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 .
Response to Amendment
The amendment filed 28 October 2025 has been entered. Claims 28–43 and 48–50 are pending. Claims 44–47 have been canceled by this or a previous amendment. Claims 49 and 50 have been introduced as new claims, and are supported by at least paragraph 0075 of the disclosure.
The amendment to claim 28 overcomes the previous grounds of rejection. Accordingly, the rejection under 35 U.S.C. 103 is withdrawn.
Claim Objections
Claim 28 is objected to because of the following informalities: “…in an amount of at least 50 wt.% by weight…” is redundant. Phrasing the limitation instead as either “50 wt.%” or “50% by weight” would overcome this objection. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
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 28–43 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Colbert (AU-2002245308-A1, hereinafter “Colbert”, previously cited), in view of Georgia-Pacific (“DensGlass® Sheathing”, Georgia-Pacific 2018, hereinafter “Georgia-Pacific”, previously cited), Hartley et al. (US 2016/0096970 A1, hereinafter “Hartley”, previously cited, and Bleecher et al. (US 9,067,821 B2, hereinafter “Bleecher”, previously cited).
Regarding claims 28–32, Colbert teaches coated gypsum boards (see generally abstract), comprising a gypsum core (see paragraph 0009), the gypsum core comprising calcium sulfate dihydrate in an amount of at least 50 wt.% of the gypsum core (see paragraph 0030 teaching the gypsum core as comprising gypsum, accelerator and retarder components; gypsum is, by definition, calcium sulfate dihydrate, and while the amounts of accelerator and retarder are not explicitly stated, they are typically used in small amounts, e.g., less than 50%; because no other components are described in the gypsum core, it is reasonable to presume that the gypsum core is at least 50 wt.% gypsum). Colbert further teaches the limitation wherein the gypsum board has a density from about 20 pcf to about 60 pcf (pcf is pounds per cubic foot; see paragraph 0054 teaching the density as being 1000–1700 lbs per thousand square feet; also see paragraph 0055 teaching the thickness as being ½ inch [0.0417 ft]; thus, 1000 lbs/(1000 sq ft × 0.0417 ft) = 23.98 pcf, and 1700 lbs/(1000 sq ft × 0.0417 ft) = 40.77 pcf, so Colbert teaches a density of 23.98–40.77 pcf, which falls within the claimed range).
Colbert fails to explicitly teach a glass mat facing material (see paragraph 0008 teaching paper facing material, not glass), however Georgia-Pacific teaches that fiberglass mats offer superior moisture and mold resistance for gypsum boards (see third bullet point). A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the paper sheet facing materials can be exchanged with fiberglass sheets to offer better moisture and mold resistance, as fiberglass facing materials are commonly used in the industry to sheathe gypsum boards, as evidenced by Georgia-Pacific.
Colbert, as modified by Georgia-Pacific, fails to explicitly teach the limitation wherein the glass mat facing material includes a first coating and a second coating with the recited compositions (see paragraphs 0009 and 0012 teaching a coating composition comprising mineral fillers to strengthen and tint the gypsum board, which differs from the claimed coating composition). Hartley teaches a coating system to be applied to exterior wall systems (see Hartley, paragraph 0003; gypsum boards are synonymous with dry-wall, which can be an exterior wall system). Hartley teaches a composition comprising acrylic resin, siloxane, and organosilane (see Hartley, paragraph 0005). Because Colbert teaches a coated gypsum board and Hartley teaches a coating suitable for exterior wall systems, which can include gypsum board, there is sufficient motivation to modify the coated board of Colbert by utilizing Hartley’s coating composition in lieu of Colbert’s.
Furthermore, Bleecher teaches a strengthening hydrophobic/oleophobic coating that can be applied to cement and other masonry products (see generally Background, col. 1, ll. 15–35; gypsum is a cementitious product, so it can be considered a cement or other masonry product). Bleecher’s coating composition includes acrylic resin (see col. 9, ll. 19–25 teaching acrylic lacquer binders, which are acrylic resins dissolved in lacquer thinner), as well as organosilanes and polydimethylsiloxane-functionalized silicas (see col. 21, Table, teaching octyltrimethoxysilane and polydimethylsiloxane-treated CAB-O-SIL). Because Bleecher’s composition comprises the same general components as Hartley’s (i.e., acrylic resin, siloxanes and silanes), and because Bleecher’s composition is taught to be useful for cement and other masonry products, there is sufficient motivation to further modify the coating taught by Hartley according to the teachings of Bleecher, as applied to the gypsum board taught by Colbert in view of Georgia-Pacific.
Hartley explicitly teaches the coating as comprising two dispersions: the first comprises the acrylic resin component, and the second dispersion comprises the hydrophobic organosilane additive and siloxane (see paragraph 0025 teaching the first and second dispersions; also see paragraph 0005 teaching the inclusion of siloxane in the first dispersion). Thus, Hartley fails to explicitly teach these components in the “first coating” as claimed. However, if Hartley were to be modified to use a single coating wherein both dispersions are pre-mixed and applied as one coating, the “first coating” limitation would be met. Importantly, Hartley does not teach away from this suggestion; there is nothing in Hartley to suggest that the coatings must be applied as two separate dispersions. Bleecher teaches a coating comprising the same components within just one dispersion (see Bleecher, col. 3, ll. 32–35 teaching a one-step coating combining binder, first particles and second particles; col. 9, ll. 19–25 teaches acrylic lacquer binders; col. 21, Table teaches the second particles as silanes and siloxanes). A person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that the two-part composition of Hartley can be combined into one part, as taught by Bleecher, with reasonable expectation of success.
Regarding the limitation wherein the coating comprises a first coating and a second coating, and wherein the second coating is non-continuous, Hartley teaches the limitation wherein the coating is multi-layer (see Hartley, paragraph 0007 teaching the coating as being applied in multiple layers), but in order to meet the compositional limitations discussed previously, Hartley is considered to be modified by Bleecher to teach a mono-layer coating. Hartley furthermore does not explicitly teach the coating as being non-continuous. Bleecher also teaches a coating which can comprise multiple layers (see Bleecher, col. 1, ll. 43–46 teaching the coating as being applied in either a single step or multiple steps), wherein the top layer can be non-continuous (see Bleecher, Figure 2, patterns B–E). The motivation to modify the coating of Hartley according to Bleecher comes from their being art-recognized equivalents (see MPEP 2144.06(I) which states it is prima facie obvious to combine two compositions, each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; in the instant case, both compositions are already substantially similar, and are directed towards coating masonry products, as discussed above). Furthermore, Bleecher teaches such patterned coatings as offering enhanced drainage (see Figure 2, patterns D and F, wherein water flows to a drainage hole in the board).
In summary, Colbert teaches coated gypsum panels, Georgia-Pacific modifies Colbert to use fiberglass facing mats, Hartley modifies Colbert to use a coating comprising the claimed components, and Bleecher modifies Hartley to use a non-continuous top coat. These modifications arrive at the claimed invention.
Regarding the remaining limitations of claim 28, and the subsequent limitations of dependent claims 29–32, it is presumed that any coated gypsum board that is substantially similar to the claimed coated gypsum board will exhibit the same properties (see MPEP 2112.01 regarding the inherency of properties to identical structures and compositions). Although none of the cited references explicitly teach performance in any of the standardized tests recited in claims 28–32, any substantially similar product is reasonably expected to pass the same tests as the claimed invention. Thus, these limitations are considered inherently met by the product of the combined references as described above.
Regarding claim 33, Colbert, as modified by Georgia-Pacific, Hartley, and Bleecher, teaches the gypsum board of claim 28. Hartley further teaches the limitation wherein the resin is present in the first coating in an amount of 20 wt.% or more to 98 wt.% or less (see paragraph 0025 teaching the coating as being the combination of two dispersions, wherein the second dispersion is added to the first at 0.01–20 wt.%, meaning the first dispersion is present in the mixture at 80–99.9 wt.%; paragraph 0027 teaches the acrylic resin as comprising 20–60 wt.% of the first dispersion, so (20–60 wt.%) × (0.01–20 wt.%) = 16–59.9 wt.%; thus, Hartley teaches 16–59.9 wt.% acrylic resin; also see MPEP 2144.05(I) regarding the obviousness of overlapping ranges; regarding the “first coating” limitation, this will be discussed below). Hartley further teaches the limitation wherein the hydrophobic organosilane additive is present in the first coating in an amount of 0.001–25 wt.% (see paragraph 0025 teaching the organosilane-containing dispersion as being added to the first dispersion at 0.01–20 wt.%; paragraph 0028 teaches the second dispersion as comprising 25–95 wt.% organosilane, so (25–95 wt.%) × (0.01–20 wt.%) = 0.0025–19 wt.%; thus, Hartley teaches 0.0025–19 wt.% organosilane; also see MPEP 2144.05(I)).
Hartley explicitly teaches the coating as comprising two dispersions: the first comprises the acrylic resin component, and the second dispersion comprises the hydrophobic organosilane additive (see paragraph 0025), but as discussed in the above rejection of claim 28, Hartley can be modified by Bleecher to combine the dispersions into a single coating with a reasonable expectation of success. The amounts recited above reflect the coating formed through combination of the dispersions, so if Hartley were to be modified to use a single coating wherein both dispersions are pre-mixed at the prescribed ratios and applied as one coating, the “first coating” would comprise the claimed components in the claimed amounts, thus meeting the limitations of this claim.
Regarding claims 34–38, Hartley further teaches the limitations wherein the resin comprises an acrylic resin (see paragraph 0005 teaching acrylic resin), wherein the acrylic resin comprises an acrylate monomer or polymer (see paragraph 0026 teaching acrylate monomers and polymers), and wherein the acrylic resin comprises a methacrylate monomer or polymer (see paragraph 0026 teaching methacrylate monomers and polymers). Hartley further teaches the limitations wherein the resin comprises a siloxane rubber, and wherein the siloxane rubber comprises a polyorganosiloxane (see paragraph 0005 teaching polyether-modified siloxane, which is both a siloxane and a polyorganosiloxane).
Regarding claim 39, Bleecher further teaches the limitation wherein the siloxane rubber comprises a polydimethylsiloxane (see column 21, Table teaching polydimethylsiloxane-functionalized silica).
Regarding claims 40–43, Hartley further teaches the limitation wherein the organosilane comprises one or more components having the structure of X-R-Si(OR’)3 (see paragraph 0029 teaching this same structure), wherein X can be a non-hydrolysable organic moiety (see paragraph 0029 teaching X as an epoxy moiety, which also meets the limitations of claim 41; also see paragraph 0029 teaching X as an amino moiety, which also meets the limitations of claim 42), wherein R can be an arylene or an alkylene (see paragraph 0029 teaching R as aryl or alkyl, not arylene or alkylene; also see MPEP 2144.09(I) regarding the obviousness of similar chemical species; arylenes and alkylenes differ from aryl and alkyl groups by as little as one double bond, which is not expected to dramatically affect the hydrophobic character of this additive; accordingly, Hartley’s disclosed aryl and alkyl groups are sufficiently close to render obvious the claimed arylene and alkylene groups; this also meets the limitation of claim 43), and wherein OR’ can be a moiety that is hydrolysable (see paragraph 0029 describing OR’ as a hydrolysable moiety).
Regarding claim 48, Bleecher further teaches the limitation wherein the second coating is in the form of a pattern (see Figure 2, especially B and C, which can be considered patterns).
Allowable Subject Matter
Claims 49 and 50 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 49, the rejection of parent claim 28 relies upon the coating taught by Hartley and modified by Bleecher. Based on these teachings, a person of ordinary skill in the art can reasonably arrive at a multi-layer coating comprising the claimed components, wherein the second coating is non-continuous in the form of a pattern. However, there is nothing in Hartley or Bleecher that explicitly recites a continuous base coating. Furthermore, the rationale used to support the modification of Hartley by Bleecher relies on Bleecher’s disclosure of enhanced drainage properties for a patterned coating. Such properties would not be feasible if there were a continuous base layer coating comprising hydrophobic additives; a hydrophobic base layer and a hydrophobic patterned top layer would both repel water, and so there would be no need for a pattern. The use of patterned coatings on gypsum board is already rarely reported in the art, and the limitation wherein the patterned coating has a continuous base layer underneath would appear to be novel over the prior art of record.
Regarding claim 50, only Bleecher teaches a second coating, and Bleecher explicitly teaches a maximum thickness of 225 microns (see col. 9, ll. 10–17). This fails to meet the limitation of claim 50, wherein the thickness of the second coating is at least 1/8 inch thick, as a thickness of 225 µm is approximately 0.00886 inches (whereas 1/8 inch = 0.125 inches). As stated above, there is very little prior art teaching a non-continuous second coating on gypsum, which is required by the parent claim. Accordingly, since Bleecher fails to teach a suitable coating thickness, claim 50 is allowable over the prior art.
Response to Arguments
Applicant’s arguments with respect to claims 28–38 and 40–46 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Some arguments are still relevant to the new grounds of rejection, and will be addressed herein.
Applicants argue that the inclusion of a non-continuous second coating provided a substantial and unexpected increase in tensile strength, load-bearing capacity, and toughness compared to both the basecoat and continuous coating samples. They argue that non-continuous coatings exhibited more than double the maximum load capacity compared to basecoat samples, demonstrated markedly higher tensile strength energy absorption (TEA) and toughness, and unexpectedly outperformed continuous coatings in both strength and durability. As an initial point, the Examiner notes that, according to MPEP 716.02, any differences between the claimed invention and the prior art may be expected to result in some difference in properties, but there must be adequate data to support the assertion that these differences are unexpected. Applicants argue that a non-continuous topcoat yields better performance than a basecoat alone, or than a basecoat with a continuous topcoat. The following table, from paragraph 0086 of Applicants’ specification, shows the data in relation to this assertion:
PNG
media_image1.png
164
699
media_image1.png
Greyscale
As can be seen, the biggest difference in maximum load occurs when any topcoat is applied. Basecoat 1 Only has a load of ~1.7 lbf, while all the samples which provided a topcoat on Basecoat 1, whether continuous or non-continuous, achieve a load closer to 4 lbf. This is also seen for Basecoat 2. The difference between a continuous topcoat and 3 different non-continuous topcoats is, comparatively, much smaller, with a continuous topcoat achieving a max load of ~3.7 lbf, and the non-continuous topcoats achieving a max load of ~3.4–4.0 lbf. Similarly, for TEA, a basecoat alone has a TEA of ~0.02 lbf/in, while the samples with a continuous or non-continuous topcoat all have a TEA of ~0.05–0.07 lbf/in. The trend shows a clear increase in max load and TEA when a topcoat is applied, but the assertion that a non-continuous topcoat performs better than a continuous topcoat seems to be unsupported by the data. And application of a second coat, whether continuous or non-continuous, is expected to increase the max load strength and TEA, because a second coating provides additional thickness and can fill any microcracks that might have otherwise affected the load and TEA. In other words, when there are two layers of coating, the max load and TEA can be expected to roughly double, and the difference between a continuous and non-continuous coating does not appear to support arguments of unexpected results.
Applicants additionally argue that there is no motivation to modify Hartley or Colbert according to Bleecher because neither Hartley nor Colbert disclose a problem with the coating of the gypsum board, and so the motivation relying on Bleecher’s enhanced drainage patterned coating are not based on any indications of inadequacy in the coatings of Colbert or Hartley. The Examiner first notes that this proposed modification is not based solely on the disclosure of Bleecher. It is true that neither Colbert nor Hartley disclose a need for a non-continuous coating, or for any sort of enhanced drainage. However, Hartley and Bleecher are considered art-recognized equivalents. Both teach comparable compositions for comparable applications, and “the idea of combining them flows logically from their having been individually taught in the prior art” (MPEP 2144.06(I)). Further, under MPEP 2144(I) and (II), the rationale to modify or combine prior art does not have to be expressly stated in the prior art, and the expectation of some advantage is the strongest rationale for combining references. Colbert teaches a coated gypsum panel, and Hartley teaches a coating for gypsum panels. Bleecher also teaches a coating which can be applied to masonry products including gypsum panels, and provides a disclosure which motivates such a modification by teaching enhanced drainage of coated panels. Even if Colbert and Hartley don’t recognize a need for this modification, a person of ordinary skill in the art before the effective filing date of the claimed invention would have understood to be obvious that Bleecher is compatible with Hartley, and therefore with Colbert, and that Bleecher motivates the modification of Hartley by disclosing an advantage of using patterned coatings. Accordingly, this argument is not found to be persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ryan P Loughran whose telephone number is (571)272-2173. The examiner can normally be reached M, T, Th, F 6:30-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.P.L./Examiner, Art Unit 1731
/AMBER R ORLANDO/Supervisory Patent Examiner, Art Unit 1731