in Claim 1 to use consistent language with the original Specification.
Applicant is advised to replace the claimed language “wherein the alkali sensitive optionally comprises the binder” of newly amended Claim 1 to the new language “wherein alkali sensitive component optionally comprises the binder”.
As to Claim 23: The applicants are advised to change the phrase “wherein the filler comprising” to the new phrase “wherein the filler comprises”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 6-12, 14, and 16-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 was amended to include “wherein the polymer thickener comprises hydroxyl ethyl cellulose and hydroxyl propyl cellulose”. However, the instant Specification does not provide written descriptive support for “hydroxyl propyl cellulose” as recited in the newly amended Claim 1. Paragraphs [0010, 0055, 0094] of the original Specification only shows written descriptive support for examples of polymeric thickener as including “hydroxylpropyl methylcellulose” and “hydroxyethyl cellulose”, but not “hydroxyl propyl cellulose” (emphasis added). Accordingly, the scope of Claim 1 contains new matter and is unsupported by the original Specification.
Newly added Claim 22 recites “a 4.7-5.2:1 weight ratio of sodium carbonate: sodium bicarbonate”. However, the instant Specification does not provide written descriptive support for the entire range of 4.7-5.2:1. Rather, Table 3 of the original Specification only shows written descriptive support for 4.8-5.2:1 (DC pH2 weigh ratio of sodium carbonate : sodium bicarbonate = 1.74/0.36 = 4.8; DC pH3 weigh ratio = 3.48/0.69 = 5.0; DC pH4 weigh ratio = 5.13/0.99 = 5.2) but not the lower range of 4.7:1. Accordingly, the scope of Claim 22 contains new matter and is unsupported by the original Specification.
Claims 2, 6-12, 14, 16-21, and 23 are rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112(b)
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 1-2, 6-12, 14, and 16-23 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.
Claim 1 newly recites “at least 5 wt.% perlite of the joint compound on a dry basis”. However, the perlite is part of the filler, and the filler is present in an amount of 50-93 wt. % of the joint compound on a dry basis. When at least 5 wt. % of perlite is used together with the highest amount 93 wt. % of calcium carbonate, it equals to 98 wt. %, and this total adds to more than the range 50-93 wt. % of filler and thus, falls outside the claimed filler range. It follows that it is unclear how the maximum amount of calcium carbonate and perlite (which is 98 wt.% or greater) meet the filler amount at 50-93 wt.%. Clarification by applicants in the next response will be helpful to better ascertaining the scope of these claims.
Claim 10 recites “wherein optionally the additive comprises an accelerator and/or a rheology modifier”. However, it is unclear whether the accelerator recited in claim 10 is in addition to or in lieu of the particular optional additives listed in claim 1, on which claim 10 depends from.
As to Claim 12, it is unclear whether the claim 12 requires all three of calcium carbonate, clay and perlite, and also other types of filers listed in claim 12 when the fillers in claim 1, on which claim 12 depends from, already requires presence of calcium carbonate, clay and perlite.
Claims 2, 6-9, 11, 14, and 16-23 are rejected for being dependent on a rejected base claim.
Accordingly, the scope of these claims is deemed indefinite.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Newly amended Claim 1 now recites filler comprising calcium carbonate, perlite and clay, and dependent Claim 12 also includes a mixture of calcium carbonate, perlite and clay which fails to further limit Claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Accordingly, Claim 12 is deemed improperly dependent.
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, 6-7, 9-12, 14, and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over Hargrove et al. (WO 2016/200677; hereafter as “Hargrove”) in view of Podlas (US 7,108,744; hereafter as “Podlas”) and Johnstone et al. (US 4,853,085; cited in the IDS filed on 12/15/2023; hereafter as “Johnstone”).
For the purposes of examination, the “ready-mixed” joint compound of the Claim 1 preamble is interpreted to mean pre-mixed with water during manufacturing and requiring little or no addition of water at the job site, as defined by the instant application [Specification; Paragraph 0004].
For the purposes of examination, the “drying-type” joint composition of the Claim 1 preamble is interpreted to mean joint compounds that harden when the water evaporates and the compound dries, as defined by the instant application [Specification; Paragraph 0004].
For the purposes of examination, the term “optionally” of Claims 1, 10 and 11 is interpreted to mean non-essential, and that any claims with optional limitations may be considered whole and complete without the optional limitations.
As to Claims 11-2, 6-7, 9-10, 12, and 16-21, Hargrove teaches a drying-type joint compound [Abstract], which is prepared from a pre-mixture of ingredients (see Example 1 below) and water [Paragraph 00108], thereby corresponding to the claimed ready-mixed, drying-type joint compound components and water of Claim 1. Hargrove also teaches that the joint compound [Example 1; Paragraphs 00157-00160] comprises:
calcium carbonate [Paragraph 0084];
0.1-5 wt. % kaolin clay [Paragraph 0084], which is within the range “up to 10 wt. % clay” of Claim 1, and thereby reading on the clay of Claim 12;
3-90% by weight of a latex emulsion binder [Abstract; Paragraph 0009], which overlaps with up to 15 wt. % of a binder of Claim 1, and thereby reading on wherein the binder comprises latex of Claim 1;
0.2 wt. % hydroxyethyl cellulose [Example 1; Table 2] which according to paragraph 0091 of applicants’ published application US PG PUB 20220388905 corresponds to the claimed polymeric thickener and encompassed by the claimed up to about 3 wt. %, up to about 2 wt. %, and about 0.1 wt. % to about 2 wt. % polymeric thickener of the joint compound on a dry basis of Claims 1, 10 and 11, respectively;
hydroxyl propyl methyl cellulose [Paragraph 00102];
1.4 wt. % ethylene glycol [Example 1; Table 2] which according to paragraphs 0094 and 0097 of applicants’ published application US PG PUB 20220388905 corresponds to the claimed additive and encompassed by the claimed up to about 10 wt. % of the joint compound on a dry basis of Claims 1 and 10, and about 0.1 wt. % to about 10 wt. % of Claim 11.
Hargrove further teaches using a rheologically modified associative thickener system, corresponding to the rheology modifier (i.e., a type of additive), which generally performs best under alkaline conditions [Specification; Paragraph 00106], corresponding to the alkali sensitive joint compound component comprising rheology modifier recited in Claims 1 , 6-7, and 9. Additionally, Hargrove teaches a method by which a joint between abutted sheets of gypsum wallboard is treated with the present joint compound [Specification; Paragraphs 0044-0046] as required by present Claim 19. Finally, Example 1 of Hargrove further teaches a method of preparation of the joint compound [Specification; Paragraphs 00157 - 00160] involving the step of combining all the liquid materials and all the dry materials to a mixer [Description; Paragraph 00158], the combination of all liquid and dry materials corresponding to the claimed filler, binder, polymeric thickener, pH buffer system and additive of the claimed joint compound as required by instant Claim 20.
However, Hargrove is silent to the use of:
about 50 wt. % to about 98 wt. %, about 65 wt. % to about 93 wt. %, and about 65 wt. % to about 93 wt. % filler of the joint compound on a dry basis of Claims 1, 10, and 11, respectively;
up to about 15 wt. % of a binder of Claim 1;
the amount of 65 to 93 wt. % calcium carbonate of Claim 1;
at least 5 wt. % perlite of Claim 1;
about 0.01 wt. % to about 1.0 wt. %, about 0.025 wt. % to about 0.15 wt. %, about 0.05 wt. % to about 0.10 wt. %, 0.01 wt. % to about 0.25 wt. %, and about 0.025 wt. % to about 0.5 wt. % pH buffer system comprising sodium carbonate and sodium bicarbonate of Claims 1, 10, 11, 17 and 18, respectively;
wherein weight ratio of the water to the dry joint compound components is about 1:6 to about 3:1 of Claim 1and 10, and about 1:3 to about 1:1 of Claims 10-11;
wherein the joint compound has a pH of 9.5-11 for 120 days or more at 75˚F (23.9˚C) in a sealed container of Claim 1, and wherein the joint compound has a pH of 9.5-10.5 of Claim 2; and
wherein the pH buffer system has a 4.7-5.2:1 weight ratio of sodium carbonate:sodium bicarbonate on a hydrate basis of Claim 22.
Regarding the pH range, Hargrove also teaches that the joint compound composition preferably has a pH of at least about 8.0 [Paragraph 00103] which overlaps with the claimed pH of 9.5-11 of Claim 1, pH of 9.5-10.5 of Claim 2, and pH of 9.9-10.5 of Claim 16. Regarding the binder amount, Hargrove teaches 3-90 wt.% binder [Abstract; Paragraph 0009] which overlaps the claimed binder amount of up to about 15 wt. % of Claim 1. Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicants has been held to be a prima facie case of obviousness. See MPEP section 2144.05.
Regarding the amount of filler, Hargrove teaches the use of filler such as calcium carbonate and kaolin clay [Paragraph 0009], corresponding to the claimed filler of Claims 1, 10-12, 15 and 20, to tailor the joint compound for the subjective feel desired by the ender user [Paragraph 00103]. Podlas further teaches a joint compound formulation [Table 1 and Abstract], comprising:
50-65 wt. % calcium carbonate [Column 4, Lines 37-42], which touches 65 to 93 wt. % calcium carbonate of Claim 1;
0 - 3.2 wt. % attapulgite clay [Table 1]; and
0-8 wt. % perlite [Table 1], which overlaps with at least 5 wt. % perlite of claim 1,
totaling 80-100 wt. % total filler of the joint compound which are inclusive of the claimed about 50 wt. % to about 93wt. % and about 65 wt. % to about 93 wt. % filler of the joint compound on a dry basis of Claims 1, 10, and 11, respectively.
Podlas also teaches that these fillers are an important ingredient that serve to add body to the joint compound, making the compound more economical [Description; Column 4, Lines 25-29]. Thus, it would have been obvious to one of ordinary skill in the art to add the claimed amounts of filler suggested by Podlas in the joint compound of Hargrove for the purposes of obtaining joint compounds that are more economical.
Regarding the amount of calcium carbonate, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Podlas for the amount of calcium carbonate (50-65 wt. %) overlaps the instantly claimed range (65-93 wt. %) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding the pH buffer system recited in claims 1, 10-11, 17-18 and 22: Podlas teaches that, if necessary, a pH modifier including pH buffering salts, corresponding to the pH buffering system of Claims 1, 10, 11, 17-18, and 22, may also be added to increase the alkalinity of the composition [Description; Column 4, Lines 36-49]. In other words, the amount of pH buffering salts added is a known results-effective variable, i.e., affecting the alkalinity properties of the final product. However, Podlas does not specify the pH buffer system as comprising sodium carbonate and sodium bicarbonate.
Nevertheless, Johnstone et al. teach the addition of pH buffering salts including a strong base and a weak acid such as sodium carbonate and sodium bicarbonate to strengthen the final composition [Column 1, Lines 5-10 and Column 4, Lines 50-65]. Thus, it would have been obvious to one of ordinary skill in the art to add optimum or workable amounts of the claimed sodium carbonate and sodium bicarbonate as suggested by Podlas and Johnstone et al., corresponding to the claimed weight ratio, in the joint compound of Hargrove for the purposes of increasing its alkalinity and obtaining benefits including high strength. See also MPEP section 2144.05, IIB.
Regarding the weight ratio of the water to the dry joint compound components recited in the instant Claims 1, 10 and 11, as mentioned above, Hargrove teaches the claimed amounts of binder, thickener, and additive (corresponding to the claimed joint compound components). However, Hargrove is silent to the claimed particular amounts of filler and pH buffer system (corresponding to the claimed joint compound components), and water content. Nevertheless, Podlas teaches employing 49 – 83.2 wt. % total filler, pH buffering salts, and 30-42 wt. % water to obtain joint compounds that are more economical and have increased alkalinity [Description; Column 4, Lines 25-29, Lines 36-49]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the claimed amounts of filler and pH buffering salts (corresponding to the claimed joint compound components) and water content as suggested by Podlas to the joint compound of Hargrove for making the same more economical and increasing its alkalinity. Since the collective teachings of Hargrove and Podlas suggest the claimed joint compound components and amounts, the collective teachings would also suggest the claimed joint compound component amounts and water content (corresponding to the claimed weight ratio) for the purpose of preparing a more economical joint compound with increased alkalinity.
Alternatively, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to employ optimally or workable amounts of the claimed joint compound components and water content, corresponding to the claimed weight ratio, in the joint compound composition, with a reasonable expectation of successfully formulating a joint compound with low shrinkage levels while also exhibiting good compressive strength and flexural strength as suggested by Hargrove and Podlas. See MPEP section 2144.05, IIB.
Regarding the pH of Claim 1: As mentioned above, Hargrove teaches that the joint compound composition preferably has a pH of at least about 8.0. Moreover, since the joint compound suggested by Hargrove, Podlas, and Johnstone et al. are substantially identical or identical to those claimed, there is a reasonable expectation that the joint composition suggested by Hargrove, Podlas, and Johnstone would also be capable of having a pH of 9.5-11 for 120 days or more at 75°F (23.9°C) in a sealed container as required by the claims. The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP sections 2145 and 2113.01.
Regarding the biocide in Claims 14 and 21: Hargrove teaches the use of MERGAL 174TM corresponding to the claimed biocide2 in a joint compound [Table 2; Example 1] corresponding to the claimed additive. Hargrove further teaches the use of 0-3 wt. % biocide in the joint compound [Paragraph 00107], which overlaps with the claimed up to 0.1 wt. % biocide of Claim 14 and up to 10 wt. % biocide of Claim 21. Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicants has been held to be a prima facie case of obviousness. See MPEP section 2144.05.
Regarding Claim 23, however, Hargrove does not teach wherein the filler comprising 75 to 93 wt. % calcium carbonate of the joint compound on a dry basis.
Nevertheless, Johnstone teaches calcium carbonate is present in at least 2% by dry weight [Claims 9, 23], which overlaps with 75 to 93 wt. % calcium carbonate of Claim 23. Johnstone further teaches greater amounts of calcium carbonate may be used because it serves as both a buffer and a filler [Column 4, Lines 64-66].
Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art (> 2 wt. %) and the range claimed by the applicants (75-93 wt. %) has been held to be a prima facie case of obviousness. See MPEP section 2144.05. Furthermore, it would have been obvious to one of ordinary skill in the art to add the amount of the claimed calcium carbonate as suggested by Johnstone to the joint compound of Hargrove for the purpose of using it as a buffer and a filler.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hargrove et al. (WO 2016/200677; hereafter as “Hargrove”) in view of Podlas et al. (US 7,108,744; hereafter as “Podlas”) and Johnstone et al. (US 4,853,085; cited in the IDS filed on 12/15/2023; hereafter as “Johnstone”) as applied to the Claims 1-2, 6-7, 9-12, 14, and 16-23 above, and further in view of Kurp (US 6,531,528 B1; hereafter as “Kurp”).
The disclosures with respect to Hargrove, Johnstone and Podlas mentioned above are incorporated here by reference.
Hargrove teaches a latex-based joint compound [Paragraph 00104], corresponding to wherein the binder comprises latex.
However, Hargrove does not explicitly teach that its latex binder is alkali sensitive as required by the claim. According to the present specification, the claimed “alkali sensitive” is defined as a component that requires an alkaline pH (i.e., pH above 7) to function optimally for its intended purpose [Paragraph 0010].
Nevertheless, Kurp, like Hargrove and applicants, teaches the use of latex binder for joint compounds (see Col. 1, lines 20-25 and Col. 8, lines 35-40 of Kurp). Kurp further teaches that when an amine biocide is incorporated into the latex polymer, this results in a high pH latex polymer, i.e., pH of 11.38, and ultimately there is improvement in color stability (Col. 7, lines 5-30).
In other words, since the latex-based binder of Kurp is more stable in an alkaline environment, it also optimally functions at an alkaline pH and is also therefore, alkali sensitive.
Given the above teachings, it would have bene obvious to one of ordinary skill in the art to employ the claimed alkali sensitive latex binder taught by Kurp as the latex binder in the joint compound suggested by Hargrove, Podlas, and Johnstone, with a reasonable expectation of successfully obtaining improvement in color stability.
Response to Arguments
Applicant's arguments filed June 11, 2026 have been fully considered but they are not persuasive.
Applicant argues on Pages 2-3 of Remarks filed on 06/11/2026 that Hargrove does not teach a pH buffer system of sodium carbonate and sodium bicarbonate, nor a joint compound with a stable pH for 120 days or more at 75˚F.
However, while Hargrove does not teach a pH buffer system of sodium carbonate and sodium bicarbonate, Podlas is relied upon to teach a pH modifier including pH buffering salts, corresponding to the claimed pH buffering system may also be added to increase the alkalinity of the composition [Description; Column 4, Lines 36-49]. Furthermore, Johnstone teaches the addition of pH buffering salts including a strong base and a weak acid such as sodium carbonate and sodium bicarbonate to improve composition strength [Column 1, Lines 5-10 and Column 4, Lines 50-65]. Thus, it would have been obvious to one of ordinary skill in the art to add the claimed sodium carbonate and sodium bicarbonate as suggested by Podlas and Johnstone in the joint compound of Hargrove for the purposes of increasing its alkalinity and improving material strength. Hargrove also motivates the modification of the joint compound preferably has a pH of at least about 8.0. See also MPEP section 2144.05, IIB. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Moreover, since the joint compound suggested by Hargrove, Podlas, and Johnstone are substantially identical or identical to those claimed, there is a reasonable expectation that the joint composition suggested by Hargrove, Podlas, and Johnstone would also be capable of having a pH of 9.5-11 for 120 days or more at 75°F (23.9°C) in a sealed container as required by the claims. The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP sections 2145 and 2113.01. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 2-3 of Remarks filed on 06/11/2026 that Hargrove teaches that the compositions should preferably be free of Applicant’s claimed fillers.
However, while one of Hargrove’s claims recites the composition may be substantially free of fillers [Claim 2], Hargrove teaches other embodiments that include fillers [Claim 1] such as those claimed in the present application. “The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives." In this case, Hargrove’s independent Claim 1 does not absorb the limitations of its dependent claims (such as the requirement to exclude fillers of Hargrove’s Claim 2). As noted in applicant’s highlighted excerpts of Hargrove [see instant Remarks submitted on 06/11/2026, Page 2], Hargrove discloses “in some embodiments, the joint composition can be desirably be substantially free of raw materials such as bulk filler…” [Hargrove, Paragraph 0082] (emphasis added). The highlighted excerpt of Hargrove only describes some embodiments – not all embodiments. In this case, Hargrove also teaches embodiments that do contain filler [see Hargrove, Claim 1]. Applicant even further discusses fillers taught by Hargrove in Page 3 of applicant’s Remarks, such as, but not limited to, hollow spheres. Hargrove also teaches that calcium carbonate and kaolin clay can be added to tailor the joint compound subjective feel desired by the ender user during the application process [Paragraph 0084]. This indicates that Hargrove not only teaches the use of filler but offers motivation to use the filler as well. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 2-3 of Remarks filed on 06/11/2026 that one of ordinary skill would not have any reason to require Applicant’s claimed filler with calcium carbonate and perlite and expect preferred results.
However, it is unclear what preferred results the applicant is referring to. As noted above, Hargrove teaches that calcium carbonate can be added to tailor the joint compound subjective feel desired by the ender user during the application process [Paragraph 0084] which could be a preferred result by one of ordinary skill. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 3 of Remarks filed on 06/11/2026 that Hargrove’s fillers are hollow spheres which behave very differently from Applicant’s claimed fillers.
However, even if the hollow spheres of Hargrove’s filler behave very differently from Applicant’s claimed fillers, they are nonetheless fillers which teach the claimed fillers. Furthermore, while Hargrove’s exemplary embodiments comprise “functional filler” such as soda-lime borosilicate glass bubbles, they also comprise calcium carbonate and kaolin clay [Tables 6-8] which correspond to the claimed fillers. The prior art need not teach the claimed limitations in a preferred embodiment, in order to render the claimed limitations obvious. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 3-4 of Remarks filed on 06/11/2026 that Hargrove does not teach a pH buffer system comprising sodium carbonate and sodium bicarbonate, at about 0.01 wt. % to about 1.0 wt. % of the joint compound – this is not remedied by Podlas.
However, Podlas teaches that, if necessary, a pH modifier including pH buffering salts may also be added to increase the alkalinity of the composition [Description; Column 4, Lines 36-49]. In other words, the amount of pH buffering salts added is a known results-effective variable, i.e., affecting the alkalinity properties of the final product. Furthermore, Johnstone teaches the addition of pH buffering salts including a strong base and a weak acid such as sodium carbonate and sodium bicarbonate, which strengthens the final joint composition [Column 1, Lines 5-10 and Column 4, Lines 50-65]. Thus, it would have been obvious to one of ordinary skill in the art to add optimum or workable amounts of the claimed sodium carbonate and sodium bicarbonate as suggested by Podlas and Johnstone in the joint compound of Hargrove for the purposes of increasing its alkalinity and improving joint compound strength. See also MPEP section 2144.05, IIB. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 3 of Remarks filed on 06/11/2026 that Podlas only teaches a pH modifier when the filler (i.e. calcium carbonate), which is the primary pH adjustment mechanism, is not sufficient, which is different from the claimed invention.
However, Podlas nevertheless teaches the addition of a pH modifier. The prior art need not have the same motivation as the claimed invention in order to render the invention obvious. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 3 of Remarks filed on 06/11/2026 there is no teaching in Podlas that increase the amount of calcium carbonate over its range would be beneficial for any reason
However, Podlas also teaches 50-65 wt. % calcium carbonate overlaps the instantly claimed range (65-93 wt. %) and is therefore considered to establish a prima facie case of obviousness. Furthermore, Johnstone also teaches a broader range of calcium carbonate of at least 2% by dry weight [Claims 9, 23]. Johnstone further teaches greater amounts of calcium carbonate may be used because it serves as both a buffer and a filler [Column 4, Lines 64-66] which would motivate one of ordinary skill to use the teachings of Johnstone to modify the joint compound of Hargrove, Podlas, and Johnstone. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 3-4 of Remarks filed on 06/11/2026 that Podlas only teaches a pH modifier to increase alkalinity, Podlas separately teaches buffering salts for buffering.
However, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. The prior art is not required to teach the claimed limitations for the same purpose as the instant invention in order to render the invention obvious. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 3-4 of the Remarks submitted on 06/11/2026, that the pH modifier and buffering salts of Podlas is not a pH buffer system of sodium carbonate and sodium bicarbonate, which results in a pH stable joint compound over at least 120 days.
However, Podlas is not relied upon to teach the claimed sodium carbonate and sodium bicarbonate, Johnstone is [Column 1, Lines 5-10 and Column 4, Lines 50-65]. More specifically, Johnstone teaches “buffer material may be … salts of a cation of a strong base and an anion of a weak acid… such as sodium carbonate and sodium bicarbonate.” One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 4 of the Remarks submitted on 06/11/2026, that the claimed invention shows a surprising functional result.
However, it would be obvious to one of ordinary skill that the main purpose of pH buffers is to buffer pH, that is to stabilize the pH over time. Thus, it is not unexpected that a pH buffer confers pH stability over time. Furthermore, it would also be obvious that things that do not function well in acidic conditions, would function better in alkaline conditions. In fact, Hargrove specifically teaches that rheological modifiers in joint compounds perform best under alkaline conditions and is thus advisable to give the final joint compound a pH of at least about 8.0 [¶ 0106]. This teaching from Hargrove discloses the same information that the Applicant proports are the unexpected results of the instant invention. Hargrove teaches the same problem in the same field of art and solves said problem with the same motivation and the same solution. Thus, applicant’s argument is not persuasive.
Further, in review of the data presented in the instant specification, the data has been considered but not found to be convincing. Table 4 lists the pH of joint compounds, DCpH1 (control – no buffer system), DCpH2, DCpH3, DCpH4, and DCpH5 (control – only lime) over the course of 201 days. As the applicant notes, each of the 5 examples has the same amount of each claimed component as shown in Table 2. However, the instant application claims broad amount ranges of each of the pH buffer system, filler, binders, polymeric thickeners, additives, and water content. The presented data showcase singular amounts of each component, e.g. Claim 1 claims the broad range of 65-93 wt. % calcium carbonate, but all 5 examples comprise 75.7 wt. % calcium carbonate on a dry basis. There is no evidence on the record that all claimed fillers will perform the same way as the specific fillers that were tested. Additionally, there is no evidence that all fillers within the broad range of 50 to 93 wt. % would perform the same way as the one singular amount that was tested. The data is not considerate in scope with the claimed ranges. Applicant is advised to provide several data points inside the claimed range and several data points outside the claimed range to demonstrate their claimed invention confers unexpected results. Thus, applicant’s argument is not persuasive.
Applicant argues on Pages 6-7 of the Remarks filed on 06/11/2026 that none of the cited references have the same formulation of the same components and therefore one of ordinary skill in the art would not know whether the prior art compositions would have the surprising pH stability that the claimed invention has.
However, as noted above, Hargrove specifically teaches that rheological modifiers in joint compounds perform best under alkaline conditions and is thus, advisable to give the final joint compound a pH of at least about 8.0 [¶ 0106] which discloses the same information that the Applicant proports are the unexpected results of the instant invention. Furthermore, even if Hargrove were silent about the pH stability, which they are not, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 7 of the Remarks filed on 06/11/2026 that nothing in the cited art teaches or suggests this claimed weight ratio of Claim 22.
However, Johnstone teaches the addition of pH buffering salts including a strong base and a weak acid such as sodium carbonate and sodium bicarbonate to improve the material strength [Column 1, Lines 5-10 and Column 4, Lines 50-65]. Thus, it would have been obvious to one of ordinary skill in the art to add optimum or workable amounts of the claimed sodium carbonate and sodium bicarbonate as suggested by Podlas and Johnstone in the joint compound of Hargrove for the purposes of increasing its alkalinity and obtaining benefits including high strength. See also MPEP section 2144.05, IIB. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 7 of the Remarks filed on 06/11/2026 that nothing in the cited are teaches or suggests the surprising results of the claimed invention.
However, as noted above, it would be obvious to one of ordinary skill that the main purpose of pH buffers, including buffers comprising the claimed sodium carbonate and sodium bicarbonate, is to buffer pH, that is to stabilize the pH over time. Thus, it is not unexpected that a pH buffer confers pH stability over time, and applicant’s argument is not persuasive.
Applicant argues on Page 7 of the Remarks filed on 06/11/2026 that Claim 23 has no overlap with Podlas’ range of calcium carbonate in the filler.
However, while Podlas does not teach the claimed range of calcium carbonate, Johnstone teaches calcium carbonate is present in at least 2% by dry weight [Claims 9, 23], which encompasses 75 to 93 wt. % Calcium carbonate of Claim 23. Johnstone further teaches greater amounts of calcium carbonate may be used because it serves as both a buffer and a filler [Column 4, Lines 64-66] which would motivate one of ordinary skill to use the amounts of calcium carbonate taught by Johnston to the joint compound of Hargrove, Podlas, and Johnstone. Thus, applicant’s argument is not persuasive.
Applicant argues on Page 7 of the Remarks filed on 06/11/2026 that regarding Claim 8, Voronova does not remedy the deficiencies of the other cited art.
Since the Voronova reference is discontinued, any arguments with respect to
the Voronova reference are no longer applicable and thus, rendered moot at this time.
Applicant argues on Page 8 of the Remarks filed on 06/11/2026 that Armasco does not remedy the deficiencies of the other cited art, and there is an unexpected result that further supports the nonobviousness of the invention.
Since the Armasco reference is discontinued, any arguments with respect to the Armasco reference are no longer applicable and thus, rendered moot at this time.
Conclusion
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/D. L./Examiner, Art Unit 1764
/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 For the purposes of examination, the term “PEG 750” of Claim 1 is interpreted to mean polyethylene glycol having an average molecular weight of 750 g/mol as evidenced by “DPPE-PEG750.” MedchemExpress.com, 2021, www.medchemexpress.com/16-0-peg750-pe.html. Accessed 26 June 2026.
2 According to Swindell (NPL), MERGAL 174TM is known to be a biocide (see attachment).
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