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 .
Election/Restrictions
Applicant’s election of Group I Species 1A and Species 2 A in the reply filed on 6/29/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Applicant’s election without traverse of Group I Species 1A and Species 2A in the reply filed on 6/29/2026 is acknowledged.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/1/2024 has been considered by the examiner.
Claim Interpretation/Introduction
The following is expressly incorporated into each and every rejection below as though fully set forth therein.
Concentration gradient is defined in the instant specification as the concentration gradient may be such that the concentration of the calcination inhibitor increases or decreases over a portion of the thickness [030]
The prior art as more fully below set forth discloses ranges which overlap or fall within the claimed ranges and ratios thereby rending same obvious.
See MPEP 2144.05(I): "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)"
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)
Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)
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) 1-9, 13-14, 16, and 18-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hemphill et al (WO 2022/233455A1) published 11/10/2022 (published prior to effective filing date of instant application 2/2/2023) (no common assignee or inventor)
Regarding claims 1-2, 3-6, 7-8, 9, 13-14, 16, 18, and 19-21
Hemphill et al (WO 2022/233455A1) published 11/10/2022 (published prior to effective filing date of instant application 2/2/2023) (no common assignee or inventor)
Hemphill discloses a gypsum wall board (Abstract) having a gypsum core [0022] and 0.3-1 wt.% or 0.1 to 0.2 wt.% urea distributed uniformly throughout the gypsum core [0022] (meeting the limitation for a gypsum core comprising a calcination inhibitor and overlapping the range of said inhibitor of the claims including but not limited to claims 1 and 7-8 13-14 and 21)(meeting the limitation for a concentration gradient)(meeting claims 2-3 for an amide of urea)
The gypsum board with urea dispersing the gypsum core is ultralight 5/8 inch board having mass of pounds per area of less than 2100 lbs/msf [0021] (i.e. rendering obvious to one of ordinary skill in the art at the time of filing the invention 0.2 wt.% urea lbs/MSF where the amount of urea and the lbs/MSF overlapping the range of claim 18)
Urea (CO(NH.sub.2)2) molar mass 60.06 nitrogen is 14 *2 = 28.014 28.014/60.6=46 % nitrogen
The gypsum core may have other gypsum layers cover sheet and other layers [0021]
The gypsum core layer has at least 60 wt.% calcium sulfate dihydrate or at least 70 wt.% and 90 wt. % [0022] (overlapping the range of claim 16) The aqueous slurry forming the board may include calcium sulfate anhydrite less than 20 wt. % [0032]
The core layer is sandwiched between a front sheet and a back sheet [0040][0054] the gypsum board has a core layer and may have a skim layer on the core layer [0064 et seq] skim layer of calcium sulfate dihydrate/gypsum on at least on side of the gypsum core with a density a least 1.1 times higher than the gypsum core layer [0186-0187]](meeting claim 21 for multiple layers one having the calcination inhibitor and claim 19)
The urea is NH.sub.2CONH.sub.2 and is used in crystalline form (i.e. particles overlapping the claimed particle range) or an aqueous solution in the gypsum board at 0.03 to 1 wt.%. Urea preferably does not include resins of urea formaldehyde [0061] the urea is a powder [0156] (overlapping the claimed particle size)
The composition may comprise optional ingredients including phosphates and salts thereof [0057] strength imparting additives pre gelatinized starch, boric acid, nano-cellulose micro cellulose [00709] siloxanes for water resistance [0072] expansion particles [0074 e seq] optional chloride anions [00106-00107] and additives such as bactericides [0129] (meeting claim 20 for antimicrobial properties)
The composition may further comprise binders and adhesives [0129]
Claim(s) 4-6 are alternatively rejected and Claims 10-11 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hemphill et al (WO 2022/233455A1) published 11/10/2022 (published prior to effective filing date of instant application 2/2/2023) (no common assignee or inventor) as applied to claims 1-9, 13-14, 16, and 18-21 above further in view of Teng (US 2021/0179506)
Regarding Claims 4-6 are alternatively rejected and Claims 10-11 and 17:
Hemphill discloses the limitations above set forth. Hemphill discloses the composition may further comprise binders and adhesives [0129] Hemphill does not expressly disclose the composition comprising formaldehyde.
Teng (US 2021/0179506) like Hemphill discloses gypsum boards with a set of gypsum core sandwiched between two mats one or both of which may be coated [0022] Teng discloses the gypsum comprises calcium sulfate hemihydrate, anhydrous calcium sulfate, etc. with 80 wt.% fully hydrated calcium sulfate and includes a variety of additives [0050] (leaving 20 wt.% hemi hydrate) overlapping the range of claim 17) A suitable coating material includes urea-formaldehyde as a polymer binder [0034] The urea formaldehyde is a resin adhesive [0045] The binder is in the barrier coating in an amount of 1 lb/MSF to about 40 lb/MSF and the coating has an average thickness of about 1 micron to 100 microns (i.e. as such each particle therein must not exceed 100 microns)(overlapping the range of claims 4-6 and 10-11)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to ad a binder of urea formaldehyde resin in the ranges and sizes taught by Teng to the composition of Hemphill as Hemphill contemplates a binder and the urea formaldehyde binder is compatible with gypsum boards. It would have been obvious to one of ordinary skill in the art to use the fully hydrated calcium sulfate in the ranges of Teng in the composition of Hemphill as it is a suitable range for forming gypsum boards.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-21 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 5-6, and 15-21 of co-pending Application No. 18795282 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
The instant application and the co-pending application both claim a gypsum pane with a core comprising an amide of urea in overlapping/same ranges and comprising formaldehyde and a biuret content. The co-pending recites product by process limitations formed from a slurry rendering obvious the concentration gradient of instant claim 1.
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.
TAN, WANG, He et al CN109695306A discloses a wall system having an inner layer plaster slab (i.e. core) a keel an insulating layer etc. which purifies air (Abstract) In an embodiment of the invention, the formaldehyde degradation material can be added to the inner layer phosphor gypsum board on the inner layers of gypsum board core is amide.
Alternatively, the amino compound is selected from ammonium acetate, urea formaldehyde resin and urea in the one kind of or more.
Adzima et al (US 2011/0190434) discloses a composite material comprising 100 part gypsum, polymer resin 60-75 parts which is a urea formaldehyde resin forming a homogeneous matrix with the gypsum, fibers 15-25 parts and water 10-30 parts (Abstract)
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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