DETAILED ACTION
This is an Office action based on application number 17/731,331 filed 28 April 2022, which claims priority to US Provisional Application No. 63/182,043 filed 30 April 2021. Claims 33-58 are pending. Claims 1-32 are canceled. Claim 56 is withdrawn from consideration.
Amendments to the claims, filed 28 October 2025, have been entered into the above-identified application.
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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries 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.
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.
Claims 33-39, 41-43, 45, and 47-55 rejected under 35 U.S.C. 103 as being unpatentable over Tinianov et al. (US Patent Application Publication No. US 2008/0264721 A1) (Tinianov) in view of Dimitrakopoulos et al. (US Patent Application Publication No. US 2019/0093354 A1) (Dimitrakopoulos) and as evidenced by The Engineering ToolBox – Young’s Modulus, Tensile Strength and Yield Strength Values for some Materials (ToolBox).
Reference is made to FIG. 3 of Tinianov, reproduced below:
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Regarding instant claims 33:
Tinianov discloses a laminated panel <300> comprising:
exterior gypsum layers <301, 303>;
a first and additional constraining layer <302, 306>; and
a glue layer <305> (paragraph [0048]).
Said gypsum layers <301, 303> read on the claimed first and second gypsum core layers sandwiching a laminate layer (i.e., the combination of layers <302, 305, 306>), wherein constraining layers <302, 306> read on the claimed outer laminate layers sandwiching layer the glue layer <305>, which reads on the claimed inner laminate layer.
Dimitrakopoulos provides evidence that gypsum is produced by hardening a gypsum slurry (paragraph [0119]).
Said gypsum layers <301, 303> read on the claimed first and second gypsum core layers sandwiching a laminate layer (i.e., the combination of layers <302, 305, 306>), wherein constraining layers <302, 306> read on the claimed outer laminate layers sandwiching layer the glue layer <305>, which reads on the claimed inner laminate layer.
Though glue layer <307> is between constraining layer <306> and gypsum layer <303>, Tinianov teaches that in encompassed embodiments, the adhesive is applied in a certain pattern to some or all of the interior surfaces of the two outer layers (paragraph [0010]). Therefore, there must exist embodiments encompassed by the scope of Tinianov wherein at least a portion of the of the outer laminate layers <302, 306> are adjacent to and contact the first or second gypsum core layers.
Tinianov further discloses that constraining layers are made up of materials inclusive of steel, wood, or another material suitable for the application (paragraph [0044]).
Tinianov further discloses that the glue layer is made up of a material inclusive of Quiet-Glue® adhesive, which is a viscoelastic material (paragraph [0010]).
ToolBox provides evidence that materials that fall under the scope of steel have a modulus of 180 GPa and 200 GPa, and that materials under wood have a modulus of 11 GPa and 13 GPa.
Tinianov does not explicitly disclose the relationship between the constraining layers and the inner glue layer. Tinianov does not disclose the claimed facing materials.
However, Dimitrakopoulos discloses plaster boards comprising first and second layers of a plaster material adhered together by a viscoelastic polymer (Abstract). Said viscoelastic polymers provide sound and vibration functionality to the plaster board (paragraph [0069]). Dimitrakopoulos further discloses that in various different embodiments, the viscoelastic polymer is in the form of a glue or resin having a modulus of 10 kPa to 100 MPa (paragraph [0075]).
Before the effective filing date of the claimed invention, it would have been obvious to use any viscoelastic material within the scope of Dimitrakopoulos to replace the specific viscoelastic glue of Tinianov. The motivation for doing so would have been to have a broader selection of glues to choose from that provide sound and vibration functionality to the laminated panel. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Given the materials of Tinianov and Dimitrakopoulos having the given cited modulus values, there exist embodiments encompassed by the scope of the prior art combination that meet the requisite relationship required by the claim.
As to the claimed facing materials, reference is made to FIG. 1 of Dimitrakopoulos, reproduced below:
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FIG. 1 of Dimitrakopoulos discloses that a plaster board <101> may comprise liners <202> and <204> (paragraph [0067]), which are construed to meet the claimed facers.
Dimitrakopoulos discloses that the second liner is only included in certain embodiments (paragraph [0040]), i.e., the second liner is optional and may be omitted in embodiments encompassed by the prior art reference.
Dimitrakopoulos teaches that the liners are known in the art and typically used to construct plaster boards (paragraph [0003]).
Before the filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the facing material of Dimitrakopoulos on the exterior surface of one or both of the exterior gypsum layers of Tinianov. The motivation for doing so would have been that liners are known components of gypsum/plaster boards utilized in their production. Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
As to the limitations “wherein a second gypsum slurry is applied to the laminate to form the second gypsum core layer” recited by claim 33 and “wherein the laminate layer is applied to the first gypsum slurry” recited by claim 57, said limitations are product-by-process limitations, i.e., both limitations seek to limit the claim to a process wherein the layers are joined to a gypsum layer still in its slurry form.
While the prior art does not disclose such a joining method, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
In the instant case, the construction of the prior art combination meets the claimed structure, and an unobvious structural difference resulting in a method by which the product is made is not readily apparent.
Therefore, it would have been obvious to combine Dimitrakopoulos with Tinianov to obtain the invention as specified by the instant claim.
Regarding instant claim 34:
Tinianov further discloses that constraining layers are made up of materials inclusive of steel or another material suitable for the application (paragraph [0044]).
ToolBox provides evidence that materials that fall under the scope of steel have a modulus of 180 GPa and 200 GPa.
Regarding instant claim 35:
Tinianov further discloses that constraining layers are made up of materials inclusive of wood or another material suitable for the application (paragraph [0044]).
ToolBox provides evidence that materials under the scope of wood have a modulus of 11 GPa and 13 GPa.
Regarding instant claim 36:
Dimitrakopoulos further discloses that in various different embodiments, the viscoelastic polymer is in the form of a glue or resin having a modulus of 10 kPa to 100 MPa (paragraph [0075]).
Regarding instant claim 37:
Tinianov further discloses that constraining layers are made up of materials inclusive of steel, wood, or another material suitable for the application (paragraph [0044]).
ToolBox provides evidence that materials that fall under the scope of steel have a modulus of 180 GPa and 200 GPa, and that materials under wood have a modulus of 11 GPa and 13 GPa.
Dimitrakopoulos further discloses that in various different embodiments, the viscoelastic polymer is in the form of a glue or resin having a modulus of 10 kPa to 100 MPa (paragraph [0075]).
Given the modulus values of the constraining layers and the viscoelastic polymer of the prior art combination a range of the ratios between the modulus of the inner laminate layer and at least one of the two outer layers that includes/overlaps the range recited by the claims is obtained; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Regarding instant claims 38-39:
Tinianov further discloses that constraining layers are made up of materials inclusive of steel (paragraph [0044]).
Regarding instant claim 41:
Tinianov further discloses that constraining layers are made up of wood (paragraph [0044]). Wood is construed to be a cellulosic material.
Regarding instant claim 42:
Dimitrakopoulos discloses plaster boards comprising first and second layers of a plaster material adhered together by a viscoelastic polymer (Abstract). Said viscoelastic polymer is construed to fall under the broad scope of a polymer selected from a thermoplastic polymer or thermoset polymer of the instant claim.
Regarding instant claim 43:
Dimitrakopoulos further discloses that the viscoelastic polymer is inclusive of acrylic polymers (paragraph [0073]).
Regarding instant claim 45:
Dimitrakopoulos further discloses that in various different embodiments, the viscoelastic polymer is in the form of a glue (paragraph [0075]).
Regarding instant claims 47-48:
Tinianov further discloses that the glue layer is made up of a material inclusive of Quiet-Glue® adhesive, which is a viscoelastic material (paragraph [0010]).
At paragraphs [0027-0028] of the Specification, Applicant discloses that a suitable polymer for the formation of the inner laminate layer includes QuietGlueTM.
While Tinianov does not explicitly disclose the claimed longitudinal shear absorption coefficient or the longitudinal shear velocity of the polymer, one of ordinary skill in the art would readily conclude that since Tinianov discloses the same Quiet-Glue®/QuietGlueTM adhesive as desired by Applicant the Quiet-Glue® composition must have the same desired properties inclusive of the claimed longitudinal shear absorption coefficient or the longitudinal shear velocity of the polymer. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
Regarding instant claim 49:
Dimitrakopoulos further discloses that the viscoelastic polymer can be foamed to provide reduced mass and reduced sound transmission to the plaster board (paragraph [0069]).
Regarding instant claim 50:
Tinianov broadly discloses that the laminate structure comprises at least one internal constraining layer (Claim 49; emphasis added). Tinianov teaches that said constraining layers improve sound attenuation and fire resistance characteristics of the laminated panel (paragraph [0044]).
One of ordinary skill in the art would envision that, within the scope of Tinianov, an embodiment wherein additional constraining layers are interposed on the interior surfaces of constraining layers <302> and <306> of the laminate of Fig. 3 in order to provide further beneficial sound attenuation and fire resistance characteristics. Such additional constraining layers meet the claimed two intermediate laminate layers that are sandwiched by the two outer laminate layers.
Regarding instant claim 51:
Reference is made to Fig. 5A of Tinianov, reproduced below:
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Tinianov discloses a wall assembly comprising the inventive laminated panel <510> and a layer of thermal insulation <512> (paragraph [0050]). Said layer of thermal insulation is construed to read on the claimed additional laminate layer provided on the face of the gypsum core.
Regarding instant claims 52-55:
Tinianov teaches that a materials Sound Transmission Class (STC) is measured by the ASTM E90 method, and that the method measures sound transmission loss (paragraph [0006]).
Tinianov further discloses that STC of the laminated panel is dependent on the combination of different laminate types and thicknesses (paragraph [0027]).
Tinianov further teaches that modern construction criteria desire an increased STC value of greater than 50 to obtain reduced sound transmission between adjacent rooms (paragraph [0001]).
Since the instant specification is silent to unexpected results, the specific amount of STC value of the laminate panels not considered to confer patentability to the claims. As the transmission of sound between adjacent rooms is a variable that can be modified, among others, by adjusting STC value of the wall panels through the selection of the composition and thickness of the materials that make the wall panels, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the STC value of the laminated panel in the prior art combination to obtain the desired sound transmission (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Tinianov in view of Dimitrakopoulos and as evidenced by ToolBox as applied to claim 33 above, and further in view of Sugimoto et al. (US Patent Application Publication No. US 2013/0264147 A1) (Sugimoto).
Regarding instant claim 40:
Tinianov in view of Dimitrakopoulos discloses the laminated panel comprising constraining layers made up of materials inclusive of steel, wood, or another material suitable for the application.
Tinianov in view of Dimitrakopoulos does not explicitly disclose that the constraining layer is made up of aluminum or an alloy thereof.
However, Sugimoto discloses a sound absorption panel comprising a foam laminated onto a metal sheet inclusive of an aluminum alloy sheet (Claims 1 and 5).
Sugimoto further discloses that the aluminum alloy sheet may be replaced by a metal sheet shut as iron or steel (paragraph [0030]); therefore, Sugimoto establishes that the aluminum alloy sheet is functionally equivalent and interchangeable with steel sheets used to produce a sound absorption panel.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to replace the steel constraining layer of Tinianov with the aluminum alloy sheet of Sugimoto. The motivation for doing so would have been that an aluminum metal sheet is a functionally equivalent and interchangeable sheet material for the production of a sound absorption panel. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
ToolBox provides evidence that aluminum alloys have an elastic modulus of 70 GPa; therefore, the replacement of the steel constraining layer of Tinianov with an aluminum alloy panel of Sugimoto meets the claimed relationship between the modulus values of the outer and inner laminate layers.
Therefore, it would have been obvious to combine Sugimoto with Tinianov in view of Dimitrakopoulos to obtain the invention as specified by the instant claim.
Claims 44 and 46 rejected under 35 U.S.C. 103 as being unpatentable over Tinianov in view of Dimitrakopoulos as applied to claim 33 above, and further in view of Ray et al. (US Patent Application Publication No. US 2019/0338516 A1) (Ray).
Regarding instant claim 44 and 46:
Tinianov in view of Dimitrakopoulos discloses a laminated panel comprising an inner laminate layer inclusive of a viscoelastic glue.
Tinianov in view of Dimitrakopoulos does not explicitly disclose that the inner laminate layer comprises a rubber or has a specific glass transmission temperature.
However, Ray discloses a layered wallboard comprising a gypsum board an adhesive layer comprising a polymer having a glass transition temperature of -10°C to 30°C (Claim 1).
Ray further teaches that the adhesive is a latex polymer inclusive of acrylics, styrene butadiene, and combinations thereof (Claim 2), wherein a styrene butadiene latex is construed to meet the claimed rubber.
Ray teaches that such adhesives have a balance between tackiness and relaxation time, wherein relaxation time is related to the sound dampening properties of the adhesive layer (paragraph [0078]).
Before the effective filing date, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her to include the styrene butadiene latex adhesive with the acrylic adhesive of Tinianov in view of Dimitrakopoulos and to ensure that the adhesive has a glass transition temperature of -10°C to 30°C. The motivation for doing so would have been so would have been that such adhesives have a balance between tackiness and relaxation time, and that such adhesives are conventionally usable in the in the production of gypsum-containing wall panels.
Therefore, it would have been obvious to combine Ray with Tinianov in view of Dimitrakopoulos to obtain the invention as specified by the instant claims.
Claim 58 is rejected under 35 U.S.C. 103 as being unpatentable over Tinianov in view of Dimitrakopoulos as applied to claim 33 above as applied to claim 33 above, and further in view of Schafer et al. (US Patent No. 5,342,566) (Schafer).
Regarding instant claim 58:
Tinianov in view of Dimitrakopoulos discloses the gypsum board comprising glue layers <301, 303> as cited in the rejection of claim 33, above.
Tinianov in view of Dimitrakopoulos does not explicitly disclose that an adhesive is not used to combine the first gypsum and the at least one outer laminate layer.
Reference is made to FIG. 17 of Schafer, reproduced below:
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In FIG. 17, Schafer illustrates a composite wood substrate and gypsum board comprising a wood substrate <110> and gypsum board overlay <112> securely bonded mechanically or adhesively to the wood substrate <110>.
Before the effective filing date of the claimed invention, it would have been obvious to one of or ordinary skill in the art, having the teachings of the prior art before him or her, to replace the patterned, non-continuous adhesive layer of Tinianov with the mechanical means disclosed by Schafer. The motivation for doing so would have been that Schafer establishes that a mechanical means of securing is equivalent to an adhesive means for bonding a gypsum layer to a wood layer. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Schafer with Tinianov in view of Dimitrakopoulos to obtain the invention as specified by the instant claim.
Claim 57 is rejected under 35 U.S.C. 103 as being unpatentable over Tinianov in view of Dimitrakopoulos and Schafer.
Regarding instant claim 57:
Tinianov discloses a laminated panel <300> comprising:
exterior gypsum layers <301, 303>;
a first and additional constraining layer <302, 306>; and
a glue layer <305> (paragraph [0048]).
Said gypsum layers <301, 303> read on the claimed first and second gypsum core layers sandwiching a laminate layer (i.e., the combination of layers <302, 305, 306>), wherein constraining layers <302, 306> read on the claimed outer laminate layers sandwiching layer the glue layer <305>, which reads on the claimed inner laminate layer.
Dimitrakopoulos provides evidence that gypsum is produced by hardening a gypsum slurry (paragraph [0119]).
Said gypsum layers <301, 303> read on the claimed first and second gypsum core layers sandwiching a laminate layer (i.e., the combination of layers <302, 305, 306>), wherein constraining layers <302, 306> read on the claimed outer laminate layers sandwiching layer the glue layer <305>, which reads on the claimed inner laminate layer.
Though glue layer <307> is between constraining layer <306> and gypsum layer <303>, Tinianov teaches that in encompassed embodiments, the adhesive is applied in a certain pattern to some or all of the interior surfaces of the two outer layers (paragraph [0010]). Therefore, there must exist embodiments encompassed by the scope of Tinianov wherein at least a portion of the of the outer laminate layers <302, 306> are adjacent to and contact the first or second gypsum core layers.
Tinianov further discloses that constraining layers are made up of materials inclusive of steel, wood, or another material suitable for the application (paragraph [0044]).
Tinianov further discloses that the glue layer is made up of a material inclusive of Quiet-Glue® adhesive, which is a viscoelastic material (paragraph [0010]).
ToolBox provides evidence that materials that fall under the scope of steel have a modulus of 180 GPa and 200 GPa, and that materials under wood have a modulus of 11 GPa and 13 GPa.
Tinianov does not explicitly disclose the relationship between the constraining layers and the inner glue layer. Tinianov does not disclose the claimed facing materials. Tinianov does not explicitly disclose that an adhesive is not used to combine the first gypsum and the at least one outer laminate layer.
However, Dimitrakopoulos discloses plaster boards comprising first and second layers of a plaster material adhered together by a viscoelastic polymer (Abstract). Said viscoelastic polymers provide sound and vibration functionality to the plaster board (paragraph [0069]). Dimitrakopoulos further discloses that in various different embodiments, the viscoelastic polymer is in the form of a glue or resin having a modulus of 10 kPa to 100 MPa (paragraph [0075]).
Before the effective filing date of the claimed invention, it would have been obvious to use any viscoelastic material within the scope of Dimitrakopoulos to replace the specific viscoelastic glue of Tinianov. The motivation for doing so would have been to have a broader selection of glues to choose from that provide sound and vibration functionality to the laminated panel. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Given the materials of Tinianov and Dimitrakopoulos having the given cited modulus values, there exist embodiments encompassed by the scope of the prior art combination that meet the requisite relationship required by the claim.
As to the claimed facing materials, reference is made to FIG. 1 of Dimitrakopoulos, reproduced below:
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FIG. 1 of Dimitrakopoulos discloses that a plaster board <101> may comprise liners <202> and <204> (paragraph [0067]), which are construed to meet the claimed facers.
Dimitrakopoulos discloses that the second liner is only included in certain embodiments (paragraph [0040]), i.e., the second liner is optional and may be omitted in embodiments encompassed by the prior art reference.
Dimitrakopoulos teaches that the liners are known in the art and typically used to construct plaster boards (paragraph [0003]).
Before the filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to include the facing material of Dimitrakopoulos on the exterior surface of one or both of the exterior gypsum layers of Tinianov. The motivation for doing so would have been that liners are known components of gypsum/plaster boards utilized in their production. Further, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP § 2143(A).
As to the limitations “wherein a second gypsum slurry is applied to the laminate to form the second gypsum core layer” recited by claim 33 and “wherein the laminate layer is applied to the first gypsum slurry” recited by claim 57, said limitations are product-by-process limitations, i.e., both limitations seek to limit the claim to a process wherein the layers are joined to a gypsum layer still in its slurry form.
While the prior art does not disclose such a joining method, “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP § 2113.
In the instant case, the construction of the prior art combination meets the claimed structure, and an unobvious structural difference resulting in a method by which the product is made is not readily apparent.
As to the claimed lack of adhesive layer:
Reference is made to FIG. 17 of Schafer, reproduced below:
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In FIG. 17, Schafer illustrates a composite wood substrate and gypsum board comprising a wood substrate <110> and gypsum board overlay <112> securely bonded mechanically or adhesively to the wood substrate <110>.
Before the effective filing date of the claimed invention, it would have been obvious to one of or ordinary skill in the art, having the teachings of the prior art before him or her, to replace the patterned, non-continuous adhesive layer of Tinianov with the mechanical means disclosed by Schafer. The motivation for doing so would have been that Schafer establishes that a mechanical means of securing is equivalent to an adhesive means for bonding a gypsum layer to a wood layer. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Dimitrakopoulos and Schafer with Tinianov to obtain the invention as specified by the instant claim.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejections are fully considered, but are unpersuasive.
Applicant contends that the prior art does not disclose that the structure is formed by applying a gypsum slurry to a laminate. Applicant further contends that even if one of ordinary skill in the art were motivated to apply a gypsum slurry to the structure of Tinianov, said slurry would disperse the adhesive and destroy the intended function of the adhesive.
Applicant’s argument is unpersuasive. As discussed in the amended grounds of rejection, the added limitations are product-by-process limitations. Although the prior art references do not disclose or suggest the specific product-by-process limitations (i.e., direct application of a gypsum slurry to pre-formed laminate), even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant case, an unobvious difference between the structure of the prior art and the structure made by the product-by-process limitation is not readily apparent and Applicant has not characterized such an unobvious difference.
Applicant’s arguments regarding the merits of amended claim 57 are fully considered, but are moot due to the new grounds of rejection necessitated by said amendment.
Applicant’s argument is unpersuasive. As discussed in the amended grounds of rejection, the added limitations are product-by-process limitations. Although the prior art references do not disclose or suggest the specific product-by-process limitations (i.e., direct application of a gypsum slurry to pre-formed laminate), even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In the instant case, an unobvious difference between the structure of the prior art and the structure made by the product-by-process limitation is not readily apparent and Applicant has not characterized such an unobvious difference.
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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/TAM/Examiner, Art Unit 1788 05/11/2026
/Alicia Chevalier/Supervisory Patent Examiner, Art Unit 1788
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