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 amendment to the claims filed August 29, 2025, have been entered. Claims 1-13 are currently amended. Claims 14-16 are new. Claims 7-13 are withdrawn. The amendment necessitated the new grounds of rejection.
Claim Objections
Claims 2-6, and 14-16 are objected to because of the following informalities: the claims recite -inter alia- “according to Claim 1”, for example. The claims should be amended to remove the capital letter “C”, e.g., - - according to claim 1 - -. Similarly, the withdrawn claims should be amended for the same reason. Appropriate correction is required.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 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:
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.
Claim(s) 1 – 6, and 14 – 16 are rejected under 35 U.S.C. 103 as being unpatentable over Yamazaki et al. (US 2009/0243149 A1; of record), in view of SHIROMOTO et al. (JP 2016180210 A).
Regarding claim 1. Yamazaki et al. teaches an inorganic board manufacturing method [0002], [0022] – [0024], [0070] – [0089] comprising:
a first depositing step (FIG. 3C and/or FIG. 4C) of depositing a first raw material (e.g., “core layer raw material mixture F” [0075], [0079]) containing a first inorganic material with hydraulic properties (e.g., see [0026], [0036], [0053]) and a first reinforcing material (e.g., see [0010], [0036]) on a receiving plate (e.g., C or D) to form a first raw material mat F including a first layer (i.e., “surface layer raw material mixture E”, see FIG. 3C and/or FIG. 4C, [0075], [0079]),
a first pressing step (see the annotated copy of Yamazaki’s FIG. 4D below):
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In the above annotated figure, the annotations were added by the examiner to facilitate the discussion of Yamazaki. In the above figure, a first pressing step of locally pressing a first portion P1 and a second portion P2 of the first raw material mat (“core layer raw material mixture F” [0079]) toward the receiving plate D from a side opposite the receiving plate D to compress the first portion P1 and the second portion P2, the first portion P1 and the second portion P2 being one end portion and the other end portion, respectively, of the first raw material mat in a first direction (see the above annotated figure);
a second depositing step (e.g., see FIG. 3G and/or FIG. 4G) of depositing a second raw material (e.g., “surface layer raw material mixture E” [0075], [0079]) containing a second inorganic material with hydraulic properties (e.g., see [0026], [0036], [0053]) and a second reinforcing material [0053] on the first raw material mat to form a second raw material mat including the first layer and a second layer (e.g., see FIG. 3G and/or FIG. 4G, [0075], [0079]),
a planarizing step of planarizing an exposed surface of the second raw material mat, the exposed surface being opposite the receiving plate (Yamazaki [0075] discloses “the mat including the pressurized portions E1 and F1 is brought into light contact with the surface of the brush (not shown) provided above the conveyance path, or subjected to air blowing, while conveying the mat, thereby obtaining a mat whose surface has been leveled [analogous to the claimed planarizing step], as shown in FIG. 3E. Note that, in order to achieve a leveled surface, portions other than E1 and F1 that are higher than E1 and F1 may be scraped off with a brush or air (not shown) to level the surface of the mat.”),
a second pressing step (FIG. 3H and/or FIG. 4H) of placing a pressing plate (e.g., flat pressing plate D FIG. 3H and/or template C FIG. 4H) on the second raw material mat E, and overall pressing the second raw material mat between the receiving plate and the pressing plate (e.g., see FIG. 3H [0076] and or FIG. 4H [0079]),
a curing step (FIG. 3H and/or FIG.4H) of curing the second raw material mat E in a state pressing the second raw material mat E between the receiving plate (D and or C) and the pressing plate (D and or C) to form a cured plate from the second raw material mat E (e.g., see [0092] “The wood cement board was subjected to autoclave curing at 165 °C under 6 kgf/cm2 for six hours”, and FIG. 3H and/or FIG. 4H “Press and cure” and [0076] “the mat is pressurized together with the template C, followed by hardening and curing” and/or [0079] “followed by pressing, and hardening and curing”).
Yamazaki et al. does not specifically disclose that in the planarizing step the exposed surface being planarized is of the second raw material mat (i.e., Yamazaki discloses leveling the surface of layer F after pressurization FIGs. 4D-4F and before the second depositing step FIG. 4G). Yamazaki, however, discloses that portions other than E1 and F1 that are higher than E1 and F1 may be scrapped off to obtain a mat whose surface has been leveled [0075].
However, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to rearrange the planarizing step in the method of Yamazaki so that a second deposition step is performed before the planarizing step, such a rearrangement is within the skillset of one of ordinary skill in the art, and would have done no more than yield predictable results, since “In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes” (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). See MPEP 2144.04 (IV)(C).
Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
Yamazaki et al. does not specifically disclose a processing step of processing portions corresponding to the first portion and the second portion into a first back-side joint part and a first front-side joint part, respectively, wherein each of the first back-side joint part and the first front-side joint part includes a stepped shape portion, wherein at least a surface portion of the stepped shape portion in the first direction is made from the first layer.
SHIRAMOTO et al., in the same field of endeavor of inorganic material-based building board manufacturing methods (Abstract), discloses that the building board 1 includes a core layer 2 formed from a molding material containing a hydraulic inorganic material (lines 175-194), and a skin layer 3 (lines 195-211) formed from a molding material containing a hydraulic inorganic material covering the core layer 2 (lines 55-57), the board is provided with the real parts 31 and 32 which are formed along the long side which opposes, for example, as shown to FIG. 1A (lines 71-75), and/or real part 31 and a real part 32 may be formed along opposing long sides, as shown in FIG. 3A (lines 110-117). SHIRAMOTO (lines 76-78) discloses that “When installing a plurality of building boards 1 shown in FIG. 1A side by side, for example, as shown in FIG. 1B, a real part 31 of one building board 1 of two adjacent building boards 1 and a real part 32 of the other building board 1 is installed on the base 6 in a state where it is joined.” See the annotated copy of SHIRAMOTO’s FIG. 1A below):
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In the above annotated figure, the annotations were added by the examiner to facilitate the discussion of SHIRAMOTO. In the above figure, FJP1 is a first front-side joint part, and BJP1 is a first back-side joint part, wherein each of the first back-side joint part BJP1 and the first front-side joint part FJP1 includes a stepped shape portion, wherein at least a surface portion of the stepped shape portion in the first direction is made from the first layer (i.e., skin layer 3), and are formed after drying/curing the molded board (lines 239-240), by for example, cutting the opposing long sides of the dried molded body (lines 240-249).
SHIRAMOTO discloses that forming the real part 31, 32 of the same material as the skin layer 3 [analogous to the first layer E of Yamazaki in composition, as discussed in page 3 above i.e., “surface layer raw material mixture E”], and that the bending strength of the cured material of the skin material can be adjusted to 5 MPa or more by an appropriate method such as selection of the component contained in the skin material and adjustment of the amount of the component (lines 209-211), and “Since the bending strength of the cured product is 5 MPa or more, the strength of the real part 31 and the real part 32 is sufficiently ensured. Therefore, even if a strong wind or the like applies a negative pressure to the two building boards 1 shown in FIG. 3B and a strong force is applied from the fixture 5 to the real part 31 and the real part 32, the crack 7 shown in FIG. 2. The real part 31 or the real part 32 is hardly damaged.” (lines 94-109, 387-389)
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify in the same way, the inorganic board manufacturing method of Yamazaki et al. with the processing step of SHIRAMOTO et al. (lines 239-249) of processing portions corresponding to the first portion and the second portion into a first back-side joint part and a first front-side joint part, respectively, wherein each of the first back-side joint part and the first front-side joint part includes a stepped shape portion, for example, by cutting, as suggested by SHIRAMOTO et al., and wherein at least a surface portion of the stepped shape portion in the first direction is made from the first layer, as suggested by SHIRAMOTO (see SHIRAMOTO’s FIG. 1A, e.g., by adapting Yamazaki’s “surface layer raw material mixture E” comprising an analogous composition to SHIRAMOTO’s skin layer 3 [SHIRAMOTO’s lines 195-211]), as suggested by SHIRAMOTO in lines 209-211, for the purpose of providing the board with the capability of being installed on e.g., a base/wall in a state where it is joined to another board of two adjacent boards by the arrangement of the real parts 31 and 32 being joined, as taught by SHIRAMOTO et al. FIG. 1B and lines 76-78, since SHIRAMOTO et al. teaches that said composition of the skin layer 3 forming the real part 31 or the real part 32 results in the real part 31, 32 being hardly damaged when stressed (SHIRAMOTO’s lines 94-109, 387-389). See MPEP 2143(I)(G).
Regarding claim 2. Yamazaki/SHIRAMOTO teaches inorganic board manufacturing method according to claim 1, wherein the first pressing step includes locally-pressing a third portion and a fourth portion of the first raw material mat toward the receiving plate from the side opposite the receiving plate to compress the third portion and the fourth portion (e.g., see Yamazaki’s FIG. 7, wherein e.g., one of the two vertical pressed portion could be a third and fourth portion), the third portion and the fourth portion being one end portion and the other end portion, respectively, of the first raw material mat in a second direction crossing the first direction (see the below
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annotated copy of Yamazaki’s FIG. 7):
and the processing step includes processing portions corresponding to the third portion and the fourth portion into a second back-side joint part and a second front-side joint part, respectively, wherein each of the second back-side joint part and the second front-side joint part includes a stepped shape portion (e.g., SHIRAMOTO discloses that the processing step, e.g., processing the stepped real shapes 31,32, by cutting, so that the real parts 31 and 32 can be formed along the long side which opposes, for example, as shown to FIG. 1A (lines 71-75), and/or real part 31 and a real part 32 may be formed along opposing long sides, as shown in FIG. 3A (lines 110-117), wherein at least a surface portion of the stepped shape portion in the second direction is made from the first layer (e.g., made of the modified surface layer E of Yamazaki in view of the skin layer 3 of SHIRAMOTO, for the same reasons as discussed in claim 1 above).
Regarding claim 3. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 1, wherein the first pressing step includes locally pressing a fifth portion (e.g., see Yamazaki’s FIG. 7, wherein e.g., one of the two horizontal pressed portion could be a fifth portion) of the first raw material mat toward the receiving plate from the side opposite the receiving plate to compress the fifth portion, the fifth portion being a part of a region lying between the first portion and the second portion of the first raw material mat in the first direction (see Yamazaki’s FIG. 7).
Regarding claim 4. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 2, wherein the first pressing step includes locally pressing a sixth portion (e.g., see Yamazaki’s FIG. 7, wherein e.g., one of the two horizontal pressed portion could be a sixth portion) of the first raw material mat toward the receiving plate from the side opposite the receiving plate to compress the fifth portion, the sixth portion being a part of a region lying between the third portion and the fourth portion of the first raw material mat in the first direction (see Yamazaki’s FIG. 7).
Regarding claim 5. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 1, further comprising at least one third depositing step of depositing a third raw material containing a third inorganic material with hydraulic properties and a third reinforcing material to form a third layer, wherein
(A)
i) the third depositing step forms the third layer on the receiving plate before the first depositing step, and the first depositing step forms the first layer on the third layer to form the first raw material mat (the examiner notes that this scenario is described in e.g., Yamazaki’s FIG. 3A-H, wherein FIG. 3B shows a third depositing step forming the layer E on the receiving plate C before the first depositing step for material F (FIG. 3C), and the first depositing step for material F forms the layer F on the layer E to form the first raw material mat F+E).
Furthermore, changing the deposit order for the depositing steps would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, since “In general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held to be not patentably distinguish the processes” (e.g., Ex parte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959); In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930)). See MPEP 2144.04 (IV)(C).
Regarding claim 6. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 1, wherein the receiving plate and/or the pressing plate is a template having an indented surface (see Yamazaki et al. FIG. 3A and [0074] “First, a template C provided with recesses C1 corresponding to portions on which projections are formed is placed on a conveyer”, and/or FIG. 4H).
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Regarding claim 14. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 1, (see the annotated copy of SHIRAMOTO’s FIG. 1A below):
In the above annotated figure, the annotations were added by the examiner to facilitate the discussion of SHIRAMOTO. In the above figure, the first back-side joint part BJP1 includes a first base portion (see T2) having a thickness equal to or greater than a thickness (see T4) of a first inner portion adjacent to the first back-side joint part BJP1, and a first extending portion (e.g., 32) extending in the first direction from the first base portion (e.g., from T2), the first extending portion being thinner than the first base portion to form the stepped shape portion made from the first layer (see figure above); and the first front-side joint part FJP1 includes a second base portion (see T1) having a thickness equal to or greater than a thickness (see T3) of a second inner portion adjacent to the first front-side joint part FJP1, and a second extending portion (e.g., 31) extending in the first direction from the second base portion (e.g., from T1) the second extending portion (31) being thinner than the second base portion (T1) to form the stepped shape portion made from the first layer (see figure above).
Regarding claim 15. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 14, wherein the second extending portion is formed from only the first layer.
Regarding claim 16. Yamazaki/SHIRAMOTO teaches the inorganic board manufacturing method according to claim 1, wherein the first raw material (e.g., Yamazaki’s core material F) and the second raw material (e.g., Yamazaki’s surface material E) are different raw materials (see the discussion of claim 1 above).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-6 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. Further, Applicant’s arguments are based on newly amended limitations which have been addressed by the new grounds of rejection above.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., Applicant argues that Yamazaki is distinguishable from the invention disclosed in claim 1 at least because Yamazaki does not describe, teach or suggest a technical concept of improving water resistance by working on the inner portions, Remarks page 7-8), are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, this assertion is misdirected, as it is not commensurate in scope with the claims. As currently amended, there is no limitation in claim 1 that can be construed as any technical concept of improving water resistance by working on the inner portions (there is also no recitations of “inner portions”).
In response to applicant's arguments against the references individually (i.e., Applicant’s argument against NPL’1 individually, arguing that NPL’1 “does not disclose any manufacturing method for the tongue and groove joint portions”, fails to address the merits of the rejection as a whole of what the combined teachings of the references would have suggested to those of ordinary skill in the art), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Absent persuasive evidence or arguments, the examiner submits the claims would need to be further amended to overcome the prima facie case.
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.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
IKEDA et al. (US 2022/0176588 A1, with earlier foreign priority to JP 2019-065834): Directed to an apparatus and a method for manufacturing a building material such as a building board. [0001], [0023] “By heat-pressing such a raw material mat, it is possible to manufacture from the raw material mat a building material in which difference in density of texture between a part where a depression is formed in a building material design surface and a part where a protrusion is formed on the building material design surface is suppressed, that is, a building material having low nonuniformity in density. A building material having low nonuniformity in density is resistant to cracking and thus is preferable.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGAREDMANUEL TROCHE whose telephone number is (571)272-9766. The examiner can normally be reached M-F 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742