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 .
Status of Application
Claims 1-16 are pending. Claims 13-16 are withdrawn. Claims 1-12 are presented for examination.
Election/Restrictions
Claims 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/31/2025.
Applicant's election with traverse of claims 1-12 in the reply filed on 12/31/2025 is acknowledged. The traversal is on the ground(s) that the International Search Authority found unity. This is not found persuasive because the Examiner is not bound by any decision of the International Search Authority in this US National Stage Application. The Examiner has outlined the reasons for why the inventions lack unity given that the common technical feature is not novel in the Restriction requirement mailed 11/6/2025. Furthermore, Applicant has not provided any explanation as to why the requirement is improper.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112(b)
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.
1. Claims 3 and 6-11 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.
Regarding claim 3, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 7 the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 8, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 9, the phrases "preferably" and “most preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
2. Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 recites that the substrate may be mineral or non-mineral and/or absorbing or non-absorbing. However, this would cover every type of possible substrate. Therefore, the dependent claims fails to provide a further limitation of the subject matter of parent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
3. Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Clark et al. (U.S. PGPUB No. 2020/0332228).
Regarding claims 1-10, Clark teaches a coating method comprising: applying a primer coating on a sandstone (a type of mineral masonry substrate) (0142), wherein the primer is an aqueous solution of a pre-gelatinized unmodified corn starch (0049 and 0142); drying (0142); then application of a coating layer on the primer coating (0142); and then drying the applied coating layer (0142 and claim 8). Clark teaches the aqueous solution comprising 97 wt% water and the dried primer comprising 100 wt% of the starch (0142). Additionally, Clark teaches that the primer may comprise sucrose as a plasticizer (0078 and claim 4), the primer prepared by adding water to the solid starch (claim 13), and the drying can be done for about 2 hours (claim 8). Clark teaches all the critical limitations of claims 1-10; therefore, Clark anticipates the claims.
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.
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.
4. Claim(s) 1-7, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dietz et al. (WO 2019/206444) in view of Schmidt (“How to Spackle Walls”).
Regarding claims 1-7, 11 and 12, Dietz teaches a process comprising: preparing an aqueous composition (page 10, lines 17-19) comprising a pre-gelatinized starch (claim 4), such as a drum dried starch (claim 3), wherein the starch can be an unmodified pre-gelatinized wheat starch (claim 4) and a filler additive (claim 7) by adding water to the solid starch (page 10, lines 17-19). Dietz teaches that the composition can be used on mineral gypsum plasterboard (page 12, lines 3-4) and that the composition can be used as a spackling compound (claim 17). Dietz fails to teach a process of applying the composition as a primer followed by application and drying of a filler coating.
However, Dietz teaches the use of the composition as a spackling compound (see above). Further, Schmidt teaches that spackling compound can be applied in a first layer, followed by drying (consistent with a primer) and then application of a second filler layer of the spackling compound by filling and drying to fill holes in plasterboard (see How to Apply Spackle to Walls section). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Dietz’ process by using Dietz’ composition as a spackle by applying a first priming layer of the composition, followed by drying and filling/application and drying of a second filler coating of the spackle composition as disclosed by Schmidt. One would have been motivated to make this modification to allow for a practical use of Dietz’s spackle formulation for repairing plasterboard.
Conclusion
Claims 1-16 are pending.
Claims 13-16 are withdrawn.
Claims 1-12 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
March 6, 2026 Primary Examiner, Art Unit 1717