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 .
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 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.
Claims 1, 3, 5, 7-14, 16, 18-22 are pending. Applicant’s previous election of Groups I and II, claims 1, 3, 5, 7-12, 18-22 still applies and claims 13-14, 16 remain withdrawn. Because Applicant has indicated that Group I and II are obvious variants, if the invention of Group I is found to be obvious, the invention of Group II will also be obvious based on Applicant’s admission.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/20/25 has been entered.
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114.
Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b).
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 1, 3, 5, 7-9, 10-12, 18, 20-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cashin et al. (U.S. 2009/0042471) in view of Chen et al. (U.S. 2012/0168054) in view of Currier et al. (U.S. 2009/0208714).
Regarding claims 1, 3, 5, 7-9, 10-12, 18, 20-22, Cashin teaches a coated non-woven mat that may be applied to gypsum and/or foam boards ([0066]), wherein the coating may include an overlapping amount (e.g., over 50wt%) of pore forming filler, e.g., calcium carbonate, leaving a remaining amount of binder (i.e., implicitly less than 50wt% if the total amount of ingredients sums to 100%) that also overlaps the claimed range, and with the resulting non-woven mat having an overlapping pre-coated basis weight (as in claim 7, [0049]), an overlapping coated basis weight (as in claim 8, [0051], if the coating weight is added to the uncoated weight), an overlapping Gurley porosity and hydrostatic head (as in claims 1, 6, 10, [0030], 55cm water is approximately 54 mbar, which is close enough to the 50 mbar claimed upper endpoint to render that value obvious, see below).
The instantly claimed amount of hydrostatic head and that taught by Cashin are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of 54 mbar disclosed by Cashin and the 50 mbar amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of hydrostatic head it therefore would have been obvious to one of ordinary skill in the art that the amount of hydrostatic disclosed in the present claims is but an obvious variant of the amounts disclosed in Cashin and thereby one of ordinary skill in the art would have arrived at the claimed invention.
The coating penetrates into the non-woven web as claimed ([0057]). The binder disclosed in Cashin includes polyvinyl alcohol, acrylic resins, and/or thermoplastics (also materials disclosed in the present application as binder resins) and therefore “cures” (i.e., solidifies/hardens) in the same way as in the present application. The coating layer is disclosed as being pigmented, such that the L value in the Lab color space of claim 11 (i.e., the particular color of the coating) is considered obvious as a mere aesthetic design choice ([0056]).
As indicated above, gypsum boards having the coated non-woven web is disclosed, as in claims 12 and 20, and foam boards are also disclosed, but not specifically polyisocyanurate foam boards, as in claims 21 and 22. However, given that Applicant indicated claims 12, 20-22 are obvious variants of the intermediate product of claims 1 and 18, these claims are obvious based on this admission and based on the obviousness of claims 1 and 18 as set forth above.
Cashin does not disclose the claimed performance modifier or loss on ignition property, however, Chen is also directed to non-woven (i.e., blown) fiber mats provided with a binder resin coating for use in construction boards and teaches that glass fibers may be used to form the mat in order to provide insulating properties and resiliency and teaches that polymethylhydrogen siloxane, as in claim 3, may be added to the binder composition in an amount overlapping claim 5 so that the coated fiber mat has better bonding when an adhesive is applied/allows for less adhesive to be applied and/or has stain repellent properties (see abstract, [0041]-[0043], [0053], [0059], [0063], [0070]). Thus, it would have been obvious to have used glass fibers as the non-woven fibers in Cashin as taught by Chen in order to provide insulating properties and resiliency. This would result in the glass fibers not being lost on ignition (only the binder would be lost during ignition, such that the amount of binder is proportional to the loss of ignition property, see Chen [0041]) such that the amount of binder being applied to the fibers in modified Cashin overlaps the range of claim 9 (based on the weight ratio of binder to fibers in modified Cashin, see above).
Furthermore, it would have been obvious to have added the polymethylhydrogen siloxane from Chen to the binder of Cashin in order to improve adhesion properties and stain repellent properties. Adhesive properties would be especially compelling because the cited references teach that adhesive may be used to attach decorative facers to the final construction board (see [0005] and [0057] of Chen) and also because Cashin teaches that the coated non-woven mat may be adhered to other layers within the board (i.e., adhered to the impact resistant layer, [0043], [0060]-[0061] of Cashin, and/or to the gypsum/foam board substrate, [0066] of Cashin).
Further to the above, although applying the coating to both sides of the non-woven layer is not disclosed, given that Chen in modified Cashin teaches that the siloxane additive promotes adhesion to the coated surface of the web, and given that Cashin seeks to adhere the inner surface of the web to the impact resistant layer, it would have been obvious to have provided the coating on both sides of the non-woven web (both the outer side, which would be adhered to facing materials, and the inner side, which would be adhered to the impact resistant layer) in order to promote adhesion to both sides of the non-woven layer.
Applying the coating to both sides of the non-woven layer is further obvious in view of Currier, which is also directed to pre-coated non-woven layers for use in construction boards (see abstract), and teaches that the coating eliminates fiber disengagement and prevents itching during handling of the fibrous mats ([0092]) such that it would have been obvious to have applied the coating to both sides (as in claim 19) of the non-woven mat in modified Cashin, as taught by Currier, to eliminated fiber disengagement and prevent itching on both sides of the non-woven mat during the handling/assembly process of the non-woven mat with the other layers of the overall article (i.e., the facing layers, the impact resistant layer, and/or the gypsum/foam board layer).
As explained above, the coating applied to the non-woven mat has amounts that overlap the ranges of claim 19, when the same coating is applied to both sides of the non-woven mat.
Response to Arguments
Applicant’s remarks are not persuasive.
Applicant argues that the 50 mbar endpoint is not taught by the cited references and there is no motivation to arrive at that value. However, Applicant has not provided any substantive arguments against the rationale set forth in the previous office action (i.e., for previous claim 6) explaining that the claimed endpoint is prima facie obvious in view of the prior art.
Applicant argues that it would not be obvious to use the glass fiber and reactive polysiloxane from Chen in the binder of Cashin because Chen is not a “high filler” composition. However, Chen is more than sufficiently analogous to Cashin and the present claims for prima facie obviousness, as explained in the office action. Furthermore, nothing in Chen indicates that “high filler” content is prohibited or undesired. Filler is also suggested in Chen, just without any amount. Nothing in Chen would indicate that filler would prevent the benefits disclosed by Chen for the glass fiber and the reactive polysiloxane.
Applicant further seems to argue that the combination is non-obvious because the coating in Cashin lacks fibers, but is ignoring the penetration in Cashin as set forth in the previous rejection ([0057]), indicating that the binder in Cashin “is forced into intimate engagement” with the fibers (similar to how the binder in Chen is applied to the fiber mat). Moreover, the benefits in Chen related to the reactive polysiloxane are related to improved adhesion and stain repellent properties of the coating, neither of which are benefits that depend on the fibers in the coating (although Cashin has this anyway).
Conclusion
All claims are drawn to the same invention claimed in the application prior to the entry of the submission under 37 CFR 1.114 and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 extension fee 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.
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
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