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 .
Election/Restrictions
Claims 15-18, 32, 34 of Group II; claims 19-20 of Group III; claims 21-26 of Group IV; and claims 27-31 of Group V; are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election of claims 1-14, 33, 35 of Group I, was made without traverse in the reply filed on December 17, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 13, 35 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 13, it is unclear how density which is conventionally mass per volume, can have units of lbs per msf, when msf conventionally stands for 1,000 square feet as used in the lumber industry, where square feet are units of an area, not a volume.
Regarding claim 35, it is unclear what all is encompassed by the limitation of “as described herein”. For the purposes of examination, a gypsum panel containing the subject matter of the independent claim 1 is deemed to meet all the requirements of claim 35.
Clarification and amendment with relevant citation(s) from the specification are required.
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 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.
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 1-14, 33, 35 are rejected under 35 U.S.C. 103 as being unpatentable over Hietaniemi, WO-2020-012074-A (US 2021/0262169 is used here) in view of Francis (US 2014/0315008) and Vrbanac (US 2004/0031579).
Regarding claim 1, Hietaniemi teaches a lined gypsum board (gypsum board + gypsum board liner [0052]) comprising:
a gypsum core (gypsum board [0052]); and
a paper cover sheet (liner [0052] paper [0016]) disposed on the gypsum core (gypsum board [0052]), the paper cover sheet comprising pulp fiber (fiber stock… pulp [0052]).
Hietaniemi fails to teach that the lined gypsum board is included in a gypsum wallboard panel.
However, Francis teaches that a conventional gypsum wallboard panel (long been used [0002]) comprises a paper cover sheet ([0012], heavy paper [0003]) disposed on a gypsum core (sandwiching a solid gypsum core [0003]), for the purpose of providing the desired structural element ([0002]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have included the lined gypsum board of Hietaniemi, in a gypsum wallboard panel, in order to obtain the desired structural element, as taught by Francis.
In addition, Hietaniemi teaches that the paper cover sheet further comprises an uncooked starch (cationic starch for binding fibers [0053], cationic non-degraded starch [0028], cationic strength agent [0028]), but fails to teach that the uncooked starch remains an uncooked starch after heat processing (dissolved by cooking at 96[Symbol font/0xB0]C [0062]), and hence fails to teach that the paper cover sheet comprises the uncooked starch in an amount of at least 2% by weight of the pulp fiber.
However, Hietaniemi teaches that the uncooked starch is a cationic uncooked starch which functions as a strengthening aid (cationic strength agent [0028]).
Vrbanac teaches that instead of cationic cooked starch (chemically modified starch are typically fully cooked [0005] cationic starch [0003]), a cationic additive is added to uncooked starch, to form a cationic uncooked starch with enhanced surface charge ([0016]) achieving high retention of the cationic uncooked starch (modified starch [0019, 0016]) in pulp fiber (pulp [0019] fiber [0028]), for the purpose of providing the desired combination of improved strength and lower production costs (economic filler [0019]). Vrbanac teaches that paper products are formed from the pulp fiber with the cationic uncooked starch added in an amount of from about 3% by weight to about 10% by weight of the pulp fiber (total weight of fibers [0028]) which is within the claimed range of at least 2% by weight.
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have included an uncooked starch in an amount of at least 2% by weight of the pulp fiber, in the paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis, in order to obtain the desired combination of improved strength and lower production costs, as taught by Vrbanac.
Regarding claims 2-3, Hietaniemi teaches that the paper cover sheet (liner [0052] paper [0016]) is a multi-ply cover sheet wherein each ply includes the cationic starch (multi-layered fibrous web [0053]) which is an uncooked cationic starch, as modified by Vrbanac, for the purpose of provided the desired combination of improved strength and lower production costs, as described above.
Accordingly, the ply facing the gypsum core is a liner ply, and the ply adjacent to the liner ply is a filler ply, each ply including the uncooked starch, in the multi-ply paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Regarding claim 4, Hietaniemi teaches that the paper cover sheet comprises Kraft paper ([0052]), but is silent regarding manila paper.
However, Francis teaches that instead of, or along with Kraft paper, manila paper can be used as paper for the paper cover sheet [0049]), for the purpose of providing the desired distinctive manila color (think manila folder).
Therefore, it would have been obvious to one of ordinary skill in the art at the time, to have comprised manila paper in place of, or along with the Kraft paper in the paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, in order to obtain the desired distinctive manila color, as taught by Francis.
Regarding claim 5, Francis teaches that the paper cover sheet covers the face side or back side of the gypsum core (sandwiching … between two sheets of a facing material, typically heavy papers [0003], multi-ply paper is most commonly used [0004]), for the purpose of providing the desired structural element ([0002]).
Accordingly, the paper cover sheet covers the face side or back side of the gypsum core of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, for the purpose of providing the desired structural element, as described above.
Regarding claim 6, Francis teaches that the paper cover sheet covers the face side of the gypsum core, and that an additional paper cover sheet covers the back side of the gypsum cored (sandwiching … between two sheets of a facing material, typically heavy papers [0003], multi-ply paper is most commonly used [0004]), for the purpose of providing the desired structural element ([0002]).
Accordingly, the paper cover sheet covers the face side of the gypsum core, and an additional cover sheet covers the back side of the gypsum core, of the gypsum wallboard panel of Hietaniemi as modified by Francis and Vrbanac, for the purpose of providing the desired structural element, as described above.
Regarding claim 7, Vrbanac teaches that the cationic uncooked starch is added in an amount of from about 3% by weight to about 10% by weight of the pulp fiber (total weight of fibers [0028]) which is within the claimed range of at least 3% by weight, for the purpose of provided the desired combination of improved strength and lower production costs, as described above.
Accordingly, the uncooked starch in the paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, is added in an amount of at least 3% by weight of the pulp fiber, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
.Regarding claim 8, Vrbanac teaches that the cationic uncooked starch is added in an amount of from about 3% by weight to about 10% by weight of the pulp fiber (total weight of fibers [0028]) which overlaps the claimed range of at least 6% by weight, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Accordingly, the uncooked starch in the paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, is added in an amount that is within a range of at least 6% by weight of the pulp fiber, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Regarding claim 9, Vrbanac teaches that the cationic uncooked starch is added in an amount of from about 3% by weight to about 10% by weight of the pulp fiber (total weight of fibers [0028]) which is within the claimed range of between 2% and 10% by weight, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Accordingly, the uncooked starch in the paper cover sheet of the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, is added in an amount that is within a range of between 2% and 10% by weight of the pulp fiber, for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Regarding claim 10, Vrbanac that the starch is a cationic uncooked starch with enhanced surface charge ([0016]), for the purpose of providing the desired combination of improved strength and lower production costs, as described above.
Regarding claim 11, Hietaniemi teaches that the pulp fiber comprises hard stock fiber (hardwood [0052]).
Regarding claim 12, Hietaniemi teaches that the pulp fiber comprises one or more of Kraft paper and corrugated paper ([0052]).
Regarding claim 13, Hietaniemi is silent regarding a nail pull resistance of the gypsum wallboard panel, and hence fails to teach that the wallboard panel has a nail pull resistance that is at least about 6 lbs greater than a nail pull resistance of an equivalent wallboard panel without the uncooked starch.
However, Francis teaches that a standard nail pull resistance for a ½ inch thick gypsum wallboard panel without starch is 77 lbs ([0077]), and that when the gypsum wallboard panel contains starch, the nail pull resistance can be increased to 84 lbs (83.9 lbs, measured, sample formulation 12, Table 2 [0080]), such that the wallboard panel has a nail resistance that is 7 lbs greater than a nail pull resistance of an equivalent wallboard panel without the starch, which is within the claimed range of at least about 6 lbs greater.
Accordingly, since Francis teaches that the wallboard panel can have a nail pull resistance greater than a nail pull resistance of an equivalent wallboard panel without the starch, that is within a range of at least about 6 lbs greater, in the absence of a clear showing to the contrary, it would have been the result of routine experimentation, and hence obvious to one of ordinary skill in the art at the time, to have provided the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, with a nail pull resistance that is greater than a nail pull resistance of an equivalent wallboard panel without the uncooked cationic starch, that is within a range of at least 6 lbs greater, in order to obtain the desired combination of improved strength and lower production costs, as described above.
Regarding claim 14, modified Hietaniemi teaches that the gypsum wallboard panel can have a tensile strength of 28% greater than a tensile strength of an equivalent wallboard panel without the starch (100 x (123-96)/96, Test 3 (ZDT = 123 kPa, dry Starch = 5 kg/t) – Test 1 (ZDT = 96 kPa, dry Starch = 0 kg/t), Table 5 [0059]), which is within the claimed range of at least 20% - 40%.
Accordingly, since modified Hietaniemi teaches that the gypsum wallboard panel can have a tensile strength greater than a tensile strength of an equivalent wallboard panel without the starch, that is within a range of at least 20% - 40% greater, in the absence of a clear showing to the contrary, it would have been the result of routine experimentation, and hence obvious to one of ordinary skill in the art at the time, to have provided the gypsum wallboard panel of Hietaniemi, as modified by Francis and Vrbanac, with a tensile strength greater than a tensile strength of an equivalent wallboard panel without the uncooked cationic starch, that is within a range of at least 20% - 40% greater, in order to obtain the desired combination of improved strength and lower production costs, as described above.
Regarding claim 33, even though Hietaniemi, as modified by Francis and Vrbanac, may not teach the method of forming the gypsum wallboard comprising the presently claimed steps, and 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). See MPEP 2113. In the instant case, Hietaniemi, as modified by Francis and Vrbanac, teaches the presently claimed gypsum wallboard as described above.
Regarding claim 35, Hietaniemi, as modified by Francis and Vrbanac, teaches the gypsum wallboard panel as described above.
Any inquiry concerning this communication should be directed to Sow-Fun Hon whose telephone number is (571)272-1492. The examiner is on a flexible schedule but can usually be reached during a regular workweek between the hours of 10:00 AM and 6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Aaron Austin, can be reached at (571)272-8935. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/Sophie Hon/
Sow-Fun Hon
Primary Examiner, Art Unit 1782