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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/27/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 01/27/2026.
Claims 1-4 and 7-20 are presently pending; claims 5-6 are canceled; claims 14-20 are withdrawn; claims 1, 3 and 9 are amended; claims 1-4 and 7-13 are under examination.
The rejections of claim 9 under 35 U.S.C 112(b) and 112(d) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejection of claims 1-4 and 7-13 over BEDWELL in view of DUBEY is maintained.
New grounds of rejection are present herein in light of the amendments to the claims.
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 1-4 and 7-13 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.
With respect to claim 1, it is noted that the amendment to claim 1 includes the limitation “wherein the composition has a shorter drying time and reduced expansion…” (see claim 1 at lines 16-19). Claim 1 is directed to a composition which is a dry mixture (see claim 1 at lines 1-2). As such, while the specification discloses a gypsum cement slurry and underlayment having a shorter drying time and reduced expansion during drying (see the present specification at paragraphs [0030]-[0031] and [0069]), the Examiner has been unable to locate any disclosure that would support a dry mixture as claimed having a shortened drying time or reduced expansion while drying.
Claims 2-4 and 7-13 are included herein as each depends from a claim which is rejected for reasons set forth above.
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 1-4 and 7-13 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 1 recites the limitation “A composition… wherein the composition is a dry mixture… wherein the composition has a shorter drying time and reduced expansion in comparison to a composition which does not comprise the expanded perlite and does not comprise one or more of the calcium aluminate and the calcium sulfoaluminate cement” (see claim 1 at lines 1-2 and 16-19). It is not clear how a dry mixture could have a shorter drying time (and reduced expansion during drying) than another dry mixture, as the mixture is already dry.
For purposes of examination, Examiner treated this limitation as meaning that when the dry mixture composition is mixed with water to form a slurry and/or a cementitious gypsum underlayment, the slurry/underlayment has a shorter drying time and reduced expansion in comparison to a slurry/underlayment which does not comprise the expanded perlite and one or more of the calcium aluminate and calcium sulfoaluminate cement, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraphs [0030]-[0031] and [0069]. This limitation appears to be directed toward an intended use of the dry mixture rather than being directed toward the dry mixture itself, and is therefore not treated as limiting the claimed dry mixture. The present claims are directed toward a dry mixture composition, not to a gypsum slurry/underlayment or method of making a gypsum underlayment. Any dry mixture according to the present claims would be expected to be able to perform the intended use of being mixed with water to form a gypsum slurry/underlayment having a shorter drying time and reduced expansion.
Claims 2-4 and 7-13 are included herein as each depends from a claim which is indefinite for the reasons set forth above.
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.
Claims 1-4 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bedwell, et al. (U.S. Pub. No. 2006/0280970-A1) (hereinafter, “BEDWELL”) in view of Dubey, et al. (U.S. Pat. No. 8,038,790-B1) (hereinafter, “DUBEY”).
Regarding claim 1, BEDWELL teaches a composition for cementitious gypsum underlayment (although “for cementitious gypsum underlayment” is merely a recitation of intended use which is not considered to limit the present claim, see BEDWELL at Abstract and paragraph [0051] teaching using the composition for underlayment) wherein the composition is a dry mixture (see BEDWELL at Abstract and paragraph [0018]) and comprises:
a) stucco (see BEDWELL at Abstract and paragraph [0018]);
b) perlite (see BEDWELL at paragraph [0046]);
c) 2-10 wt% Portland cement (see BEDWELL at paragraphs [0023]-[0024], teaching 1.7% to 50% by weight of hydraulic cements, e.g., Portland cement; e.g., BEDWELL includes example compositions comprising approximately 5 wt% hydraulic cement based on the dry mixture, such as approximately 5 wt% Type I cement in Table III-B);
d) a plasticizer comprising a polycarboxylate ether (PCE) dispersant in an amount overlapping with and thereby rendering obvious the claimed range of from about 0.1 wt% to about 1 wt% (see BEDWELL at Abstract, teaching 0.2 to 10% by weight of a polycarboxylate dispersant with polyether repeating unit, i.e., a polycarboxylate ether);
e) a stabilizer comprising one or more polysaccharide gums (see BEDWELL at paragraphs [0043]-[0044]); and
f) a defoamer (see BEDWELL at paragraph [0038]).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (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)).
BEDWELL teaches a mixture of hydraulic cements in an amount of 1.7% to 50% by weight, e.g., 5% by weight (see BEDWELL at paragraphs [0023]-[0024] and Tables I and III), but fails to explicitly mention calcium aluminate cement and/or calcium sulfoaluminate cement; BEDWELL also fails to explicitly mention that the perlite is expanded perlite having particle sizes ranging from about 1 μm to about 150 μm and having an average particle size less than 45 μm in an amount ranging from about 0.5 wt% to about 15 wt%.
DUBEY teaches a gypsum-cement composition (see DUBEY at col. 1, lines 10-15) comprising a hydraulic cement which includes Portland cement and high alumina cement (i.e., calcium aluminate cement) or calcium sulfoaluminate cement (see DUBEY at col. 10, lines 19-36) and 7 to 15% by dry weight of expanded perlite coated with silane, siloxane and/or silicone, having a particle size of 1-150 microns, median particle diameter of 20-60 microns, and density of less than 0.5 g/cc, e.g., SIL-CELL 35-34 perlite, which has an average diameter of 40 μm as discussed in paragraph [00123] of Applicant’s specification (see DUBEY at Abstract, col. 3, lines 27-29, col. 13, lines 51-54, col. 14, lines 56-64 and Table 1A). DUBEY teaches that using this type of expanded perlite in this amount provides a composition having reduced moisture absorption, improved wet durability and enhanced stability while maintaining the same levels of mechanical performance properties (see DUBEY at col. 3, lines 14-26).
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 the composition of BEDWELL by including calcium sulfoaluminate cement as one of the hydraulic cements (which are included in a total amount of 1.7% to 50%, e.g., 5%, by weight, overlapping with and thereby rendering obvious the claimed range of 1-5 wt%; see BEDWELL at paragraphs [0023]-[0024] and Tables I and III), as taught by DUBEY (see DUBEY at col. 10, lines 19-36), and by simply substituting the unspecified type/amount of perlite with 7 to 15% by dry weight of the expanded coated perlite having a particle size of 1 to 150 μm and a median particle size of 20-60 microns, e.g., the perlite having an average particle size of 40 μm, taught by DUBEY (see DUBEY at Abstract, col. 3, lines 27-29, col. 13, lines 51-54, col. 14, lines 56-64, and Table 1A). One of ordinary skill in the art could have used calcium aluminate or calcium sulfoaluminate cement as one of the hydraulic cements with a reasonable expectation of success, yielding the predictable results of providing a hydraulic cement which will set and harden by chemical interaction with water (see DUBEY at col. 10, lines 27-36). Further, DUBEY teaches that calcium aluminate (i.e., high alumina) and calcium sulfoaluminate cements are known hydraulic cements in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”. One of ordinary skill in the art could also have substituted the unspecified perlite with 7 to 15% by dry weight of the expanded coated perlite with a reasonable expectation of success, yielding the predictable result of providing perlite suitable for use in a gypsum-cement composition, and would have been motivated to do so for the benefit of forming a composition having reduced moisture absorption, improved wet durability and enhanced stability while maintaining the same levels of mechanical performance properties (see DUBEY at col. 3, lines 14-26).
DUBEY fails to explicitly mention using calcium aluminate/calcium sulfoaluminate cement in an amount of 1-5 wt%. However, as discussed above, BEDWELL teaches using a total of 1.7 to 50% hydraulic cement, e.g., 5% (see BEDWELL at paragraphs [0023]-[0024] and Tables I and III), which overlaps with the ranges of claim 1. BEDWELL further teaches that the content of hydraulic components affects water required for hydration of the dry mixture (see BEDWELL at paragraph [0035]), and DUBEY teaches that the amount of high-alumina cement (i.e., calcium aluminate cement) used influences hydration characteristics of the binder, and that calcium sulfoaluminate cement has low alkalinity, i.e., changing the content will change the alkalinity of the binder (see DUBEY at col. 2, lines 37-40 and col. 11, lines 2-3). BEDWELL and DUBEY therefore explicitly teach that the amounts of Portland cement and calcium aluminate or calcium sulfoaluminate cement are result-effective variables which may be optimized by one of ordinary skill in the art. MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II). Therefore, it would have been obvious to one of ordinary skill in the art to vary the amount of Portland cement and calcium aluminate or calcium sulfoaluminate cement, through routine experimentation and optimization, to achieve desired properties of the mixture such as hydration characteristics and alkalinity.
As discussed in the 112(b) rejection above, the recitation in claim 1 of “wherein the composition has a shorter drying time in comparison to a composition which does not comprise the expanded perlite and does not comprise one or more of the calcium aluminate and the calcium sulfoaluminate cement” is merely directed toward an intended use of the composition rather than being directed toward the composition itself, and is therefore not considered to limit the present product claim. The present claim is directed to a dry mixture composition, not to a slurry/gypsum underlayment or to a method of making a gypsum underlayment. As set forth above, BEDWELL in view of DUBEY teaches a composition according to claim 1, therefore the composition of BEDWELL in view of DUBEY would be expected to be able to perform the intended use of being mixed with at least water and used to form a slurry / cementitious gypsum underlayment having reduced drying time and expansion during drying. MPEP § 2112.01 (I) states that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present.
Regarding claim 2, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the expanded perlite is coated with a silicone, silane or siloxane coating (see DUBEY at col. 13, lines 51-54).
Regarding claim 3, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the expanded perlite is coated with a silicone, silane or siloxane coating (see DUBEY at col. 13, lines 51-54),
and has a relative density overlapping with and thereby rendering obvious the claimed range of from about 0.112 g/cm3 to about 0.350 g/cm3 (see DUBEY at Abstract, teaching a density of less than 0.5 g/ cm3).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (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)).
Regarding claim 4, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the expanded perlite is coated with an organometallic silane monomer coating or an organometallic silicone polymer coating (see DUBEY at col. 13, lines 30-35, teaching silicone, silane or siloxane coatings, e.g., polydimethylsiloxane, which is an organometallic silicone polymer).
Regarding claim 7, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the stabilizer comprises diutan gum (see BEDWELL at claim 5).
Regarding claim 8, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the polysaccharide gum includes one or more of the following: xanthan gum, welan gum and/or diutan gum (see BEDWELL at paragraphs [0043]-[0044] and claim 5).
Regarding claim 9, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the composition consists essentially of:
- stucco in an amount overlapping with and thereby rendering obvious the claimed range of 82-90 wt% (see BEDWELL at Abstract and paragraph [0018], teaching 88 to 95% by weight of stucco);
- 1-15 wt% expanded perlite (see DUBEY at Table 1A, teaching 7 to 15% by weight expanded perlite) having an average particle size overlapping with and thereby rendering obvious the claimed range of from about 30 to about 37 μm (see DUBEY at Abstract, col. 3, lines 27-29, and col. 13, lines 51-54, teaching a particle size of 1-150 microns and a median diameter of 20-60 microns) and having a relative density overlapping with and thereby rendering obvious the claimed range of from about 0.244 g/cm3 to about 0.350 g/cm3 (see DUBEY at Abstract, teaching a density of less than 0.5 g/cm3);
- Portland cement in an amount overlapping with and thereby rendering obvious the claimed range of 2-10 wt% (see BEDWELL at paragraphs [0023]-[0024] and Tables I and III, teaching 1.7% to 50%, e.g., 5%, by weight of a hydraulic cement, e.g., Portland cement; as discussed in the rejection of claim 1 above, the claimed amounts of Portland cement and calcium aluminate or calcium sulfoaluminate cement would be obvious to one of ordinary skill in the art as they are a matter of routine experimentation and optimization of result-effective variables; see MPEP § 2144.05 (II));
- calcium sulfoaluminate cement in an amount overlapping with and thereby rendering obvious the claimed range of 1-5 wt% (see BEDWELL at paragraphs [0023]-[0024] and Tables I and III; see DUBEY at col. 10, lines 19-36; as discussed in the rejection of claim 1 above, the claimed amounts of Portland cement and calcium aluminate or calcium sulfoaluminate cement would be obvious to one of ordinary skill in the art as they are a matter of routine experimentation and optimization of result-effective variables; see MPEP § 2144.05 (II))
- polycarboxylate ether (PCE) based dispersant in an amount overlapping with and thereby rendering obvious the claimed range of 0.1-1 wt% (see BEDWELL at Abstract, teaching 0.2 to 10% by weight of a polycarboxylate dispersant with polyether repeating unit, i.e., a polycarboxylate ether);
- polysaccharide gum in an amount overlapping with and thereby rendering obvious the claimed range of 0.01-0.1 wt% (see BEDWELL at paragraphs [0043]-[0044], teaching 0.0006 to 5% by weight polysaccharide gum); and
- 0.1-0.5 wt% defoamer (see BEDWELL at paragraph [0038], teaching 0.5% by weight defoamer).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (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)).
MPEP states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 10, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the composition further comprises at least one of the following: a set accelerator, a set retarding agent, or any combination thereof (see BEDWELL at paragraphs [0008] and [0040]-[0041], teaching accelerators and retarders).
Regarding claim 11, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the composition further comprises sand, and wherein the a ratio of sand to the other components of the composition by weight overlaps with and thereby renders obvious the claimed range from about 1:1 w/w to about 4:1 w/w (see BEDWELL at paragraph [0046], teaching including sand in an amount of up to 300 wt% of the aggregate-free (i.e., sand-free) components on a dry basis, i.e., a ratio as claimed of up to 3:1 w/w).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (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)).
Regarding claim 12, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the composition further comprises one or more of the following aggregates: sand, lime, rock, gravel, silica fume, clay, pumice, vermiculite, fly ash, slag, or any combination thereof (see BEDWELL at paragraphs [0023] and [0046]).
Regarding claim 13, as applied to claim 1 above, BEDWELL in view of DUBEY teaches a composition according to claim 1, wherein the composition further comprises hollow microspheres (see BEDWELL at paragraph [0046]). However, BEDWELL fails to explicitly mention that the hollow microspheres are hollow glass microspheres.
DUBEY teaches a gypsum-cement composition (see DUBEY at col. 1, lines 10-15) comprising hollow glass microspheres which are used with the coated expanded perlite (see DUBEY at col. 5, lines 55-57).
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 further modified the composition of BEDWELL in view of DUBEY by simply substituting the unspecified hollow microspheres with hollow glass microspheres as taught by DUBEY (see DUBEY at col. 5, lines 55-57). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of providing hollow microspheres which are suitable for use in a gypsum-cement composition comprising perlite. Further, DUBEY teaches that hollow glass microspheres are a known type of hollow microsphere in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Bedwell does not disclose the specific range of 1-10 wt% for Portland cement” (see Remarks at pg. 8).
“There is no disclosure in Dubey of an amount range specifically for calcium aluminate cement, calcium sulfoaluminate cement, or a combination” (see Remarks at pg. 9).
“Table 1 in Dubey… hydraulic cement being used typically in an amount from 15 to 60% by weight, and preferably 20-50% by weight… a person of skill is motivated to increase the amount of hydraulic cement because Dubey teaches larger amounts than Bedwell… Dubey teaches increasing amounts of cement in comparison to Bedwell (see Remarks at pg. 8-9 and 11).
“As to the perlite, the cited art does not teach or suggest to a person of skill that it is crucial to decrease the average diameter, as claimed” (see Remarks at pg. 11).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present claims are nonobvious because Bedwell does not disclose 1-10 wt% Portland cement and Dubey does not disclose an amount of calcium aluminate and/or sulfoaluminate cement, the examiner respectfully disagrees. As set forth in the rejection above, BEDWELL explicitly teaches using 1.7 to 50 wt% of hydraulic cements including Portland cement, e.g., 5 wt% cement, such as Portland cement (see BEDWELL at paragraphs [0023]-[0024] and Tables I and III), and BEDWELL and DUBEY teach that the amounts of Portland cement and calcium aluminate or sulfoaluminate cement are result-effective variables which can be optimized by one of ordinary skill in the art (see BEDWELL at paragraph [0035]; see DUBEY at col. 2, lines 37-40 and col. 11, lines 2-3). As set forth in MPEP § 2144.05, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists (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)). MPEP § 2144.05 (II) states that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (In re Aller, 220 F.2d 454, 456 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). One of ordinary skill in the art could have achieved the claimed amounts of the two cements through routine experimentation and optimization.
In response to Applicant’s argument that the claimed invention is not obvious because DUBEY teaches increasing the amount of cement, the Examiner respectfully disagrees. As discussed above, BEDWELL teaches a total of 1.7 to 50 wt% of hydraulic cements, and as shown in Table 1 of DUBEY included in Applicant’s Remarks, DUBEY teaches a total of 10 to 75 wt% of hydraulic cement. These ranges overlap with each other, and with the claimed ranges, as the total amount of hydraulic cement in the claimed invention is 3 to 15 wt%. Further, as set forth in the rejection above, BEDWELL teaches a total amount of hydraulic cement including Portland cement, and DUBEY teaches a mixture of Portland cement and calcium aluminate or calcium sulfoaluminate cement, and it is the combination of the references which renders the claimed invention obvious. One of ordinary skill in the art could have simply substituted Portland cement for a mixture of Portland and calcium aluminate/sulfoaluminate cement, which is used in an amount of up to 50 wt%, e.g., 5 wt%, as taught by BEDWELL, and the claimed ranges of each cement is an obvious matter of routine experimentation and optimization of result-effective variables as discussed above.
In response to Applicant’s argument that the cited art does not teach or suggest the claimed perlite diameter, the Examiner respectfully disagrees, as DUBEY explicitly teaches the claimed perlite diameter range and average diameter; see the rejection of claim 1 above.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“it has been unexpectedly found that supplementing or replacing Portland cement with calcium aluminate cement (CAC) and/or calcium sulfoaluminate cement decreases significantly the drying time and increases the compressive strength of a stucco-cement composition comprising the expanded perlite according to this disclosure as well as reduces the expansion of drying underlayment… the present claims recite particular ranges to two different cement types, specifically: ii) 1-10 wt% Portland cement, and 1-5 wt% of one or more of the following: calcium aluminate cement, calcium sulfoaluminate cement…… the present specification demonstrates the criticality and unexpected results for the particular combination of the two types of cements and the expanded perlite… As can be seen in Table 4 and Fig. 3, the claimed composition has a shortened drying time, e.g., by 20%, and decreased expansion during drying… Regarding claim 9, this claim further provides a particular combination with particular ranges of amounts as claimed, which… are critical for decreasing the drying time and expansion. This result is highly unexpected because the cited art does not disclose or suggest what parameters may be critical for decreasing a drying time of a composition for cementitious gypsum underlayment” (see Remarks at pg. 7 and 9-12).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is nonobvious because the composition having the critical claimed ranges of components displays unexpected results, the Examiner respectfully disagrees. As shown above, Applicant’s Remarks regarding the alleged unexpected results are contradictory, first stating that supplementing or replacing the Portland cement provides the unexpected results, and then stating that the claimed range of 2-10 wt% Portland cement is critical in achieving the unexpected results. It is not clear how the claimed range of Portland cement could be a critical range when Applicant states that entirely replacing the Portland cement, i.e., using no Portland cement, also achieves the alleged unexpected results.
Further, the unexpected results alleged by Applicant are not commensurate in scope with the claimed composition. Allegations of unexpected results are discussed in MPEP 716.02. The results shown in Table 4 and Fig. 3 of the present application are data for a slurry composition comprising sand and water, not for the dry mixture of the present claims. The results shown in Table 4 are for only the very specific slurry compositions comprising 1.14% to 3.45% of perlite having an average particle size of 32 to 40 microns, 1.5% of calcium sulfoaluminate cement, 2.5% to 3% of a cement which comprises 85.43% stucco, 8.88% Portland cement, 0.74% PCE plasticizer, 0.09% lignosulfonate plasticizer, 0.11% defoamer and 0.04% diutan gum stabilizer (with some of these compositions showing as little as 5% faster drying time than control compositions comprising no perlite, one of which also comprises 1.5% CSA), and are not commensurate in scope with the broad dry mix composition of claim 1 comprising stucco, 0.5 to 15% perlite with an average particle size of less than 45 microns, 2-10% Portland cement, 1-5% CAC and/or CSA cement, 0.1 to 1% PCE and/or 0.05 to 0.5% sodium lignosulfonate, polysaccharide gum stabilizer, and defoamer. Regarding Fig. 3, it is not clear what compositions these results are meant to represent; the only information regarding the compositions represented by Fig. 3 which could be located in the specification is in paragraph [00130], which simply states that they are expansion studies for “some compositions in Table 7” (many of which contain no CSA or CAC yet still exhibit improved drying time, or contain no perlite yet still exhibit improved drying time) which are compositions which “comprise perlite, and preferably Portland cement and perlite and more preferably Portland cement in combination with CAC cement and perlite”. It is not clear in what way these results are meant show criticality of the claimed ranges of Portland cement and calcium aluminate and/or calcium sulfoaluminate cement and unexpected results commensurate in scope with the claimed ranges. It is not clear from the data presented by Applicant in what way these results would be considered unexpected, the results are not commensurate in scope with the claimed invention, and no criticality of the claimed ranges appears to be displayed by these results.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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