DETAILED ACTION
An election/restriction requirement was mailed 07/15/2025.
Applicant filed a response, and amended claims 1 and 7, on 08/12/2025.
Claims 1 and 3-8 are pending. Claims 1 and 3-6 are rejected. Claims 7-8 are withdrawn from consideration.
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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1 and 3-6, in the reply filed on 08/12/2025 is acknowledged. The traversal is on the ground(s) that the claims, as amended, specify an organic solvent-free mixture, distinguishing over WO 2005/068400 (Zhang). This is not found persuasive because the restriction requirement is based upon the claims as originally filed. Further, the presently amended claims lack a special technical feature over Campeol et al, WO 2013/166280A1, for the reasons set forth in the below rejection.
The requirement is still deemed proper and is therefore made FINAL.
Claims 7-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 08/12/2025.
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 and 3-6 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.
Claim 1 has been amended to recite that the composition comprising a mixture gypsum and alkyl-modified silsesquioxane resin particles is “organic solvent-free.” Applicant has not provided evidence where basis exists for this new claim limitation in the specification as originally filed.
At page 5, lines 8-10, the specification recites: “The resulting dispersion of alkyl-modified silsesquioxane resin particles can be free of methanol by-products and the catalyst (for example, ammonia) because by-products can be removed.”
Page 5, line 29-page 6, line 12, of the specification describes synthesis of a water-soluble silsesquioxane in MIBK (i.e., methyl isobutyl ketone solvent), wherein “Remove of the bulk of the solvent” is disclosed (specification at page 6, lines 7-8).
These references, however, are specific to the synthesis of silsesquioxane particles, not the gypsum-containing composition as claimed. Further, these references to solvent removal refer to specific solvents used during synthesis of the silsesquioxane particles and methanol by-products produced. There is no general teaching or mention of “organic solvents” in the specification, either as being present or absent in the compositions as presently claimed.
The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
Claim 1 has further been amended to recite “where organic solvent is stripped from the alkyl-modified silsesquioxane resin particles prior to mixing them with gypsum to obtain an organic solvent-free composition.” Applicant has not provided evidence where basis exists for this new claim limitation in the specification as originally filed.
The specification at page 10, lines 21-25, exemplifies “Alkyl-Modified Silsesquioxane Resin Particles 1 – solvent stripped ‘A’”, wherein the removal of “methanol and ammonia and some water” (page 10, line 23-25) is disclosed.
Similarly, the specification at page 11, lines 11-27 exemplifies “Alkyl-Modified Silsesquioxane Resin Particles B – solvent stripped,” wherein the removal of “methanol and ammonia and some water” (page 11, lines 24-25) is disclosed.
However, these references to “solvent-stripped” refer to the specific removal of methanol, ammonia and some water. There is no generic teaching or mention of adding or stripping “organic solvents” from “the alkyl-modified silsesquioxane resin particles prior to mixing them with gypsum to obtain an organic solvent-free composition” as presently claimed.
The cited phraseology clearly signifies a “negative” or “exclusionary” limitation for which the applicants have no support in the original disclosure. Negative limitations in a claim which do not appear in the specification as filed introduce new concepts and violate the description requirement of 35 USC 112, first paragraph, Ex Parte Grasselli, Suresh, and Miller, 231 USPQ 393, 394 (Bd. Pat. App. and Inter. 1983); 783 F. 2d 453.
Regarding dependent claims 3-6, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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 4-5 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 4, lines 2-3, the term “the concentration” lacks proper antecedent basis in the claims. Amending this term to read “a concentration” can overcome this rejection.
Claim 5, line 3, the term “Si-OR” is indefinite because the variable “R” is not defined, rendering the scope of the claim indefinite. Clarification is required.
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.
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.
Claims 1 and 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Campeol et al, WO 2013/166280A1 (Campeol).
Campeol was cited in the IDS filed 05/05/2023.
Campeol teaches water repellant materials used to treat porous substrates with a high tendency to absorb water, such as gypsum-based substrates (Campeol; [0002]). Campeol teaches the preparation of an encapsulated water repellant composition wherein a tetraalkoxysilane is added to an aqueous emulsion of a water repellant organosilicon material selected from an organosilane, a partially condensed organosilane, and a branched siloxane resin, whereby the tetraalkoxysilane condenses and polymerizes at the interface of the droplets in the emulsion to form microcapsules (Campeol; [0013]).
The water repellant branched siloxane resin can be a silsesquioxane consisting wholly or mainly of T units of the formula RSiO3/2, wherein R can be alkyl groups, i.e., alkyl-modified silsesquioxanes as claimed. For example, the water repellant branched siloxane resin can be n-octyl silsesquioxane resin or n-octyl methyl silsesquioxane (Campeol; [0017-0018]).
Given that Campeol discloses water repellant materials that overlap the presently claimed alkyl-modified silsesquioxane particles, it therefore would have been obvious to one of ordinary skill in the art to use the water repellant alkyl-modified silsesquioxane particles, which are both disclosed by Campeol and encompassed within the scope of the present claims.
A tetraalkoxysilane is added to an aqueous emulsion of the water repellant organosilicon material emulsified in an aqueous medium, preferably with the aid of a surfactant (Campeol; [0022]). The condensation reaction can be conducted at acidic, neutral or basic pH’s, wherein volatile alcohol produced during the condensation reaction may be stripped (i.e., organic solvent is stripped from the alkyl-modified silsesquioaxane particles, resulting in organic-solvent-free compositions as claimed) (Campeol; [0040]). A catalyst may be used (Campeol; [0041]). Therefore, Campeol teaches alkyl-modified silsesquioxane particles made in an aqueous mixture of a tetraalkoxy silane (emphasis added), catalyst, water and surfactant to form an aqueous dispersion of alkyl-modified silsesquioxane particles, where organic solvent is stripped from the alkyl-modified silsesquioxane particles.
Campeol exemplifies production methods wherein the final particles comprise a core of the silsesquioxane material (Campeol; [0066-0068]).
The particle size of the microcapsules produced generally corresponds to the particle size of the starting emulsion, and ranges from 0.01-500µm (i.e., 10-500,000nm), preferably 200nm-10µm (Campeol; 0034]). The emulsion can be a microemulsion of particle size 10-150nm (Campeol; [0022]).
The particle size ranges of Campeol, i.e., 0.01-500µm, 200nm-10µm, and 10-150nm, overlap in scope with the claimed average particle size range of 20 to 200nm. As set forth in MPEP 2144.05, in the case where the claimed range “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).
Although there is no disclosure that the test method is conformity with dynamic light scattering, given that Campeol discloses particle sizes as presently claimed, and absent evidence criticality how the particle size is measured, it is an examiner's position that particle sizes disclosed by Campeol meet the claim limitation.
Although Campeol does not explicitly teach alkyl-modified silsesquioxane particles made in an aqueous mixture comprising alkyl trimethoxy silane (emphasis added) as presently claimed, and while Campeol teaches alkyl-modified silsesquioxane particles made in an aqueous mixture of a catalyst, water and surfactant to form an aqueous dispersion of alkyl-modified silsesquioxane particles wherein organic solvent is stripped from the alkyl-modified silsesquioxane particles, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process, and given that Campeol meets the requirements of the claimed product, i.e., organic solvent-stripped, alkyl-modified silsesquioxane particles of the claimed sizes, Campeol clearly meets the requirements of the present claim.
The microcapsules of Campeol are particularly useful for treating porous construction materials, including cementitious substrates and gypsum-based substrates (Campeol; [0002] and [0046]). A cementitious product may be produced by adding the microcapsules to an aqueous cementitious composition and mixing (i.e., the alkyl-modified silsesquioxane resin particles are distributed throughout the cementitious composition), followed by shaping and hardening (Campeol; [0048], [0063-0064] and [0070]).
In light of the disclosure of Campeol of the equivalence and interchangeability of treating cementitious compositions with treating gypsum compositions as presently claimed, it would therefore have been obvious to one of ordinary skill in the art to treat gypsum, in order to provide water-repellant, hydrophobic gypsum composition, and thereby arrive claimed invention.
Regarding claim 3, Campeol is relied upon as teaching the limitations of claim 1 as discussed above. The product of hydrolysis and condensation of the tetraalkoxysilane is an aqueous suspension of microcapsules (i.e., the alkyl-modified silsesquioxane resin particles are dispersed in an aqueous continuous phase as claimed) (Campeol; [0042]). The hydrophobicity of a porous product can be increased by treating with an aqueous suspension of the microcapsules, wherein treatment can be done as an adjuvant for forming of the porous product, and wherein the porous product may be gypsum-based (Campeol; [0002], [0045] and [0046]). The adding of an aqueous dispersion of alkyl-modified silsesquioxane microcapsules to gypsum prior to setting the gypsum (i.e., porous product), results in an aqueous dispersion of gypsum particles as claimed.
Regarding claim 4, Campeol is relied upon as teaching the limitations of claim 1 as discussed above. Campeol teaches that when adding the microcapsules to a cementitious composition as an aqueous suspension, the microcapsules are added to the cementitious composition at a concentration of 0.05 to 2% by weight water repellant organosilicon material, based on the weight of the cementitious composition (Campeol; [0048]). Campeol teaches the equivalence between cementitious substrates and gypsum-based substrates as porous construction materials (Campeol; [0002] and [0046]). Campeol teaches that the water repellant material (i.e., microparticles) are used to treat the porous substrates with a high tendency to absorb water in order to reduce water absorption (Campeol; [0002]).
While Campeol does not explicitly disclose concentrations of microparticles relative to a composition solids weight, wherein the composition comprises gypsum as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("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."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[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."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
It would have been obvious to one of ordinary skill in the art to vary the concentration of alkyl-modified silsesquioxane resin particles, including over the presently claimed and using the disclosed concentration of 0.05 to 2% by weight water repellant organosilicon material, based on the weight of the cementitious composition as a guide, in order to obtain good a gypsum construction product with reduced water absorption and improved hydrophobicity.
Regarding claim 5, Campeol is relied upon as teaching the limitations of claim 1 as discussed above. Campeol teaches that the water repellant branched siloxane resin can be a silsesquioxane consisting wholly (i.e., 100%) or mainly of T units of the formula RSiO3/2, wherein R can be alkyl groups. For example, the water repellant branched siloxane resin can be n-octyl silsesquioxane resin or n-octyl methyl silsesquioxane (Campeol; [0017-0018]). This corresponds alkyl-modified silsesquioxane resin particles containing less than 30 mole-percent of combined Si-OH, Si-OR and Si-H functionality relative to moles of Si atoms (see Applicant’s specification at page 4, line 30-page 5, line 17).
Although there is no disclosure that the test method is conformity with infrared spectroscopy and nuclear magnetic resonance spectroscopy, given that Campeol discloses mole-percent of combined Si-OH, Si-OR and Si-H functionality relative to moles of Si atoms as presently claimed, and absent evidence criticality how the mole percent is measured, it is an examiner's position that the “wholly … T units of the formula RSiO3/2, wherein R can be alkyl groups” disclosed by Campeol meets the claim limitation.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Campeol as applied to claim 1 above, and further in view of Sellers et al, US 5135805 (Sellers).
Regarding claim 6, Campeol is relied upon as teaching the limitations of claim 1 as discussed above. Campeol teaches that the water repellant material (i.e., microparticles) are used to treat porous substrates with a high tendency to absorb water in order to reduce water absorption, such as gypsum-based substrates (Campeol; [0002]). The gypsum-based substate can be a gypsum panel (Campeol; [0046]).
Campeol does not explicitly teach wherein the composition is part of a gypsum board, wherein the composition resides between coversheets.
With respect to the difference, Sellers teaches an improved method of manufacturing water resistant gypsum compositions by incorporating a siloxane into the composition used to make the products (Sellers; col. 1, lines 5-11).
Gypsum has a tendency to absorb water (Sellers; col. 38-39). Gypsum is widely used as a structural building material, such as gypsum sheathing on the exterior of building or as “tile-backing boards” in bathrooms. Such applications require good water resistance (Sellers; col. 1, lines 30-32 and 49-60).
The method provides a gypsum product comprising a gypsum board core with improved water resistance (Sellers; col. 3, lines 4-7). The board has a lining adhered to both sides of its faces, most commonly paper sheets or a glass fiber mat, wherein the gypsum slurry is sandwiched between the two sheets (Sellers; col. 1, lines 34-37; col. 5, lines 59-68).
Sellers is analogous art as it teaches a gypsum composition comprising a water repellant agent, wherein the gypsum composition is part of a gypsum board residing between two sheets.
In light of the motivation provided by Sellers to form a gypsum board comprising a water-resistant gypsum composition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the water repellant microcapsule-containing gypsum composition of Campeol in gypsum panels or boards, wherein the water-repellant gypsum composition resides between two cover sheets, in order to obtain a gypsum panel with improved water-resistance, particularly when used as a construction material exposed to water and moisture, and thereby arrive at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sharma et al, WO 2014/099702A1, teaches a flow aid comprising: (a) a resin component, (b) a reinforcing modifier comprising short, flexible fibers, and (c) a flow-modifier comprising hybrid organic-inorganic particles bearing organic or heterorganic groups that comprise substantially non-interacting groups (page 2, lines 5-9). The particles are preferably nanoparticles, and comprise silsesquioxane particles that bear substantially non-interacting groups (page 11; para 2-page 12, para 3). The compositions are applied to the surface of a substrate such as minerals/concrete (page 17, para 1 and 3).
Rathore et al, US 2015/0322293 A1, teaches a method of making alkyl-modified silsesquioxane-like particles which are free of -OH bonds, and which have an average particle diameter of 100nm ([0005-0008], [0014-0017], [0033], and [0038-0039]). The particles may be used for hydrophobic coatings and films ([0061]).
Jin et al, CN 107298861A, teaches a silicone rubber composition comprising a polymethyl silsesquioxane have a particle size of 10nm-500µm (machine translation at page 2, lines 32-35 and page 6, lines 5-20). The composition may comprise gypsum as an auxiliary filler (machine translation at page 6, lines 40-54).
Dengler et al, US 2019/0367421 A1, teaches building materials comprising inorganic binders such as gypsum comprising a hydrophobizing agent ([0031-0032]). Finely divided methylsilsesquioxanes in powder form are predominantly employed. They are added to the mortar in amounts of 0.1-1% based on the binder ([0033]).
Gu, CN 1803808A, teaches a method of forming non-functional alkyl-substituted silsesquioxanes by reacting an alkyl trialkoxysilane in water, solvent and catalyst (Abstract). White, powdery products are obtained (see Examples 1-4).
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/CDL/Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732