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 .
Response to Arguments
Applicant’s arguments, filed August 20, 2026, with respect to the rejection in view of Ataka have been fully considered and are persuasive as Ataka teaches adding organopolysiloxane to already calcined gypsum, not to the gypsum slurry prior to calcination. The rejections in view of Iyer et al (PGPub 2020/0165165 cited in IDS) or Bailey (PGPub 2018/0346383) in view of Ataka et al (PGPub 2016/0289122) has been withdrawn.
Applicant’s arguments, filed August 20, 2026, with respect to the rejection of Claims 33 and 36 under 35 USC 103 in view of Bailey (PGPub 2018/0346383) and Chevalier (PGPub 2008/0286474 cited in IDS) regarding reclaimed gypsum have been fully considered and are persuasive as the combination does not address reclaimed gypsum. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Bailey (PGPub 2018/0346383), Chevalier (PGPub 2008/0286474 cited in IDS) and Hiranaka et al (PGPub 2013/0022533).
Applicant's arguments filed August 20, 2026 regarding the application of the fluorophosphate of Chevalier have been fully considered but they are not persuasive.
Applicant argues the cited fluorophosphate of Chevalier is utilized for a different purpose and at a different stage of gypsum processing than presently claimed.
In response to applicant's argument that the fluorophosphate of Chevalier is utilized for a different purpose, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding Applicant’s assertion that the fluorophosphate of Chevalier is utilized at a different stage, Examiner respectfully disagrees noting Chevalier recites “As used herein, the term gypsum is intended to mean all solid forms of calcium sulphate including calcium sulphate dehydrate CaSO4.2H2O. The term stucco is intended to mean calcium sulphate hemihydrate CaSO4.0.5H2O, commonly known as plaster of Paris or calcined gypsum but for the sake of this invention should also be understood to be dehydrate and anhydrate derivatives thereof” and therefore “stucco slurry” may refer to uncalcined gypsum as claimed.
Applicant's arguments filed August 20, 2026 regarding the combination of Iyer/Bailey in view of Hiranaka have been fully considered but they are not persuasive.
Applicant argues Iyer/Bailey and Hiranaka cannot be combined as Iyer/Bailey does not address why the phosphorus containing compound would be applied to reclaimed gypsum as claimed.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner respectfully disagrees and notes that Iyer and/or Bailey (the primary reference) does not need to have a motivation to be applied to process of the Hiranaka (the secondary reference) because the Iyer/Bailey is not being applied to the method of Hiranaka. As set forth in the previous rejection, the method of Iyer/Bailey is modified by the teaching of Hiranaka and therefore, so long as the there is motivation to modify Iyer/Bailey in view of Hiranaka, the rejection is sufficient. Examiner notes Iyer/Bailey was relied upon to teach applying a phosphorus containing compound to a first gypsum compound while Hiranaka provided a motivation to substitute reclaimed gypsum into the composition to reclaim waste [0002] as recited in the previous action.
Applicant further argues Hiranaka does not include applying a phosphorus containing compound and thereafter combining that phosphorus containing compound with virgin gypsum.
Examiner respectfully disagrees noting the combination of Iyer/Bailey and Hiranaka teaches applying a phosphorus containing compound to reclaimed gypsum as set forth above. Examiner further notes Hiranaki further teaches the strength of the molded product may be further improved by adding high-quality (virgin) gypsum [0030] thus indicating that virgin gypsum can be added later to the reclaimed gypsum meeting the instant limitation.
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 31-39, 41 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (PGPub 2020/0165165 cited in IDS) in view of Hiranaka et al (PGPub 2013/0022533).
Regarding Claim 31, Iyer teaches a method for making a gypsum board (Abstract), the method comprising:
applying a phosphorus containing compound to a first gypsum composition to provide a phosphorus modified gypsum composition [0055],
wherein the phosphorus containing compound comprises a phosphite, a phosphate having the formula P(O)n(X)m wherein n is from 0 to 4, m is from 0 to 6, the sum of n and m is from 3 to 6, and X is hydrogen, halogen, sulfur, or selenium, a salt of the phosphite or the phosphate, or a combination thereof [0026];
calcining the phosphorus modified gypsum composition to provide a calcined gypsum composition ([0024]- stucco is calcined gypsum);
preparing a gypsum slurry by combining water and the calcined gypsum composition [0057];
depositing the gypsum slurry on a first facing material [0058];
providing a second facing material on the gypsum slurry [0058]; and
allowing the calcined gypsum to convert to calcium sulfate dihydrate [0061].
Iyer does not specify the first gypsum composition comprises reclaimed gypsum.
Hiranaka teaches an alternative method of making a gypsum board (Abstract) wherein the first gypsum composition comprises reclaimed gypsum [0007] in order to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Iyer to include reclaimed gypsum as taught by Hiranaka with reasonable expectation of success to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002].
Regarding Claim 32, Iyer further teaches the phosphorus containing compound comprises a phosphate having the formula P(O)n(X)m wherein n is from 0 to 4, m is from 0 to 6, the sum of n and m is from 3 to 6, and X is hydrogen, halogen, sulfur, or selenium, a salt thereof, or a mixture thereof [0026].
Regarding Claim 33, Iyer further teaches X includes fluoro (Claim 4; [0027]).
Regarding Claim 34, Iyer further teaches n is from 2 to 3 [0028].
Regarding Claim 35, Iyer further teaches m is from 1 to 2 [0029].
Regarding Claim 36, Iyer further teaches the phosphorus containing compound comprises a halophosphate [0031].
Regarding Claim 37, Iyer further teaches the phosphorus containing compound comprises a salt including an alkali metal, an alkaline earth metal, a transition metal, or a combination thereof [0038].
Regarding Claim 38, Iyer further teaches the phosphorus containing compound comprises sodium monofluorophosphate [0065].
Regarding Claim 39, Iyer further teaches the gypsum slurry further comprises a foaming agent comprising an alkyl sulfate, an alkyl ether sulfate, or a mixture thereof ([0046]- foam or foaming agents including aqueous foam (e.g. sulfates)).
Regarding Claim 41, Iyer does not specify the first gypsum composition comprises reclaimed gypsum and virgin gypsum.
Hiranaka teaches an alternative method of making a gypsum board (Abstract) wherein the first gypsum composition comprises reclaimed gypsum [0007] and virgin gypsum [0030] in order to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002] and further improve the strength of the molded product over purely reclaimed gypsum [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Iyer to include reclaimed and virgin gypsum as taught by Hiranaka with reasonable expectation of success to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002] and further improve the strength of the molded product over purely reclaimed gypsum [0030].
Regarding Claim 48, Hiranaka further teaches combining the modified gypsum composition with virgin gypsum to provide a second gypsum composition, calcining the second gypsum composition to provide the calcined gypsum composition [0030] in order to further improve the strength of the molded product over purely reclaimed gypsum [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combination of Iyer/Bailey and Hiranaka to include reclaimed and virgin gypsum as taught by Hiranaka with reasonable expectation of success to further improve the strength of the molded product over purely reclaimed gypsum [0030].
Claims 31-32, 34-35, 41 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over Iyer et al (PGPub 2020/0165165 cited in IDS) or Bailey (PGPub 2018/0346383) in view of Hiranaka et al (PGPub 2013/0022533).
Regarding Claim 31, Bailey teaches a method for making a gypsum board (Abstract), the method comprising:
applying a phosphorus containing compound to a first gypsum composition to provide a phosphorus modified gypsum composition [0010],
wherein the phosphorus containing compound comprises a phosphite, a phosphate having the formula P(O)n(X)m wherein n is from 0 to 4, m is from 0 to 6, the sum of n and m is from 3 to 6, and X is hydrogen, halogen, sulfur, or selenium, a salt thereof, or a mixture thereof ([0009]-[0010]- discussing acceptable phosphates and phosphate-based compounds that satisfy the required formula),
calcining the phosphorus modified gypsum composition to provide a calcined gypsum composition ([0010]- milled raw gypsum and additive are flash calcined);
preparing a gypsum slurry by combining water and the calcined gypsum composition ([0010]- stucco is mixed with water to form gypsum slurry);
depositing the gypsum slurry on a first facing material ([0010]- the gypsum slurry is sandwiched between two sheets of facing material);
providing a second facing material on the gypsum slurry ([0010]- the gypsum slurry is sandwiched between two sheets of facing material); and
allowing the calcined gypsum to convert to calcium sulfate dihydrate ([0002]; [0005]- discussing the conversion to calcium sulfate dihydrate).
Bailey does not specify the first gypsum composition comprises reclaimed gypsum.
Hiranaka teaches an alternative method of making a gypsum board (Abstract) wherein the first gypsum composition comprises reclaimed gypsum [0007] in order to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Bailey to include reclaimed gypsum as taught by Hiranaka with reasonable expectation of success to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002].
Regarding Claim 32, Bailey further teaches the phosphorus containing compound comprises a phosphite, a phosphate having the formula P(O)n(X)m wherein n is from 0 to 4, m is from 0 to 6, the sum of n and m is from 3 to 6, and X is hydrogen, halogen, sulfur, or selenium, a salt thereof, or a mixture thereof ([0009]-[0010]- discussing acceptable phosphates and phosphate-based compounds that satisfy the required formula).
Regarding Claims 34 and 35, Bailey further teaches n is from 2 to 3 and m is from 1 to 2 ([0009]-[0010]- discussing acceptable phosphates and phosphate-based compounds that satisfy the required formula).
Regarding Claim 41, Bailey does not specify the first gypsum composition comprises reclaimed gypsum and virgin gypsum.
Hiranaka teaches an alternative method of making a gypsum board (Abstract) wherein the first gypsum composition comprises reclaimed gypsum [0007] and virgin gypsum [0030] in order to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002] and further improve the strength of the molded product over purely reclaimed gypsum [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Bailey to include reclaimed and virgin gypsum as taught by Hiranaka with reasonable expectation of success to reclaim gypsum waste to avoid landfill shortages and promote environmental protections [0002] and further improve the strength of the molded product over purely reclaimed gypsum [0030].
Regarding Claim 48, Hiranaka further teaches combining the modified gypsum composition with virgin gypsum to provide a second gypsum composition, calcining the second gypsum composition to provide the calcined gypsum composition [0030] in order to further improve the strength of the molded product over purely reclaimed gypsum [0030].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the combination of Iyer/Bailey and Hiranaka to include reclaimed and virgin gypsum as taught by Hiranaka with reasonable expectation of success to further improve the strength of the molded product over purely reclaimed gypsum [0030].
Claims 33 and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Bailey (PGPub 2018/0346383) in view of Hiranaka et al (PGPub 2013/0022533) and Chevalier (PGPub 2008/0286474 cited in IDS).
Regarding Claim 33, Bailey and Hiranaka do not specify X includes fluoro.
Chevalier teaches an alternative method for making a gypsum board (Abstract) wherein the element in the phosphate compound includes fluoro [0030] in order to enhance the formation of minerals imparting durable hydrophobicity [0027] to produce water resistant gypsum [0001].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Bailey and Hiranaka to include a fluoride salt as taught by Chevalier with reasonable expectation of success to enhance the formation of minerals imparting durable hydrophobicity [0027] to produce water resistant gypsum [0001].
Regarding Claims 36, Bailey and Hiranaka do not specify the phosphorous containing compound comprises halophosphate.
Chevalier teaches an alternative method for making a gypsum board (Abstract) the phosphorous containing compound may comprise fluorophosphate (a halophosphate) [0030] in order to enhance the formation of minerals imparting durable hydrophobicity [0027] to produce water resistant gypsum [0001].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Bailey to include fluorophosphate as taught by Chevalier with reasonable expectation of success to enhance the formation of minerals imparting durable hydrophobicity [0027] to produce water resistant gypsum [0001].
Allowable Subject Matter
Claims 51-53 are allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art to independent Claim 51 is Iyer et al (PGPub 20200165165 cited in IDS) or Bailey (PGPub 2018/0346383) in view of Hiranaka et al (PGPub 2013/0022533) and Ataka et al (PGPub 2016/0289122) as set forth in the previous action. However, the prior art fails to teach or suggest including an organosilicon compound in the uncalcined gypsum composition prior to calcination as Ataka teaches adding organopolysiloxane to already calcined gypsum (Abstract; [0009]; [0027]). Further, there is no teaching or suggestion to modify the combination of Iyer/Bailey, Hiranaka and Ataka to include an organosilicon compound in the uncalcined gypsum composition prior to calcination. Thus, the prior art does not teach or suggest the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 42-47 and 49 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art to dependent Claims 42-47 and 49 is Iyer et al (PGPub 20200165165 cited in IDS) or Bailey (PGPub 2018/0346383) in view of Hiranaka et al (PGPub 2013/0022533) and Ataka et al (PGPub 2016/0289122) as set forth in the previous action. However, the prior art fails to teach or suggest including an organosilicon compound in the uncalcined gypsum composition prior to calcination as Ataka teaches adding organopolysiloxane to already calcined gypsum (Abstract; [0009]; [0027]). Further, there is no teaching or suggestion to modify the combination of Iyer/Bailey, Hiranaka and Ataka to include an organosilicon compound in the uncalcined gypsum composition prior to calcination. Thus, the prior art does not teach or suggest the claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
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/A.K./Examiner, Art Unit 1748 9/15/26/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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