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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/20/26 has been entered.
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, 5-20 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. The specification as originally filed does not provide support for the limitation that there is an absence of the resinous coating in substantially all openings between the warp yarns and the weft yarns.
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.
Claim(s) 1, 3, 5-8, 12-13, 17, 20, 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herbert et al, U.S. Patent No. 8,852,368 in view of Broadway, U.S. Patent No. 2004/0224584.
Herbert discloses a glass fiber reinforcement for cement boards. Herbert teaches a glass fiber fabric reinforcement comprising multiple yarns comprising glass filaments and a polymeric coating on the yarns which are formed into the reinforcing scrim. See col. 3, line 36 – col. 4, line 9. Since the scrim can be a laid scrim, the scrim would have adhesion points between the warp and weft yarns where they cross over. The coating is applied to a thickness of 0.04-1 mm. See col. 4, lines 50-52. The yarns are coated with a polyolefin such as polyethylene or polypropylene. See col. 12, lines 5-12. Since the yarns are coated, the spaces between the yarns would be free of the resin coating. Herbert teaches that it was also known to employ PVC as the coating for the yarns. See examples and Table 1. Herbert teaches that the fabric reinforcement can formed into a laid scrim, a needled, woven, knitted, braided or mesh fabric and that the fabric structure can be manipulated to provide a particular absorption of the coatings. See col. 6, lines 40-64 and col. 8, lines 5-50. The fabric has a basis weight of 15-300 gsm, a thickness of 5-22 mils, a linear density of 50 tex to 2500 tex, which equates to about 9921-198 yards per pound which is within the claimed range, a young’s modulus of elasticity of 10-12 million psi, a strain a break of at least about 1.5% or higher and a tensile strength of about 20 psi in the MD and 5 PSI in the CD. See col. 9, lines 30-47. Herbert teaches providing fabrics having a particular surface area by providing projecting fibers from the fabric surface in order to provide improved attachment of the cement coating. See col. 9, lines 48-56. The cement composition can comprise cement paste, mortar, concrete or gypsum, Portland cement which includes chopped fibers or natural, inorganic or polymeric fibers, and can include resins, ceramics, and other components. See col. 15, lines 25-54.
Herbert teaches scrims as set forth above. Herbert teaches coating the yarns of the scrim and then bonding but does not teach the claimed tensile strength of the bonded intersection points.
However, Broadway teaches that bonding glass fibers which are used to form a scrim for reinforcing a cementitious fabric by bonding at the crossover points of the scrim improves dimensional stability of the scrim and provides further dimensional stability and reinforcement to the subsequently manufactured cement board to which the scrim is applied. See paragraph 0024.
Therefore, it would have been obvious to have selected a degree of bonding at the crossover points of the scrim of Herbert as taught by Broadway in order to provide a scrim and cement board having the desired dimensional stability and reinforcement.
Claim(s) 1, 3, 6, 7,8, 11, 12, 13, 17, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Newman, EP 1,408,171A1 in view of Broadway, U.S. Patent No. 2004/0224584.
Newman discloses a fiber glass scrim wherein the yarns are bond together at their crossover points. See abstract and paragraph 0012. The glass fiber scrims have a reduced weight compared to other reinforcing scrims which reduces cost and weight in the resulting reinforced cement board. See paragraph 0008. Suitable binders include polyvinyl chloride, polyvinyl acetate, poly vinyl alcohol, acrylic resins and others as set forth at col. 6, lines 53 – col. 7, line 9. Since the yarns are bonded at crossover points, the spaces between the yarn would be free of the resin coating.
Newman teaches scrims as set forth above. Newman teaches coating the yarns of the scrim and then bonding but does not teach the claimed tensile strength of the bonded intersection point
However, Broadway teaches that bonding glass fibers which are used to form a scrim for reinforcing a cementitious fabric by bonding at the crossover points of the scrim improves dimensional stability of the scrim and provides further dimensional stability and reinforcement to the subsequently manufactured cement board to which the scrim is applied. See paragraph 0024.
Therefore, it would have been obvious to have selected a degree of bonding at the crossover points of the scrim of Newman as taught by Broadway in order to provide a scrim and cement board having the desired dimensional stability and reinforcement.
Claim(s) 1, 2, 6, 7, 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Koch, EP 3640407 in view of Broadway, U.S. Patent No. 2004/0224584 .
Koch discloses a textile reinforcement scrim which comprises coated strands which is useful to reinforce concrete. See abstract and first two paragraphs of page 1 of the translation. The fibers of the scrim can be glass or carbon. See paragraph 7 of page 2 of the translation. The scrim can be coated with polymethyl methacrylate. See page 3, paragraph 6. The spaces within the scrim are free of coating in order to provide the firm bond between the scrim and the concrete. Koch teaches that in order to form a firm bond between the textile reinforcement scrim and the concrete, the surface of the scrim is roughened in order to increase the surface area of the scrim. One means of roughening the surface of the scrim is to apply particles to the scrim, or to apply an additional coating to the scrim threads in order to provide a larger surface area. See page 3, paragraphs 7-8. The scrim can be a cross laid scrim wherein the strands are fixed by an adhesive at the crossing points. See page 4, paragraph 7. The scrim is coated after formation. Herbert and Newman teach scrims as set forth above.
Koch differs from the claimed invention because it does not teach the claimed tensile strength of the bonded intersection point.
However, Broadway teaches that bonding glass fibers which are used to form a scrim for reinforcing a cementitious fabric by bonding at the crossover points of the scrim improves dimensional stability of the scrim and provides further dimensional stability and reinforcement to the subsequently manufactured cement board to which the scrim is applied. See paragraph 0024.
Therefore, it would have been obvious to have selected a degree of bonding at the crossover points of the scrim of Koch as taught by Broadway in order to provide a scrim and cement board having the desired dimensional stability and reinforcement.
With regard to claim 2, Koch differs from the claimed invention because it does not disclose the particular surface roughness Ra or the particular degree of increased surface area, however, it would have been obvious to have selected the degree of additional surface area and surface roughness Ra which provided the best bonding between the scrim and the concrete.
Claim(s) 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herbert in view of Broadway as set forth above, and further in view of WO 01/49484.
Herbert does not clearly teach the claimed number of strands per inch.
However, WO ‘484 discloses a cementitious board system. The system comprises a central cementitious core having reinforcing glass fabrics on one or both faces. WO '484 teaches that the preferred glass fabrics comprise scrims having preferably 4-10 strands per inch in both direction. See page 9, lines 1-32.
Therefore, it would have been obvious to one of ordinary skill in the art to have employed scrims having a strand number as taught by WO ‘484 in the invention of Herbert in view of the art recognized suitability of this range of strand numbers. Note that Herbert teaches a yarn size within the claimed range as set forth above.
It further would have been obvious to have provided the coating weight percent which produced the desired degree of strength to the scrim of Herbert.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herbert in view of Broadway as applied to claims above, and further in view of Dubey, U.S. Patent Application No. 2009/0011207.
Herbert does not clearly teach the claimed cement composition.
However, Dubey discloses a lightweight cementitious board system, comprising a cementitious core layer and outer glass reinforcing scrims. See example 2. The cement core layer can comprise 35-60 wt% Portland cement, 2-10wt% expanded chemically coated water tight and water repellant perlite, (paragraph 0050), 20-40% water, entrained air and optional additives such as water reducing agents, chemical set accelerators and chemical set retarder, as well as 0-25wt% secondary fillers such as expanded clay, shale aggregate and pumice. See paragraph 0022. The cement composition has a density of 45-60 pounds per cubic foot, (see paragraph 0042), and a nail pull resistance of greater than 90 pounds, (see table 6).
Therefore, it would have been obvious to one of ordinary skill to have employed the particular composition of Dubey in the structure of Herbert in order to provide a lightweight but strong board system.
The Declaration under 37 CFR 1.132 filed 2/20/26 is insufficient to overcome the rejection of claims 1-2, 5-20, 27-29 based upon Herbert or Newman as set forth in the last Office action because: the showing in the specification is not commensurate in scope with the claims since it uses a specific scrim, specific adhesive and specific coating. Additionally, the showing and Declaration compare improvements in flexural strength a cementitious board including the scrim with the tensile strength of coated and uncoated scrims, but does not compare improvements in flexural strength in the cementitious board with the flexural strength of coated and uncoated scrims. Finally, the claims, other than claim 20, are drawn to the coated scrim, not to a cementitious board including the scrim. The showing uses PVC as the coating, while the claims are not specific to any particular coating. The showing uses glass yarns but the claims are generic to any yarns. The showing states that it is surprising that the cross-over bond strength does influence flexural strength of the cement board. However, the showing does not establish why this result is commensurate in scope with the claims and is significant and unexpected. As set forth above, Broadway teaches that the strength at the bond points provides improved dimensional stability to both the fabric and the cement board manufactured using the bonded scrim. Therefore, Broadway teaches that the dimensional stability of the cement board is related to the strength at the bond points. Flexural modulus would be an aspect of dimensional stability.
Declaration states that there was an a long felt need which had not been fulfilled until Applicant’s invention. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04.
Applicant's arguments filed 2/20/26 have been fully considered but they are not persuasive.
With regard to the 112(a) rejection, Applicant argues that the figures and specification provide support for the limitation that there is an absence of the resinous coating in substantially all openings between the warp yarns and the weft yarns.
However, the yarns can be coated with a resinous coating. Therefore, at least some of the resinous coating will necessarily be in the openings between the warp and weft yarns because the coating forms the outer coating of the yarns and therefore forms the perimeter of the openings.
With regard to Herbert, Newman and Koch, Applicant argues that the claimed cohesive tensile strength does not appreciably increase the tensile strength of the scrim and therefore there would have been no reason to optimize the bond junction strength. However, the newly applied Broadway reference teaches that the strength of the junctions provides improved dimensional stability to the scrim and to the cement board after it is formed. Therefore, since Broadway teaches that the strength of the bond at the junctions is related to dimensional stability in both the scrim and the reinforced cement, one of ordinary skill in the art would have been able to select the degree of bond strength which produced the desired and necessary dimensional stability in the scrim and the reinforcement cement product.
With regard to Newman, Applicant argues that Newman incorporates a meltblown layer which is bonded to the scrim. However, a meltblown fibrous layer bonded to a scrim would still not fill the openings with a resinous coating. Therefore, there is no reason to remove the nonwoven from Newman, since the claims do not preclude the presence of additional fabric layers such as melt blown layers.
With regard to Herbert in view of Dubey, Applicant argues that Herbert teaches away from using a soupy composition, while Dubey employs a lightweight composition which includes perlite and air and that one of ordinary skill would expect that the scrim of Herbert would likely cause Herbert’s mesh to float or rise. However, it is not clear that a composition which is lightweight or contains air is the same as a soupy composition, which would seem to indicate a more liquid composition. A composition including perlite and air would not necessarily be a soupy composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH M IMANI whose telephone number is (571)272-1475. The examiner can normally be reached Monday-Wednesday 7AM-7:30; Thursday 10AM -2 PM.
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, Marla McConnell can be reached at 571-270-7692. 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.
/ELIZABETH M IMANI/Primary Examiner, Art Unit 1789
Prosecution Insights