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 .
This communication responds to the application filed September 11/2023 and amended claim set filed May 1, 2026. Claims 1-2, 4, 6, 8, 10, 12-13, 17-19, 23-29, 32, 34, 37, 44-45 are currently pending.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-2, 4, 6, 8, 10, 12-13, 17-19 and 23-29 in the reply filed on May 1, 2-26 is acknowledged. Claims 1-2, 4, 6, 8, 10, 12-13, 17-19 and 23-29 are under examination.
Claim Rejections - 35 USC § 112
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, 8, 10, 12 and 19 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 pre-AIA the applicant regards as the invention.
The term “approximately” in claims 4, 8, 10, 12 and 19 is a relative term which renders the claim indefinite. The term “approximately ” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the contents of gypsum, hydraulic cement, reinforcing fibers pozzolanic material and weight ratio of gypsum to hydraulic cement in the fiber cement gypsum formulation are rendered indefinite. For purposes of examination, the term “approximately” is meant to encompass variations of 10% of the specified content of the component.
Claim Rejections - 35 USC § 102
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.
Claims 1-2, 13, 18, 23-24 and 26-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dubey et al. (US PG Pub 2014/0138007 A1) as listed on the IDS dated 8/22/2025.
Regarding claim 1, Dubey et al. teach cementitious boards (which correspond to the composite) comprising a cementitious core and chopped fibers dispersed through the cementitious composition, wherein the cementitious composition comprises 35-60 wt.% of a cementitious reactive powder, 2-10 wt.% of expanded perlite filler, 20-40 wt.% of water and 10-25 wt.% of secondary fillers (claims 14-15, 18,-19, Table 1, [0036]-0040], Table 11), wherein said cementitious reactive powder typically comprises 100 parts by weight of Portland cement, 30 parts of fly ash (which correspond to the pozzolanic material) and 3 parts of land plaster (which correspond to the calcium sulfate dihydrate)( [0041], [0068],[0077], [0157], Table 11), as required by the instant claim.
Regarding claim 2, Dubey et al. teach the composite wherein the gypsum-cement mix comprises approximately 48.5 wt.% of Portland cement and 1.46 wt.% of gypsum on a solid basis (Table 11, [0160]), which implies approximately 50 wt.% of the gypsum-cement mix in the composite formulation, as required by the instant claim.
Ingredient
Weight %
Calculation
Weight % (on solid basis)
Cementitious reactive powder
47.8
Portland cement-100 parts by weight
100/133
47.8 x (100/133) = 35.94 wt.%
(35.94/74.1) x 100% = 48.5 wt.%
Fly ash: 30 parts by weight
30/133
47.8 x (30/133) =10.78 wt.%
(10.78/74.1) x 100% = 14.6 wt.%
Gypsum :3 parts by weight)
3/133
47.8 x (3/133) =1.08 wt.%
(1.08/74.1) x 100% = 1.46 wt.%
Expanded perlite
4.8
(4.8/74.1) x 100% = 6.48 wt.%
Filler (expanded clay and shale aggregate)
21.5
(21.5/74.1) x 100% = 29 wt.%
Total
74.1
100
Regarding claim 13, Dubey et al. teach the composite comprises chopped fibers dispersed throughout the cement, wherein the fibers are cellulose fibers, synthetic fibers including polypropylene, mineral fibers including AR glass fibers and glass fibers [0126].
Regarding claim 18, Dubey et al. teach the composite wherein the pozzolanic material comprises fly ash, silica fume, metakaolin or combinations thereof [0068]. Although silica fume and metakaolin are listed as one possible selection out of many pozzolanic materials, the MPEP 2131.02 teaches: Il. A REFERENCE THAT CLEARLY NAMES THE CLAIMED SPECIES ANTICIPATES THE CLAIM NO MATTER HOW MANY OTHER SPECIES ARE NAMED A genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Therefore, the claim is anticipated.
Regarding claims 23-24, Dubey et al. teach the composite further comprises a filler material including silicon oxide (silica), sand ([0126], claim 19), as required by the instant claims. This disclosure of the claimed subject matter is sufficiently specific to constitute anticipation under 35 USC 102.
Regarding claims 26-27, Dubey et al. teach the composite further comprises expanded perlite (claims 15, 19, table 11, [0036],[0101]), as required by the instant claim
Claims 1, 12-13, 23-27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato (JPH10297952 (A) as listed on the IDS dated 8/22/2025). English Translation provided by Applicant.
Regarding claim 1, Kato teaches a lightweight inorganic board comprising 40-80 wt.% of waste inorganic board powder, 10-40 wt.% of light-weight aggregate, 9-30 wt.% of a hydraulic cement and 1-5 wt.% of reinforcing fibers [0008]. Kato further teaches the lightweight inorganic board comprises a total of 50 parts of Portland cement, 8 parts of dihydrate gypsum dihydrate, 40 parts of granulated blast furnace slag (which correspond to the pozzolanic material), 8 parts of waste paper pulp (cellulose fiber), 3 part of polyvinyl alcohol fiber, 62 parts of perlite, 11 parts of calcium carbonate [0016], as required by the instant claim.
Regarding claim 12, Kato teaches that the lightweight inorganic board comprises 8 parts of waste paper pulp (cellulose fiber), 3 part of polyvinyl alcohol fibers, (equivalent to 6.04 wt.% of fibers) [0016], as required by the instant claim.
Regarding claim 13, Kato teaches a lightweight inorganic board comprising reinforcing fibers including cellulose fibers, polypropylene fibers, polyvinyl alcohol fibers and mixtures thereof ([0011], [0016]), as required by the instant claim.
Regarding claims 23-24, Kato teaches a lightweight inorganic board comprising calcium carbonate, thereby reading on the limestone as the filler.
Regarding claims 25, Kato teaches a lightweight inorganic board comprising 6 wt.% of calcium carbonate, as required by the instant claim.
Regarding claims 26-27, Kato teaches a lightweight inorganic board comprising a light weight aggregate such as perlite, Shirasu balloon, among others, as required by the instant claim. The perlite is considered to read on the expanded perlite because Kato teaches is a light weight aggregate [0009].
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dubey et al. (hereinafter “Dubey ‘010”) (WO 2013/163010 as listed on the IDS dated 8/22/2025 or US PG Pub 2013/0284069 A1).
Examiner will refer to the US equivalent of Dubey et al., US PG Pub 2013/0284069 A1.
Regarding claim 1, Dubey ‘010 teaches a geopolymer cementitious binder composition (abstract) comprising 184 g of Portland cement, 245 g of calcium sulfate dihydrate, 1837 g of fly ash (which correspond to the pozzolanic material). Dubey ‘010 further teaches that discrete reinforcing fibers (glass fibers) and scrims made of polypropylene, polyethylene are used to reinforce the cement-based precast products ([0050],[0187]-[0188]), as required by the instant claim.
Regarding claim 10, Dubey’010 teaches a weight ratio of 1.33, as required by the instant claim.
Claim Rejections - 35 USC § 103
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 4, 6, 8, 10, 19, 25 and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US PG Pub 2014/0138007 A1) as listed on the IDS dated 8/22/2025.
Dubey et al. teach the composite formulation according to claim 1 as set forth above and incorporated herein by reference.
Regarding claims 4, 6, 8 and 10, Dubey et al. teach the composite formulation comprising Portland cement, gypsum, a pozzolanic material, and chopped fibers as previously discussed in the rejection of claims 1 and 2.
Dubey et al. do not teach the claimed amount of gypsum. Further, Dubey et al. do not teach the claimed amount of hydraulic cement and the claimed ratio of gypsum to hydraulic cement as recited in the instant claims.
It is noted that Dubey et al. do not disclose negative effects associated with adjusting the contents of gypsum and Portland cement. Dubey et al. teach the gypsum as a sulfate source used to influence setting and hydration characteristics [0007]. Dubey et al. further teach gypsum provides sulfate ions for forming ettringite when reacting with the aluminate compounds of the Portland cement [0076]. As such, the amount of gypsum and Portland cement would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of the claimed invention. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of gypsum and Portland cement and the ratio gypsum to Portland cement present in the gypsum-cement mix of Dubey et al. to reach the desired setting and hydration properties, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).).
Regarding claim 19, Dubey et al. teach the composite comprises 35-60 wt.% of cementitious reactive powder comprising Portland cement and pozzolanic material, 2-10 wt.% of expanded perlite, 20-40% water, 10-25 wt.% of secondary fillers including sand (silica), wherein the cementitious reactive powder typically comprises 100 parts by weigh of Portland cement, 30 parts by weight of fly ash (pozzolanic material) and 3 parts of land plaster(gypsum) ([0041], note 1 of Table 11), that is equivalent to approximately 7.9-13.5 wt.% of pozzolanic material on a dry basis (i.e. 30/133 = 22.6 wt.% of fly ash in the reactive powder, then the reactive powder amount is 35-60 wt.%, thus the amount of fly ash in the composition is 0.35 x 0.226=7.9% and 0.6 x 0.2256 =13.5 %), which overlaps the claimed amount (approximately 5-11 wt.%). 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Dubey et al.
Regarding claim 25, Dubey et al. teach the composite comprises 10-25 wt.% of secondary filler (claim 19 [0039]) on a wet basis, that is equivalent to approximately 12.5-40.3 wt.% on a dry basis, which overlaps with the claimed range (0-31 wt.%), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Regarding claim 28, Dubey et al. teach the composite comprises 2-10 wt.% of expanded perlite on a wet basis (claim 19, table 11, [0036],[0101]), that is equivalent to approximately 3.33 wt.% to 12.5 wt.% on a dry basis (i.e. 2 wt.% perlite/60 wt.% of total solids = 3.33 wt.% and 10 wt.% perlite/80 wt.% of total solids= 12.5 wt.%), which overlaps with the claimed range (approximately 5 wt.%). 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).) It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the range taught by Dubey et al.
Regarding claim 29, Dubey et al. teach the addition of lightweight fillers including sand (silica) and expanded perlite, among others ([0101]-[0102]). Dubey et al. further teach the composite comprises 10-25 wt.% of secondary fillers including sand (silica) on a wet basis (claim 19, table 11, [0036],[0101]), that is equivalent to approximately 17 wt.% to 31 wt.% on a dry basis (i.e. 10 wt.% sand/60 wt.% of total solids = 16.67 wt.% and 25 wt.% silica/80 wt.% of total solids= 31.25 wt.%), which overlaps with the claimed range (approximately 13-28 wt.%), thereby a prima facie case of obviousness being established. MPEP 2144.05.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Dubey et al. (US PG Pub 2014/0138007 A1) in view of DeFord et al. (US PG Pub. 2002/0139082) as listed on the IDS dated 9/11/2023.
Dubey et al. teach the composite formulation according to claim 1 as set forth above and incorporated herein by reference.
Regarding claims 12 and 17, Dubey et al. do not teach the claimed amount of reinforcing fibers as recited in the instant claims.
DeFord teaches a composite building material comprising a lightweight core and one or more fiber cement skins formed on opposite sides of the core [0003], wherein the formulation of the fiber cement skin comprises 10-80 wt.% of a hydraulic binder such as Portland cement, high alumina cement, gypsum dihydrate or any mixtures thereof, 0-80 wt.% of a filler material such as ground silica sand, amorphous silica, fly ash, silica fume, among others or any mixtures thereof, 5-12 wt.% of fibers such as cellulose fibers, polypropylene or any mixtures thereof and 0-20 wt.% of additives such as silica fume, metakaolin, calcium carbonate, perlites and mixtures thereof [0037]-[0047]. Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the cement-based composite according to Dubey et al. having a weight percentage of 5-12 % of the fibers, thereby arriving at the claimed amount of approximately 4 wt.% of cellulose fibers and approximately 2 wt.% of polypropylene fibers, such values being exemplary of values within the overlapping portions of the disclosed and claimed ranges, as DeFord et al. demonstrate theses contents of the cellulose fibers and polypropylene fibers in a similar application with the expected result of improving mechanical properties of the composite, thereby arriving to the claimed invention.
Claim 2, 4, 6, 8, 10, 17, 19 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (JPH10297952 (A) as listed on the IDS dated 8/22/2025). English Translation provided by Applicant.
Kato teaches the composite formulation according to claim 1 as set forth above and incorporated herein by reference.
Regarding claim 2, 4, 6, 8, 10, by examiner calculations, the lightweight inorganic board comprises 27.5 wt.% of Portland cement and 4.4 wt.% of dihydrate gypsum ([0016], see rejection of claim 1).
Kato does not teach the claimed amount of gypsum. Further, Kato does not teach the claimed amount of hydraulic cement and the claimed ratio of gypsum to hydraulic cement as recited in the instant claims. However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[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, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 ("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 Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969) (Claimed elastomeric polyurethanes which fell within the broad scope of the references were held to be unpatentable thereover because, among other reasons, there was no evidence of the criticality of the claimed ranges of molecular weight or molar proportions.).). In this case, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amounts of the Portland cement and the gypsum to produce a lightweight inorganic board with high strength-quality [0007].
Regarding claim 17, Kato teaches the lightweight inorganic board comprises 6.04 wt.% of fibers ([0016], see rejection of claims 1 and 12). Kato further teaches as the reinforcing fibers, cellulose fibers, polypropylene fibers and mixtures thereof [0011]. Given that Kato teaches mixtures of cellulose fibers and polypropylene fibers in a total amount of approximately 6 wt.%, thereby arriving at the claimed amount of approximately 4 wt.% of cellulose fibers and approximately 2 wt.% of polypropylene fibers, such values being exemplary of values within the overlapping portions of the disclosed and claimed ranges, as one having ordinary skill in the art would have had a reasonable expectation that such selection would have provided the desired reinforcing filler effect.
Regarding claim 19, by examiner calculations, the lightweight inorganic board comprises 22 wt.% of pozzolanic material ([0016], see rejection of claim 1).
Kato does not teach the claimed range of pozzolanic material. However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[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, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amount of the pozzolanic material to improve properties of the composite (permeability, strength).
Regarding claim 28, Kato teaches the lightweight inorganic board comprises 62 parts of perlite (equivalent to 34.07 wt.%) [0016].
Kato does not teach the claimed range of low-density modifying agent. However, differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. (MPEP 2144.05(II)(A).) "[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, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have optimized through routine experimentation the relative amount of the expanded perlite to obtain the desired properties of density, strength, thermal insulation of the composite.
Claims 18 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (JPH10297952 (A) as listed on the IDS dated 8/22/2025) in view of Mori et al. (US PG Pub. 2012/0318172).
Regarding claim 18, Kato teaches the composite formulation according to claim 1 as set forth above and incorporated herein by reference.
Kato is silent on the claimed pozzolanic material.
However, Mori et al. teach silica fume , metakaolin as functional equivalents of blast furnace slag as disclosed by Kato (abstract). Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been held that one of ordinary skill in the art could substitute the blast furnace slag of Kato for the silica fume or metakaolin of Mori et al., thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLGA L. DONAHUE whose telephone number is (571)270-1152. The examiner can normally be reached M-F 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSEPH DEL SOLE can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLGA LUCIA DONAHUE/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763
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