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
Applicant’s amendments, filed 11 June 2026, with respect to the claims have been entered. Claims 6-10 and 13 remain pending in the application.
Response to Arguments
Applicant’s arguments with respect to Li, Maiti, and Wilson 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.
Regarding amended claim 6, claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP § 2115. Claim 6 is directed to a method of manufacturing a neutron beam shielding gypsum-based building board, and the prior art teaches all of the claimed manufacturing steps (see Claim Rejections - 35 USC § 103 below). The limitation “wherein the neutron beam shielding rate is obtained by emitting a point source neutron beam of 25 meV onto a building board having dimensions of 20 cm in length, 20 cm in width, and 20 cm in thickness, and by performing a calculation using a calculation code including Particle and Heavy Ion Transport code System (PHITS) and conversion factors specified in International Commission on Radiological Protection (ICRP) Publication 74” does not impart patentability to the claim because the method of obtaining the shielding rate, including a neutron emitter working on a building board by emitting a beam onto the building board, is not part of the method of manufacturing the claimed neutron beam shielding gypsum-based building board.
In other words, a neutron beam shielding gypsum-based building board having a shielding rate being worked upon by a point source neutron beam and calculation to obtain the shielding rate does not impart patentability to the claims. As evidenced from page 29 of the instant specification, lines 13-32, the claimed point source neutron beam and calculations applied to a board are used as a means of evaluating the neutron beam shielding rate. This analysis provides no specific actual step of manufacture, therefore imparting no limiting steps to the manufacture process. That is, the claim is directed towards a method of manufacturing a neutron beam shielding gypsum-based building board, not towards a method of obtaining the neutron beam shielding rate1, therefore patentability cannot be based upon a certain procedure to obtain the shielding rate as the process is irrelevant in terms of manufacturing the actual shield.
Claim Rejections - 35 USC § 112
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 6-10 and 13 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. “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved” (MPEP 2163.03 (V)).
Claim 6 recites the limitation “the neutron beam shielding rate is obtained…by performing a calculation using a calculation code including Particle and Heavy Ion Transport code System (PHITS) and conversion factors specified in International Commission on Radiological Protection (ICRP) Publication 74.” The specification discloses the use of PHITS and ICRP Publication 74 at paragraphs 0095-0096. However, the specification fails to identify any details of the calculation itself, such as a particular mathematical equation or how the PHITS calculation code or ICRP Publication 74 are used. Furthermore, the specification discloses that a generic “neutron beam shielding property” is “evaluated using the analytical model using PHITS” (paragraph 0095); there is no disclosure that PHITS is used for calculation of the neutron beam shielding rate in particular. With respect to the use of ICRP Publication 74, the specification discloses only that “[c]onversion factors were those disclosed in ICRP Publication 74.” There is no disclosure of how these conversion factors are used, nor what the conversion factors are used for. Still further, ICRP Publication 74 teaches a multitude of calculations, conversion coefficients, and other considerations relevant to radiological protection; it is not clear from the specification of the instant application what quantity or other element in ICRP Publication 74 corresponds to the claimed “conversion factors.” Therefore, the application lacks written description support for how the neutron beam shielding rate is calculated.
MPEP 2163.03(V) recites “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved ”. Here, the specification fails to demonstrate how the neutron beam shielding rate is obtained from calculations using the claimed code and publication. As the code is a computer implemented functional limitation, “It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) ”
Here, the specification merely suggests calculating without any disclosure as to how the claimed calculation is achieved using the claimed code and ICRP publication. Therefore, claim 1 fails to meet the written description requirement under 35 USC § 112(a).
Claims 7-10 and 13 are rejected because of their dependence on claim 6.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-10 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “performing a calculation using a calculation code including Particle and Heavy Ion Transport code System (PHITS).” PHITS is a simulation code with regular updates and new versions, as shown in the PHITS Update Log from 27 March 2006 to 24 April 2026; therefore, a claim reciting the use of PHITS with no indication of which version is used is indefinite. For the purpose of compact prosecution, the Examiner has interpreted the claim as referring to PHITS version 3.02, as disclosed in the instant specification at paragraph 0096. See MPEP 2173.05(u).
Claims 7-10 and 13 are rejected because of their dependence on claim 6.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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.
Claims 6-8 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kushibe et al. (JP Patent No. 2014089127 A), hereinafter Kushibe (English machine translation provided in a prior office action), as evidenced by the CAS Substance Detail: Boron Carbide, hereinafter CAS, in view of Ataka et al. (JP Patent No. 2002145655 A), hereinafter Ataka (English machine translation provided in a prior office action).
Regarding claim 6, Kushibe discloses a method of manufacturing (page 11, “Examples 2-1 to 2-6”) a neutron beam shielding (page 3, paragraph 9, line 1) gypsum-based (page 3, paragraph 9, line 2) building board (page 3, paragraph 9, line 3), comprising:
kneading a raw material (page 10, paragraph titled “Preparation of radiation shielding material composition 1) containing at least gypsum (page 3, paragraph 9, line 2), a boron-containing material (page 4, paragraph 2, lines 1-2), a water reducing agent (page 9, paragraph 2, lines 1-2), and water (page 4, paragraph 3, line 2) to form a gypsum slurry (pages 11-12, paragraphs labeled “Preparation of radiation shielding material composition 2” through “Molding dry gypsum block”);
molding the gypsum slurry (page 12, paragraph labeled “Molding dry gypsum block”); and
curing the gypsum slurry molded in the molding (page 12, paragraph labeled “Molding dry gypsum block”, line 3);
wherein, in the raw material (page 4, paragraph 3), an amount of boron contained in the boron-containing material is in a range from 1.0 parts by mass to 120 parts by mass with respect to 100 parts by mass of gypsum (page 8, paragraph 7, lines 2-3), and
wherein the boron-containing material includes at least one of calcium borate or boron carbide (page 8, paragraph 3, lines 1-2; CAS shows that the chemical formula for boron carbide is B4C).
Kushibe further discloses that a neutron beam shielding rate of the neutron beam shielding gypsum-based building board “exceed[s] 70%” (page 11, paragraph beginning “As shown in Table 1…”, lines 7-8). When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the case at hand, the range of greater than 70% disclosed in Kushibe overlaps with the claimed range of “greater than 87%.” Applicant has not shown that the claimed range of “greater than 87%” is critical or produces any unexpected result.
Furthermore, optimizing the shielding rate is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Kushibe teaches that variations in composition and dimensions of the neutron beam shielding gypsum-based building board result in different shielding rates (see, e.g., Kushibe pages 10-11, Examples 1-1 to 1-6). Therefore, the prior art teaches variations in the neutron beam shielding rate and identifies said shielding rate as a result-effective variable. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the neutron beam shielding rate to meet the claimed shielding rate since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Kushibe fails to disclose that the gypsum is dihydrate gypsum, wherein, the raw material contains the water reducing agent in a range from 0.05 parts by mass to 2.0 parts by mass with respect to 100 parts by mass of dihydrate gypsum, wherein a specific gravity in a dry condition of the neutron beam shielding gypsum-based building board obtained after the curing is in a range from 0.65 to 1.5.
However, Ataka discloses that the gypsum is dihydrate gypsum (page 3, last paragraph, line 1),
wherein, the raw material contains the water reducing agent in a range from 0.05 parts by mass to 2.0 parts by mass with respect to 100 parts by mass of dihydrate gypsum (page 4, third paragraph from last, line 2), and
wherein a specific gravity in a dry condition of the neutron beam shielding gypsum- based building board obtained after the curing (page 3, last paragraph, line 7) is in a range from 0.65 to 1.5 (page 7, last paragraph, lines 6-7).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kushibe to include that the gypsum is dihydrate gypsum, wherein, the raw material contains the water reducing agent in a range from 0.05 parts by mass to 2.0 parts by mass with respect to 100 parts by mass of dihydrate gypsum, and wherein a specific gravity in a dry condition of the neutron beam shielding gypsum- based building board obtained after the curing is in a range from 0.65 to 1.5, based on the teachings of Ataka that these values ensure that the building board has increased strength (Ataka, page 4, second paragraph from last) while maintaining convenience and cost-effectiveness (Ataka, page 4, paragraph beginning “The present inventors…”).
Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP § 2115. Claim 6 is directed to a method of manufacturing a neutron beam shielding gypsum-based building board, and the prior art teaches all of the claimed manufacturing steps. The limitation “wherein the neutron beam shielding rate is obtained by emitting a point source neutron beam of 25 meV onto a building board having dimensions of 20 cm in length, 20 cm in width, and 20 cm in thickness, and by performing a calculation using a calculation code including Particle and Heavy Ion Transport code System (PHITS) and conversion factors specified in International Commission on Radiological Protection (ICRP) Publication 74” does not impart patentability to the claim because the method of obtaining the shielding rate, including a neutron emitter working on a building board by emitting a beam onto the building board, is not part of the method of manufacturing the claimed neutron beam shielding gypsum-based building board.
Regarding claim 7, Kushibe in view of Ataka as applied to claim 6 discloses the method of manufacturing a neutron beam shielding gypsum-based building board according to claim 6.
In addition, Kushibe discloses that the calcium borate of the boron-containing material is colemanite (page 8, paragraph 3, line 1).
In addition, Ataka discloses that the water reducing agent is one or more kinds selected from a naphthalene-based water reducing agent and a melamine-based water reducing agent (page 4, paragraph 9).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kushibe in view of Ataka to include that the water reducing agent is one or more kinds selected from a naphthalene-based water reducing agent and a melamine-based water reducing agent, based on the additional teachings of Ataka that melamine-based water reducing agents are less expensive than alternative agents (Ataka, page 4, paragraph 9).
Regarding claim 8, Kushibe in view of Ataka as applied to claim 6 discloses the method of manufacturing a neutron beam shielding gypsum-based building board according to claim 6.
In addition, Kushibe discloses that the boron-containing material is boron carbide (page 8, paragraph 3, lines 1-2).
In addition, Ataka discloses that the water reducing agent is one or more kinds selected from a naphthalene-based water reducing agent, a polycarboxylic acid-based water reducing agent, a lignin-based water reducing agent, and a melamine-based water reducing agent (Ataka, page 4, paragraph 9).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kushibe in view of Ataka to include that the water reducing agent is one or more kinds selected from a naphthalene-based water reducing agent, a polycarboxylic acid-based water reducing agent, a lignin-based water reducing agent, and a melamine-based water reducing agent, based on the additional teachings of Ataka that melamine-based water reducing agents are less expensive than alternative agents (Ataka, page 4, paragraph 9).
Regarding claim 13, Kushibe in view of Ataka as applied to claim 6 discloses the method of manufacturing a neutron beam shielding gypsum-based building board according to claim 6.
In addition, Kushibe discloses that the boron-containing material is boron carbide (page 8, paragraph 3, lines 1-2; CAS shows that the chemical formula for boron carbide is B4C).
Kushibe further discloses that a neutron beam shielding rate of the neutron beam shielding gypsum-based building board “exceed[s] 70%” (page 11, paragraph beginning “As shown in Table 1…”, lines 7-8). When a claimed range “overlap[s] or lie[s] inside ranges disclosed by the prior art”, a prima facie case of obviousness exists. See MPEP 2144.05 I; In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the case at hand, the range of greater than 70% disclosed in Kushibe overlaps with the claimed range of “greater than 98%.” Applicant has not shown that the claimed range of “greater than 98%” is critical or produces any unexpected result.
Furthermore, optimizing the shielding rate is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Kushibe teaches that variations in composition and dimensions of the neutron beam shielding gypsum-based building board result in different shielding rates (see, e.g., Kushibe pages 10-11, Examples 1-1 to 1-6). Therefore, the prior art teaches variations in the neutron beam shielding rate and identifies said shielding rate as a result-effective variable. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the neutron beam shielding rate to meet the claimed shielding rate since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kushibe in view of Ataka as applied to claim 6 above, and further in view of Awata et al. (JP Patent No. H09142915 A), hereinafter Awata (English machine translation provided in a prior office action).
Regarding claim 9, Kushibe in view of Ataka as applied to claim 6 discloses the method of manufacturing a neutron beam shielding gypsum-based building board according to claim 6.
Kushibe in view of Ataka fails to disclose that the gypsum slurry is disposed between surface materials in the molding, and wherein the surface material is one kind selected from a base sheet for a board, a fiberglass non-woven fabric, and a glass mat.
However, Awata discloses that the gypsum slurry is disposed between surface materials (page 4, paragraph 7, line 6 discloses pouring the slurry between board base papers, i.e., such that board base papers are located on opposite surface sides of the slurry) in the molding (page 4, paragraph 8), and
wherein the surface material is one kind selected from a base sheet for a board, a fiberglass non-woven fabric, and a glass mat (page 4, paragraph 7, line 6).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kushibe in view of Ataka to include that the gypsum slurry is disposed between surface materials in the molding, and wherein the surface material is one kind selected from a base sheet for a board, a fiberglass non-woven fabric, and a glass mat, based on the teachings of Awata that the base sheets enhance the water repelling properties of the board while maintaining its fireproofing properties (Awata, page 2, paragraphs 4-6).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kushibe in view of Ataka as applied to claim 6 above, and further in view of Yamazaki et al. (“Plaster board, General Incorporated Gypsum Board Industry”, 2016), hereinafter Yamazaki (English machine translation provided in a prior office action).
Regarding claim 10, Kushibe in view of Ataka as applied to claim 6 discloses the method of manufacturing a neutron beam shielding gypsum-based building board according to claim 6.
Kushibe in view of Ataka fails to disclose that the neutron beam shielding gypsum-based building board obtained after the curing has a second grade exothermic property or higher.
However, Yamazaki discloses that the neutron beam shielding gypsum-based building board obtained after the curing has a second grade exothermic property or higher (page 1, Table 2-3, row 1).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Kushibe in view of Ataka to include that the neutron beam shielding gypsum-based building board obtained after the curing has a second grade exothermic property or higher, based on the teachings of Yamazaki that a second or higher grade exothermic property is equivalent to a second or higher grade flame retardant property, which enhances the safety standards of the building board (Yamazaki, page 1, Table 2-3, row 1).
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 ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
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/A.K./Examiner, Art Unit 2881
/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 MPEP 2115 recites “n Otto, the claims were directed to a core member for hair curlers (i.e., a particular device) and a method of making the core member (i.e., a particular method of making that device) and "not to a method of curling hair wherein th[e] particular device is used." 312 F.2d at 940. The court held that patentability of the claims cannot be based "upon a certain procedure for curling hair using th[e] device and involving a number of steps in the process." The court noted that "the process is irrelevant as is the recitation involving the hair being wound around the core" in terms of determining patentability of the particular device. Id. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.”
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