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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 27, 2026, has been entered.
Specification
Applicants’ amendments to the specification of March 27, 2026, are noted and entered.
Claim Rejections - 35 USC § 112
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.
Claim 93 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.
Regarding claim 93, the claim recites that the coating composition comprises 0.1% to 2.6 wt.% of the binder material. Claim 93 is dependent from claim 1, which recites that the coating composition comprises 0.5% to 5.0% of a binder material. Claims in dependent form shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim. MPEP 608.01(i). It is unclear how claim 93 is consistent with claim 1, as the limitations of claim 93 broaden the scope from the claim which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
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 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, 62, and 90-93 are rejected under 35 U.S.C. 103 as obvious over US Pub. No. 2016/0047089 to Ketzer in view of US Pub. No. 2008/0160301 to Nandi.
Regarding claims 1-5, 7, 11, 12, 62, and 90-93, Ketzer teaches high-filled non-woven glass fiber fabrics which have a very low binder content (Ketzer, Abstract). Ketzer teaches that the content of organic binder in the binder system is between 2 and 20% by weight, and the content of inorganic filler in the binder system is between 98 and 80% by weight, wherein the value refers to the binder system after complete drying (Id., paragraph 0052). Ketzer teaches that the binders include urea, phenol formaldehyde, melamine formaldehyde or mixtures thereof, and vinyl acetate and ethylene polymer dispersions (Id., paragraph 0054). Ketzer teaches that in addition to the organic binders, inorganic binders can also be used to almost fully or at least partially replace the organic binders (Id., paragraph 0055). Ketzer teaches that the inorganic fillers include chalk, carbonates, clay, quartz, talc, sulfates, and hydroxides, (Id., paragraph 0056), wherein an exemplary filler includes ATH (Id., Example 1). Ketzer teaches that application of the filler-binder mixture is carried out by known methods, in particular coting methods (Id., paragraph 0059). Ketzer teaches that the high-filled nonwoven fabric has a Gurley porosity of at most 200 sec (Id., paragraph 0063).
Regarding the claimed amounts of binder material, inorganic filler, and organic material, Ketzer teaches overlapping amounts of each. 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 fabric of Ketzer, 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 fabric based on the totality of the teachings of Ketzer.
Ketzer does not appear to specifically teach that the coating extends partially into the base. However, 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).
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 fabric of Ketzer, wherein the coating penetrates the fabric, as taught by Nandi, motivated by the desire of forming a conventional glass fiber fabric having a structure that predictably provides excellent surface smoothness while maintaining the desired Gurley porosity.
Regarding claim 5, Ketzer does not appear to teach the claimed average particle size. However, 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 (Nandi, paragraph 0020).
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 fabric of the prior art combination, wherein the inorganic filler comprise a mean particle size, such as within the claimed range, as taught by Nandi, motivated by the desire of forming a conventional glass fiber fabric having a structure that predictably provides excellent surface smoothness while maintaining the desired Gurley porosity.
Regarding claims 11 and 12, the prior art combination teaches that the weight per unit area of the non-woven fabric is preferably between 10 and 350 g/m2 (Ketzer, paragraph 0050), including exemplary mats having a mat weight between 54.4 and 117.5 grams/sq. meter (Nandi, Table 2). Additionally, the prior art combination teaches an exemplary total weight of 250 or 275 g/m2 (Ketzer, Examples 1 and 2), including coated facer mats having a coating weight in the range of about 270 grams/square meter plus/minus about 80 g/sm (Nandi, paragraph 0032). 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 fabric of the prior art combination, and adjusting and varying the weight of the fabric and the total weight of the fabric and coating, such as within the claimed ranges, motivated by the desire of forming a conventional fabric based on the totality of the teachings of the prior art combination.
Regarding claim 62, Ketzer teaches that the binders include urea, phenol formaldehyde, melamine formaldehyde or mixtures thereof, and vinyl acetate and ethylene polymer dispersions. Additionally, Nandi teaches that the binder includes acrylics when good UV resistance and high stiffness are desirable in the coated mat, and urea formaldehyde resins.
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 fabric of the prior art combination, wherein the binder comprises acrylics, such as within the claimed range, as taught by Nandi, motivated by the desire of forming a conventional glass fiber fabric comprising a functionally equivalent and predictably suitable binder providing good UV resistance and high stiffness.
Regarding claims 91 and 92, the prior art combination teaches that the content of organic binder in the binder system is between 2 and 20% by weight, and the content of inorganic filler in the binder system is between 98 and 80% by weight, wherein the value refers to the binder system after complete drying. Additionally, the prior art combination teaches that in addition to the organic binders, inorganic binders can also be used to almost fully or at least partially replace the organic binders.
Therefore, 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 fabric of the prior art combination, and adjusting and varying the amount of organic material, such as within the claimed ranges, as taught by Ketzer, motivated by the desire of forming a conventional fabric based on the totality of the teachings of the prior art combination.
Claims 8, 59, and 64 are rejected under 35 U.S.C. 103 as obvious over Ketzer in view of Nandi, as applied to claims 1-5, 7, 11, 12, 62, and 90-93 above, in view of US Pub. No. 2006/0240236 to Bland.
Regarding claims 8, 59, and 64, the prior art combination 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). The prior art combination 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 the prior art combination, 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 the prior art combination, 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
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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