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 A, claims 1-24, in the reply filed on 02/16/2026 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)).
Claims 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was
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).
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.
Claims 1-3, 7-14, 16-20 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable over Hill, et al. (U.S. Pub. No. 2016/0340247-A1) (hereinafter, “HILL”) in view of Stav, et al. (U.S. Pub. No. 2020/0208398-A1) (hereinafter, “STAV”).
Regarding claim 1, HILL teaches a gypsum panel comprising a gypsum core, wherein the gypsum core comprises gypsum (see HILL at paragraphs [0006], [0008], [0013] and [0052], teaching building materials, including panels, comprising a cementitious composition comprising a rapid setting hydraulic cement and a non-hydraulic cement, wherein the rapid setting cement can include calcium sulfate based cements such as gypsum; i.e., gypsum panels),
and one or more carbon sequestration additives comprising a silicate, one or more metal hydroxides, or a combination thereof (see HILL at paragraphs [0001], [0003]-[0004], [0016]-[0017] and [0022], teaching that the non-hydraulic cements absorb large amounts of carbon dioxide as they harden and can include metal silicates and calcium hydroxide, and teaching that the rapid setting cement can also contain magnesium hydroxide).
However, HILL fails to explicitly mention that the gypsum panel comprises a first facing material and a second facing material sandwiching the gypsum core.
However, this is the known, typical structure of gypsum panels. For example, STAV teaches a gypsum panel comprising a gypsum core (a central core layer and dense core layer, comprising hydraulic material including gypsum, non-hydraulic cements, metal silicates, metal hydroxides, etc.) (see STAV at paragraphs [0002], [0006], [0020], [0033], [0043]-[0047], [0062], [0118], [0120] and [0135]) and a first facing material and second facing material sandwiching the gypsum core (see STAV at paragraphs [0006] and [0043]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the gypsum panel of HILL by simply using the gypsum panel structure of STAV, wherein the gypsum core is sandwiched by a first and second facing material (see STAV at paragraphs [0006] and [0043]). One of ordinary skill in the art could have structured the panel this way with a reasonable expectation of success, yielding the predictable result of providing a usable gypsum panel with a typical structure which may be used for interior or exterior construction (see STAV at paragraphs [0002], [0006], [0020] and [0033]; see HILL at paragraphs [0006] and [0052]). Further, one of ordinary skill would have been motivated to use this structure for the benefit of providing a gypsum panel which has an interface layer which helps bind the central core layer to the facing material and a facing material which can provide the gypsum core with a barrier to moisture or water penetration as taught by STAV (see STAV at paragraphs [0020]-[0025] and [0046]).
Regarding claims 2-3 and 7-8, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the silicate is a silicate mineral, as recited by claim 2; the silicate mineral is a solid solution series mineral, as recited by claim 3; the silicate mineral is a nesosilicate, as recited by claim 7; and the nesosilicate is olivine, as recited by claim 8 (see HILL at paragraph [0022], teaching olivine, (Mg,Fe)2SiO4, which is a solid solution series mineral).
Regarding claim 9, as applied to claim 2 above, HILL in view of STAV teaches a gypsum panel according to claim 2, wherein the silicate mineral reacts with carbon dioxide in an exothermic reaction (see HILL at paragraph [0004], teaching the reaction of the silicate with CO2; this is an exothermic reaction).
Regarding claim 10, as applied to claim 2 above, HILL in view of STAV teaches a gypsum panel according to claim 2, wherein the silicate mineral sequesters carbon dioxide under atmospheric conditions. HILL does not mention that any temperature or pressure other than atmospheric is necessary for carbonation; HILL also teaches that the composition can develop green strength via carbonation at high or low temperatures (see HILL at paragraph [0051]). Further, HILL in view of STAV teaches a gypsum panel as claimed by claim 2, wherein a silicate mineral sequesters carbon dioxide, therefore the gypsum panel of HILL in view of STAV would be expected to have the same or overlapping properties as the claimed gypsum panel, including ability to sequester carbon dioxide under atmospheric conditions. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HILL have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise
Regarding claim 11, as applied to claim 2 above, HILL in view of STAV teaches a gypsum panel according to claim 2, wherein the silicate mineral, the one or more metal hydroxides, or both react with carbon dioxide to form a metal carbonate (see HILL at paragraph [0004]).
Regarding claims 12-14, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the one or more metal hydroxides comprise one or more alkaline-earth metal hydroxides, as recited by claim 12; wherein the one or more alkaline-earth metal hydroxides are calcium hydroxide, magnesium hydroxide, or both, as recited by claim 13; and wherein at least one of the one or more carbon sequestration additives comprises two metal hydroxides, as recited by claim 14 (see HILL at paragraphs [0004] and [0016]-[0017], teaching that the composition can include both calcium hydroxide and magnesium hydroxide).
Regarding claims 16-17, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1. HLL does not explicitly mention that the gypsum panel actively sequesters carbon dioxide for a period of time of one month or more, as recited by claim 16, or a period of one year or more, as recited by claim 17. However, HILL in view of STAV teaches a gypsum panel as claimed by claim 1, therefore the gypsum panel of HILL in view of STAV would be expected to have the same or overlapping properties as the claimed gypsum panel, including ability to actively sequester carbon for a given period of time. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HILL have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Regarding claim 18, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the one or more carbon sequestration additives physically sequester carbon from the atmosphere. HILL teaches that the composition can include lightweight aggregates such as fly ash and clays such as kaolin see HILL at paragraph [0026]), which are aluminosilicates; Applicant’s specification states aluminosilicates included in the composition physically sequester CO2 via adsorption at paragraphs [012] and [043]. HILL in view of STAV teaches a gypsum panel as claimed by claim 1, comprising aluminosilicate additives, therefore the gypsum panel of HILL in view of STAV would be expected to have the same or overlapping properties as the claimed gypsum panel, including ability to physically sequester carbon from the atmosphere. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HILL have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Regarding claim 19, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the one or more carbon sequestration additives chemically sequester carbon from the atmosphere (see HILL at paragraphs [0003]-[0004]).
Regarding claim 20, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the one or more carbon sequestration additives are present in the gypsum core in an amount overlapping with the claimed range of from about 0.01 % to about 20% based on the weight of gypsum in the gypsum core (see HILL at paragraph [0025], teaching that in some embodiments, the weight ratio of the rapid setting cement (gypsum) to the non-hydraulic cement (i.e., carbon sequestration additives) can be 2:1 or greater, i.e., 50% or less of the carbon sequestration additives based on the weight of gypsum in the gypsum core).
HILL also teaches that the respective amounts of non-hydraulic cement and hydraulic cement included in the composition affect the amount of carbon dioxide absorbed and the set time and green strength and compressive strength of the composition, and that one of ordinary skill in the art would know how to select the amount of rapid setting cement to be added to the mixture (see HILL at paragraphs [0001]-[0003], [0013]-[0014], [0019], [0045]-[0048] and [0050]). HILL therefore explicitly teaches that the amounts of carbon sequestration additives and gypsum included in the composition (i.e., the weight percentage of the carbon sequestration additives based on the weight of the gypsum) are result-effective variables which may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "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." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 22, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the one or more carbon sequestration additives comprise slaked lime, hydrated dolomitic lime, or a combination thereof (see HILL at paragraph [0004], teaching calcium hydroxide, i.e., slaked lime).
Regarding claim 23, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1. HILL does not explicitly mention that the gypsum panel has a sequestration efficiency of about 1% to about 100%; however, any amount of effective carbon sequestration in HILL would be expected to fall within the incredibly broad range of 1 to 100%. Further, HILL in view of STAV teaches a gypsum panel as claimed by claim 1, therefore the gypsum panel of HILL in view of STAV would be expected to have the same or overlapping properties as the claimed gypsum panel, including carbon sequestration efficiency. MPEP § 2112.01 (I) states that 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 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). "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). MPEP § 2112.01 (II) states that “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed Cir. 1990). 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. The USPTO does not possess the laboratory facilities to test the properties of the referenced product. However, in light of the reference's disclosure as discussed herein, it appears the claimed invention and that of HILL have the same or very similar properties. Thus, the burden shifts to Applicant to demonstrate otherwise.
Regarding claim 24, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein the gypsum core comprises a first gypsum core layer and a second gypsum core layer (see STAV at paragraphs [0006], [0020] and [0046]),
the first gypsum core layer between the second gypsum core layer and the first facing material and having a density greater than the second gypsum core layer (see STAV at paragraphs [0006], [0020] and [0046]),
the one or more carbon sequestration additives being present in the first gypsum core layer, the second gypsum core layer or both (see HILL at paragraphs [0001], [0003]-[0004], [0008], [0013], [0016]-[0017] and [0022], teaching that the gypsum composition contains carbon sequestration additives; see STAV at paragraph [0020], teaching that the first and second layer have similar composition but with a different concentration of gypsum crystals and void volumes).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over HILL in view of STAV as applied to claim 3 above, and further in view of Scott, et al. (U.S. Pat. No. 1,1890,572-B1) (hereinafter, “SCOTT”).
Regarding claim 4, as applied to claim 3 above, HILL in view of STAV teaches a gypsum panel according to claim 3, wherein the silicate mineral is olivine (see HILL at paragraph [0022]).
HILL fails to explicitly mention that the olivine is in the form of olivine sand.
However, olivine sand is a known form of olivine. For example, SCOTT teaches a composition that is highly effective at sequestering carbon dioxide from the environment (see SCOTT at Abstract and col. 1, lines 9-19, and col. 2, lines 56-63), wherein the slurry comprises metal hydroxide, metal salts such as calcium sulphate, and magnesium hydroxide obtained from olivine, wherein the olivine is olivine sand (see SCOTT at Abstract and col. 6, lines 38-51, col. 4, lines 23-37 and col. 15, lines 26-27). SCOTT teaches that the olivine is a magnesium-rich silicate mineral which may be sourced as sand as this is a common natural form of olivine (see SCOTT at col. 4, lines 28-37).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the gypsum panel of HILL in view of STAV by simply selecting olivine sand as the olivine, as SCOTT teaches this is a common and natural form of olivine (see SCOTT at col. 4, lines 28-37 and col. 15, lines 26-27). One of ordinary skill in the art could have used olivine in the form of olivine sand with a reasonable expectation of success, yielding the predictable result of providing olivine, which will absorb CO2 as a non-hydraulic cement in the composition of HILL (see HILL at paragraphs [0004] and [0022]). Further, olivine sand is a known form of olivine, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Regarding claims 5-6, as applied to claim 4 above, HILL in view of STAV and SCOTT teaches a gypsum panel according to claim 4, wherein the olivine sand comprises one or more intermediate compositions of an olivine solid solution series and/or one or more endmembers from an olivine solid solution series, as recited by claim 5, and wherein the olivine sand comprises one or more intermediate compositions of the forsterite and fayalite olivine solid solution series and/or one or more endmembers of the forsterite and fayalite olivine solid solution series, as recited by claim 6 (see HILL at paragraph [0022] and SCOTT at col. 4, lines 28-37 and col. 15, lines 26-27, teaching olivine, (Mg,Fe)2SiO4; olivine is a solid solution series comprising one or more intermediate compositions or endmembers of forsterite (Mg2SiO4) and fayalite (Fe2SiO4); e.g., see Applicant’s specification at paragraphs [018]-[019], discussing olivine solid solution series).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over HILL in view of STAV as applied to claim 1 above, and further in view of Grussing, et al. (U.S. Pub. No. 2016/0068434-A1) (hereinafter, “GRUSSING”).
Regarding claim 15, as applied to claim 14 above, HILL in view of STAV teaches a gypsum panel according to claim 14, wherein at least one of the one or more carbon sequestration additives comprising two metal hydroxides comprises hydrated lime (see HILL at paragraphs [0004], and [0016]-[0017] and [0023], teaching that the composition can include both calcium hydroxide (i.e., slaked lime, hydrated lime) and magnesium hydroxide).
However, HILL fails to explicitly teach that the hydrated lime is hydrated dolomitic lime.
GRUSSING teaches wallboard comprising a gypsum composition comprising gypsum and hydrated lime, wherein the hydrated lime is a hydrated dolomitic Type S lime (see GRUSSING at paragraphs [0002]-[0003], [0024]-[0025] and [0031]). GRUSSING teaches that hydrated dolomitic lime improves workability of the slurry and allows for smooth and easy application (see GRUSSING at paragraph [0025]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the gypsum panel of HILL in view of STAV by simply substituting the hydrated lime with hydrated dolomitic lime as taught by GRUSSING (see GRUSSING at paragraph [0025]). One of ordinary skill in the art could have made this substitution with a reasonable expectation of success, yielding the predictable result of providing a non-hydraulic hydrated lime (see GRUSSING at paragraph [0025]; see HILL at paragraphs [0004] and [0023]). Further, one of ordinary skill in the art would have been motivated to use hydrated dolomitic lime for the benefit of improving the workability of the slurry and smoothness and ease of application, as taught by GRUSSING (see GRUSSING at paragraph [0025]).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over HILL in view of STAV as applied to claim 1 above, and further in view of Chan, et al. (U.S. Pub. No. 2013/0216762-A1) (hereinafter, “CHAN”).
Regarding claim 21, as applied to claim 1 above, HILL in view of STAV teaches a gypsum panel according to claim 1, wherein a first gypsum core layer, a second gypsum core layer, a third gypsum core layer, or a combination thereof has an average void size (see HILL at paragraph [0037], teaching controlling the void space in the composition; see STAV at paragraphs [0123] and [0125], teaching that the void volumes may be nano-scale, micro-scale and/or macroscale in size).
However, HILL and STAV fail to explicitly teach an average void size from about 90 microns to about 800 microns.
CHAN teaches a gypsum panel comprising gypsum and additives such as magnesium hydroxide and/or other metal hydroxides (see CHAN at Abstract and paragraph [0021]) wherein the average air void size is can be about 100 to about 350 μm (see CHAN at paragraphs [0018]-[0019]). CHAN further teaches that the air void size affects the product core density and weight and the product strength properties and high temperature properties (i.e., air void size is a result-effective variable which may be optimized by one of ordinary skill in the art) and that using the disclosed air void sizes (e.g., 100 to 350 μm) can form gypsum panels having reduced core density and weight while maintaining or improving product strength properties (see CHAN at paragraphs [0016] and [0120]-[0121]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the gypsum panel of HILL in view of STAV by controlling the void size to be an average of about 100 to about 350 μm as taught by CHAN (see CHAN at paragraph [0018]). One of ordinary skill in the art could have selected this void size with a reasonable expectation of success, yielding the predictable result of forming a usable gypsum panel for construction, and would have been motivated to use an average void size within this range for the benefit of forming gypsum panels having reduced density and weight with maintained or improved strength properties as taught by CHAN (see CHAN at paragraphs [0016] and [0120]-[0121]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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, Amber Orlando can be reached on (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
Prosecution Insights