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 .
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claims 1-5, 7, 11, 12, and 62 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US Pub. No. 2008/0160301 to Nandi.
Regarding claims 1-5, 7, 11, 12, and 62, Nandi teaches aqueous coating compositions for fibrous nonwoven and woven coated mats comprising a platey filler, mica, talc, clay, etc. of particular critical mean particles sizes and a resin binder (Nandi, Abstract). Nandi teaches that the fibrous nonwoven mat substrates comprise glass fibers bonded together with an aqueous binder system (Id., paragraphs 0012, 0029). Nandi teaches that the mineral pigments or fillers have a mean particles size typically in the range of about 11 to about 17 microns, or about 20 to about 30 microns (Id., paragraph 0020). Nandi teaches that the binder includes polyvinyl alcohol, polyvinyl acetate and acrylics when good UV resistance and high stiffness are desirable in the coated mat, and urea formaldehyde resins (Id., paragraphs 0022-0023, Table 1). Nandi teaches that the coating uniformly penetrates the fibrous mat only slightly while also providing excellent surface smoothness (Id., paragraph 0008). Nandi teaches that the air permeability of the coated mats is more typically greater than about 200 Gurley seconds (Id., paragraph 0033).
Regarding the claimed amounts of binder material, inorganic filler and acrylic, Nandi teaches that the coating on the mat comprises a mixture of about 40 to about 90 wt. percent of pigments and/or fillers, being bound together with about 3 to about 15 wt. percent of a binder (Nandi, paragraph 0013). Since the composition is an aqueous composition comprising water, fillers and binder, it is reasonable for one of ordinary skill to expect that the amount of pigments and/or fillers and the amount of binder, based on the total weight of the solids in the coating composition, substantially overlap with the claimed range. For example, 90 wt. percent of pigments and/or fillers and 3 wt. percent of binder would equate to 96.8 wt. percent of pigments and/or fillers and 3.2 wt. percent of binder based on the weight of the total solids in the coating composition. Note that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003).
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated mat of Nandi, and adjusting and varying the amounts of pigment and/or filler and binder material and acrylic, such as within the claimed ranges, motivated by the desire of forming a conventional coated mat based on the totality of the teachings of Nandi.
Regarding claims 11 and 12, Nandi teaches exemplary mats having a mat weight between 54.4 and 117.5 grams/sq. meter (Nandi, Table 2), and coated facer mats having a coating weight in the range of about 270 grams/square meter plus/minus about 80 g/sm (Id., paragraph 0032).
Regarding claim 62, Nandi teaches that the binder includes acrylics when good UV resistance and high stiffness are desirable in the coated mat, and urea formaldehyde resins.
Claims 8, 59, and 64 are rejected under 35 U.S.C. 103 as obvious over US Pub. No. Nandi, as applied to claims 1-5, 7, 11, 12, and 62 above, in view of US Pub. No. 2006/0240236 to Bland.
Regarding claims 8, 59, and 64, Nandi teaches a thickness of a nonwoven mat at Table 2 and that the binder may comprise acrylic resins where good UV resistance and high stiffness are desirable, and urea formaldehyde resins (Nandi, paragraph 0023). Nandi teaches that the mats are suitable for use as facers on foam and gypsum wallboard (Id., paragraph 0030).
Additionally, Bland teaches a gypsum wallboard comprising a coated non-woven first glass fiber mat facing material and an optionally coated second glass fiber mat, wherein the coated non-woven glass fiber facing has a basis weight of between about 1.7 and 2.0 pounds per 100 square feet before application of the coating (Bland, Abstract, paragraphs 0001, 0037). Bland teaches that following formation of the non-woven glass fiber mats, a coating is provided of a dried, preferably aqueous mixture of a mineral (inorganic) pigment or filler, a polymer adhesive (organic) binder and optionally an inorganic adhesive binder (Id., paragraphs 0042-0045, 0047, 0057). Bland teaches that suitable coating compositions for making the coated mat may contain, on a dry weight basis, of about 75 to 99 percent mineral pigment or filler, about 0 to 20 percent inorganic adhesive, more usually about 0 to 10 percent, and about 1 to 20 percent polymer adhesive, more usually about 1 to 12 percent (Id., paragraph 0049). Bland teaches that polymer binders include polyvinyl alcohol and polymers and copolymers containing units of acrylic acid (Id., paragraph 0058). Bland teaches that fillers include ground limestone, clay, sand, mica, talc, and aluminum trihydrate (Id., paragraph 0050). Bland teaches that coated glass fiber mats can be prepared by applying an aqueous coating composition in an amount on a dry weight basis equivalent to at least about 15 lbs. per 1000 sq. ft (Id., paragraph 0063). Bland teaches that the mat has a thickness in the range of about 25 to about 40 mils (Id., paragraphs 0034, 0038). Bland teaches the inclusion of a small amount of crosslinker, such as a urea-formaldehyde resin (Id., paragraphs 0041, 0064). Bland teaches that the coating is applied such that it penetrates into the fibers of the glass fiber mat (Id., paragraph 0060).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated mat of Nandi, wherein the nonwoven mat comprises a thickness, such as within the claimed range, as taught by Bland, motivated by the desire of forming a conventional coated nonwoven facer mat for use on wallboard comprising a thickness known in the art as being predictably suitable for such applications.
Additionally, regarding the claimed amount of crosslinking agent, since Bland teaches a “small amount” of crosslinker, based on the amounts of binder material, inorganic mineral filler, and acrylic component in the composition, it is reasonable for one of ordinary skill in the art to expect that the amount of crosslinking agent would vary within the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated mat of Nandi, and adjusting and varying the amounts of urea-formaldehyde resin or crosslinking agent, such as within the claimed range, as it is within the level of ordinary skill to determine a suitable small amount of crosslinker based on the desired properties of the coated mat.
Note that the prior art combination teaches that the binder may comprise an acrylic. Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the coated mat of the prior art combination, and including an acrylic binder and another binder in amounts, such as within the claimed range, as it is within the level of ordinary skill to determine suitable binders or combinations of binder suitable for the invention of the prior art.
Response to Arguments
Applicant’s arguments have been considered but are moot based on the new ground of rejection.
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 PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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