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 .
The amendments to the claims overcome the previous rejections under Section 102. Amended and new rejections are below set forth under section 103 for obviousness. No additional/new prior art is cited at this time.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/14/23 and 6/19/23 have been considered by the examiner.
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.
Claim 11 is 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 11 recites the slurry resides in the mixer for 2-3 seconds. It is unclear if the slurry is settling or mixing during this time. Clarification is requested.
Claim 11 recites the reintroduced slurry increases a core strength of the slurry by up to 14%. It appears applicant is indicating the product of the “wallboard” will have an increased strength but no wallboard is actually formed. Also it is unclear as to what is the basis of comparison of the claimed increased core strength (compared to wallboard produced by other means or by the same means with different residence times, etc.) and no measuring standard or units are recited by which the percentage increase is measured/calculated.
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.
Claim(s) 1-2, 4-6 and 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wilkes et al (US 2011/0247526) as applied to claims 1-2 and 6-7 above.
Regarding Claims 1-2, 4-5, 6 and 7-11:
Wilkes et al (US 2011/0247526) discloses a process for reducing set time for a plaster slurry including providing a pre-determined amount of water a predetermined amount of plaster and mixing together to form a slurry re directing a portion of the slurry and re directing apportion of the slurry formed at the first time to combine with slurry formed at a second time (Abstract) The process is for reducing a set time for plaster slurry (i.e. calcined gypsum)[0029] (Abstract) and the process is for preparing gypsum based products [0020] such as plasterboard [0032] (meeting claim 7)
The slurry is formed with water and calcium sulphate hemihydrate [0015] (i.e. calcined gypsum – see also instant specification at [0003] for calcium sulfate hemihydrate = calcined gypsum and water)
The reference teaches providing the gypsum wallboard slurry mixer: See Figures
The process includes providing amounts of the plaster/calcined gypsum and water in a mixer to form a slurry [0011] (meeting the limitation for providing suitable amounts of calcined gypsum and water in the mixer to create a slurry and meeting the limitation for agitating the slurry in the mixer)
[0013] The pre-determined amount of water and predetermined amount of slurry forming substance is preferably introduced into the mixer via the input, at a specified rate, to control the ratio of the water to the slurry forming substance. (further meeting claims 1 and 8 for suitable amounts introduced to mixer to form a slurry)
The mixer is used [0029] (i.e. mixing occurs = agitation) the water and slurry forming substance are mixed [0011](i.e. agitated)
[0014] The aqueous slurry formed at the first time is preferably formed before the aqueous slurry formed at the second time. In this manner, the aqueous slurry formed at the first time undergoes partial setting with respect to the aqueous slurry formed at the second time. (meeting the limitation for forming the slurry)
[0015] Preferably, the portion of aqueous slurry formed at the first time is extracted from the mixer and redirected back into the mixer via the input, at a specified rate, with the water and calcium sulphate hemihydrate.(meeting the limitation for calcined gypsum and for extracting a portion of the slurry from the mixer) [0016] Alternatively, the portion of aqueous slurry formed at the first time is preferably extracted from the outlet of the mixer and is re-directed into the mixer via the input, at a specified rate, with the water and calcium sulphate hemihydrate. (meeting the limitation for extracting a portion of the slurry from the mixer and reintroducing the extracted portion to the mixer for further mixing of claim 1 and 8)
The mixed slurry may be removed from the mixer via an outlet [0029] (meeting claim 1 and 8)
See Figures for mixer inlets outlets etc. [0038] conduits 110 120 and port into mixer and out of mixer 160 a duct extending from outlet back to inlet [0037] and a duct from inlet at higher end to outlet 120 flow path to mixer outlets at lower end etc. [0037] (see figures meeting limitations of the claims including claim 6 for conduit to upper extractor and reintroduced into a port in the mixer) )
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While Wilkes does not expressly disclose how long the reintroduced slurry resides in the mixer or the amount of slurry diverted and reintroduced to the mixer, Wilkes discloses:
[0017] More preferably, the portion of aqueous slurry is extracted from the outlet of the mixer and reintroduced into the outlet following a time delay.
The process utilizes a controller: pumps a portion of the aqueous slurry at a controlled rate using a controller (not shown) to control the rate of the portion of the slurry that goes from the outlet to the inlet and combines with unmixed constituents and is re input into the mixer [0033], from the outlet 120, back to the outlet 120, where it combines with more recently formed aqueous slurry.[0034][0036]
Some of the slurry from the mixer outlet is drawn out along this flow path through duct 165 and reintroduced within the mixer outlet at 185 in a controlled and timed manner. [0037] (i.e. one of skill in the art can control the time)
[0040] The set time for each of the above embodiments was compared with the set rate using the known process, as illustrated in FIG. 1, using an accelerator additive. The results revealed a reduction in the set time for the slurry using the process of the first embodiment when compared with the known process, and a greater reduction in set time using the process of the second embodiment. However, the greatest reduction in set time for the slurry was achieved by extracting a portion of the aqueous slurry from the outlet and recombining the portion with more recently formed slurry within the outlet, according to the third embodiment. (one of skill in the art is motivated to make the time of the various stages/process short/reduced)
(rendering obvious 2-3 seconds of claims and ( as one of ordinary skill in the art can determine the appropriate amount of time to recirculate the slurry also the process uses a controller to control the rate of flow also thereby enabling one of skill in the art to control the time of residence in the mixer)
The process utilizes a controller: pumps a portion of the aqueous slurry at a controlled rate using a controller (not shown) to control the rate of the portion of the slurry that goes from the outlet to the inlet and combines with unmixed constituents and is re input into the mixer [0033], from the outlet 120, back to the outlet 120, where it combines with more recently formed aqueous slurry.[0034][0036] (i.e. one of skill in the art can control the % of the slurry volume reintroduced into the mixer for supplemental mixing of instant claims 3-4 and 8-10)
The greatest reduction in set time for the slurry was achieved by extracting a portion of the aqueous slurry from the outlet and recombining the portion with more recently formed slurry within the outlet, according to the third embodiment.[0040] (one of skill in the art can control the portion of slurry that is extracted and recombined to achieve the greatest reduction in set time)
As above set forth one of ordinary skill in the art at the time of filing the invention can determine appropriate time for further mixing as well as how much slurry to extract and reintroduce using the controller of the reference in order to afford the greatest reduction in set time for the slurry using controllers or otherwise. Said times and volume would be expected to encompass and overlap the instantly claimed ranges. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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) (the examiner notes that load of solids to water, the temperature, the size of the mixer, etc. are all factors one of ordinary skill in the art would know to consider in making these determinations – multiple variables neither claimed nor taught in the instant specification – the claimed ranges do not appear to be critical to the invention).
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)
Further Regarding Claim 11:
The reference discloses the limitations above set forth.
As above set forth this claim is indefinite. However the examiner notes that since the prior art teaches the claimed steps with the claimed material worked upon, including extra mixing of reintroduced slurry, it would be expected to product a product with the claimed core strength properties in ranges which meet and/or overlap the instantly claimed ranges.
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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added by examiner) “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) “Products of identical chemical composition cannot have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
[0002] Gypsum, also known as calcium sulphate hemihydrate is a well-known material in the building trade. Gypsum based products such as plaster boards, are prepared from an aqueous slurry of calcium sulphate hemihydrate. The calcium sulphate hemihydrate is known to be mixed with a fibre, and various other additives that increase moisture resistance and fire resistance, and water, and the board is formed by sandwiching a core of the formed slurry between two sheets of thick paper. When the slurry sets and is dried, the sandwich becomes rigid and strong enough for use as a building material.
(i.e. strength properties are optimized)
[0039] In each of the above embodiments, the portion of aqueous slurry that is extracted from the various positions within the process, becomes partially set with respect to the slurry to which is recombined with. The partially set slurry comprises nucleation sites around which the slurry can crystallize. In this manner, mixing the partially set slurry with more recently formed slurry (i.e. slurry which has undergone less hardening) is found to increase the set rate of the aqueous slurry passing from the outlet 120.
(additional mixing improving properties)
[0040] The set time for each of the above embodiments was compared with the set rate using the known process, as illustrated in FIG. 1, using an accelerator additive. The results revealed a reduction in the set time for the slurry using the process of the first embodiment when compared with the known process, and a greater reduction in set time using the process of the second embodiment. However, the greatest reduction in set time for the slurry was achieved by extracting a portion of the aqueous slurry from the outlet and recombining the portion with more recently formed slurry within the outlet, according to the third embodiment.
(reintroducing and further mixing time improve properties)
[0041] From the foregoing therefore, it is evident that plaster slurry formed with the process of the present invention, hardens more rapidly than untreated slurry and slurry which has been prepared with additives.
(improved rapid hardening properties)
The process utilizes a controller: pumps a portion of the aqueous slurry at a controlled rate using a controller (not shown) to control the rate of the portion of the slurry that goes from the outlet to the inlet and combines with unmixed constituents and is re input into the mixer [0033], from the outlet 120, back to the outlet 120, where it combines with more recently formed aqueous slurry.[0034][0036] (i.e. one of skill in the art can control the % of the slurry volume reintroduced and the time interval for mixing as above set forth)
(the process can be controlled for amounts including amounts re introduced to mixer)
The greatest reduction in set time for the slurry was achieved by extracting a portion of the aqueous slurry from the outlet and recombining the portion with more recently formed slurry within the outlet, according to the third embodiment.[0040]
(the process time is optimized by re introducing a portion of the slurry into to mixer and combining with additional slurry)
Thus some of the slurry from the mixer outlet is drawn out along this flow path through duct 165 and reintroduced within the mixer outlet at 185 in a controlled and timed manner.[0037]
(time can be controlled and optimized)
The prior art having taught the claimed process with the claimed materials and recognizing that the process can have predetermined times flows etc. and controlled amounts etc. enabled by the use of various controllers, etc. to improve rapid hardening
as above set forth with a controlled and timed manner renders obvious the limitations of the instant claims to one of ordinary skill in the art at the time of filing the invention. The product would be expected to possess the performance features such as increased core strength.
Regarding Claim 7:
The slurry is used to form gypsum based plasterboard [0032] (meeting the limitation for a gypsum wallboard panel)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2, 4-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-17 and 18-21 of United States Patent 12415765 (formerly copending application 17855732). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant applicant and the allowed application both claim a process of forming a slurry with board material (i.e. calcined gypsum) and water and mixed where a portion is discharged and then re-added for further mixing and forming a board. (all claims are drafted as comprising thereby permitting additional steps etc. MPEP 2111)
Response to Arguments
Applicant's arguments filed 11/11/2025 have been fully considered but they are not persuasive.
The above rejection establishes a prima facie showing of obviousness by a preponderance of the evidence. The applicant traverses the rejections based on two limitations. The first is the amount of volume % of the slurry in the mixer which is diverted and how long it resides in the mixer once re introduced. Claim 1 does not include the limitation for time; however claim 11 includes both limitations. The examiner notes that up to 20% includes zero. As such, prior to introduction of any recirculated slurry, claim 1 is rendered obvious with zero. Notably, if no slurry were diverted the prior art would establish obviousness and the length of time is moot.
Applicant argues the cited prior art does not teach a range of how much slurry is extracted and reintroduced. The amount of extracted and reintroduced slurry includes zero. As such this limitation seems to indicate it is not necessary to reintroduce any slurry to have the argued outcome/properties. The above cited prior art recognizes adjusting times of mixing affords controllers/means with which to do so and teaches optimizing various aspects such as set time rendering obvious the claim limitations as above set forth with a reasonable expectation of success.
Applicant argues the additional mixing for 2-3 seconds is not taught by the prior art. The claims merely recite “resides in the mixer” not further mixing. Nonetheless the reference teaches further mixing as more fully above set forth. While no express time is recited, the reference clearly teaches a “pre-determined time” may be set and teaches the use of controllers enabling adjusting same, as well as the properties sought to be optimized etc. as more fully above set forth. Given that no other mixing conditions are recited in the claims (temperature, pressure, mixing speed, type of mixer) the examiner maintains that one of ordinary skill in the art at the time of filing the invention could optimize same to achieve the optimized properties of the reference. The mixing time does not appear to be supported for criticality of said range by data commensurate in scope.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. increased BCS strength without HRA or Entoleter comminutor)) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant points to par [0029] of the instant specification asserting the improvement of compressive strength results from extra mixing. In one example despite the argued mixing the improvement is less than the claimed 14% giving rise to questions about the other factors which clearly affect the final product as well as the actual materials and amounts thereof used in the mixture and importantly the particle sizes of each component. For example, what type of mixer, is heat used, what is the mixing speed, etc. The prior art conducts extra mixing and therefore should overlap the argued / claimed properties.
The applicants assertion that reintroducing a low percentage (or even zero as up to includes zero) of the slurry into the mixer for a short “residence” time will result in improved strength is not supported by the data in the instant specification commensurate with the scope of the claims and as above set forth the nexus for the argued improvement is not established as there are multiple variables which affect core strength not addressed in the data. For example, applicant acknowledges that particles size affected with the use of a comminutor affects strength yet no particle size is recited for the instant process. Applicant acknowledges that the addition of certain additives affect strength but no mention or exclusion of additives is set forth. (See Spec for example [0029-0031] and Remarks)
Applicant argues the prior art will form agglomerates with increased set time. This is not persuasive as the prior art teaches reduced set time. The process is for reducing a set time for plaster slurry (i.e. calcined gypsum)[0029] (Abstract) There is no information or evidence to establish the prior art would produce a lumpy material unsuited for wall board. The instant application makes wall board as such the process will result in a product suitable for same.
Applicant appears to argue that the process provides superior and unexpected results and points only to one par. of data in the specification at [0029] The data proffered does not support such an argument commensurate in scope with the claims. As above set forth the data is not commensurate in scope of the claims as there are no examples at 2-3 second of mixing at 4 seconds, and 1 second etc. (2x10 second mixing is the only example which is asserted to be representative of the claimed invention and that affords different results depending on the materials used/sourced; different amounts of the slurry to be reintroduced ranging from zero to 20 and above 20 % are not demonstrated) The amount of extracted and reintroduced slurry includes zero. As such this limitation seems to indicate it is not necessary to reintroduce any slurry to have the argued outcome/properties.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Applicant or patent owner bears the burden of establishing a nexus between the objective evidence of nonobviousness and the claimed invention. See In re Huang, 100 F.3d 135, 140, 40 USPQ 1685, 1689 (Fed. Cir. 1996)
The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) "[A]ppellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness." Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (Bd. Pat. App. & Inter. 1992).
The amount of slurry is up to 20% as such this limitation in the current claims is not distinguishing as it includes zero. The additional mixing time then becoming a “moot” issue. The patent claims a pumping rate of 2.3 m/s (claim 1) recognizing a time and rate adjustment rendering obvious mixing times. The double patenting rejections are maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action for example:
Witthold et al (US 2003/0117891) discloses a slurry mixer outlet similar to the drawings of the instant application.
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THIS ACTION IS MADE FINAL. 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 PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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