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 .
Claim Objections
Claims 13 and 14 are objected to because of the following informalities. The shrinkage test used to determine the claimed shrinkage property/characteristic set forth in claims 13 and 14 should be specified as being “as measured by ASTM C1795” such as set forth in claim 12 and described in the specification in paragraphs [0013]-[0016] and [0037].
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, line 5, and claim 19, line 4, the term “the mass stucco” lacks proper antecedent basis. As detailed in the specification, i.e., Tables 1 and 2, the percentages set forth in claims 1 and 19 is the amount of silicone oil in the slurry. Accordingly, this rejection can be overcome by deleting the terms “the mass stucco used to form”. Claims 2-12 are rejected due to their dependence upon rejected claim 1.
Claim 9 is indefinite in that it claims a range for the silicone oil in the slurry of “0.1 to 0.1 wt%”; however, since both end points of this “range” are the same, a value rather than a range is being claimed. It appears as though the intention may have been to claim the range of “0.1 to 1.0 wt%” which is exemplified in the specification in paragraph [0005].
In claim 11, the use of the phrase “i.e., …” appears to be exemplary claim language. See MPEP 2173.05(d).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5, 8, 10, and 12-19 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Martin et al. (WO 2022/106419).
Regarding claims 1-3 and 10, Martin discloses a method of producing a fire resistant gypsum board (pg 2, line 28) comprising the steps of providing a calcium sulfate slurry (pg 5, line 2) containing a silicone oil, such as dimethylpolysiloxane (PDMS, Example 6), in an amount of 0.2 to 2.5 wt% of the slurry (pg 3, line 5), allowing the slurry to set to form a set gypsum material, and drying the set gypsum material to provide the gypsum core (pg 7, lines 4-12). Example 6 of Martin is directed to an embodiment that uses 0.6 wt% of PDMS in the slurry. Since PDMS does not contain any Si-H bonds, the use of this polysiloxane meets the claim limitation of “a hydride content of no more than 0.01 equivalents per equivalent of silicone”.
Regarding claims 4 and 5, the polysiloxane used is preferably in liquid form when it is added to the slurry (pg 3, line 15).
Regarding claim 8, Martin discloses using a water to calcium sulphate ratio of between 0.5:1 and 1:1 (pg 6, line 22).
Regarding claim 12, Martin discloses that the gypsum board has a shrinkage at 800ᵒC of ~2%. So, while Martin does not measure the shrinkage at 850ᵒC, it is reasonable to conclude that the shrinkage properties/characteristics of the gypsum board of Martin would be the same as the present invention, since Martin uses the same materials, in the same amounts, and uses the same process for forming the gypsum board. See MPEP 2112.
Regarding claims 13, 14, and 19, Martin discloses a gypsum board formed from the claimed process that would inherently exhibit the claimed shrinkage properties/characteristics (see rationale in the above paragraph).
Regarding claims 15-17, Example 6 of Martin is directed to an embodiment that uses 0.6 wt% of PDMS in the slurry.
Regarding claim 18, Martin discloses that paper liners can be placed on opposing faces of the gypsum core (pg 8, line 21).
Claim Rejections - 35 USC § 102/103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7 and 11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Martin et al. (WO 2022/106419).
Regarding claim 7, Martin does not specifically disclose that the silicone oil concentration in the center of the core is at least 60% of the concentration within 10% of an outer edge of the gypsum core. However, since Martin uses the same materials, in the same amounts, and uses the same process for forming the gypsum board, it is reasonable to conclude that the invention of Martin inherently meets this claim limitation. Moreover, the concentration of the silicone oil throughout the gypsum core would be a function of the degree of mixing of the slurry. It would have been obvious to one of ordinary skill in the art to have thoroughly mixed the slurry prior to setting and drying motivated by the desire to obtain homogeneous properties throughout the gypsum core.
Regarding claim 11, Martin does not disclose that there is any excess calcium carbonate provided to the stucco that isn’t part of the slurry. Thus, it appears as though Martin anticipates this claim. Moreover, since Martin uses the same materials, in the same amounts, and uses the same process for forming the gypsum board, it is reasonable to conclude that the invention of Martin inherently meets this claim limitation. See MPEP 2112.
Claim Rejections - 35 USC § 103
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. (WO 2022/106419).
Regarding claim 6, Martin does not disclose the droplet size of the silicone oil. However, it would have been obvious to the skilled artisan to have discovered workable droplet sizes of the silicone oil through routine experimentation.
Regarding claim 9, Martin does not disclose a slurry containing 0.1 wt% of silicone oil. Martin discloses that using a slurry that includes a polysiloxane in an amount as low as 0.2 wt%, along with other conventional components, results in a slurry that can be formed into a gypsum board that has desire fire resistance and low shrinkage properties (page 2, lines 23-34). That is, the amount of polysiloxane used is deemed to be a result effective variable. As set forth in MPEP 2144.05, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It would have been obvious to one of ordinary skill in the art to have prepared the slurry of Martin, wherein the amount of PDMS is 0.1 wt%, motivated by the desire to limit the costs of the use of the polysiloxane component while still experience some fire resistance and low shrinkage properties.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. (WO 2022/106419) in view of Blackburn et al. (US Pub 2008/0000392).
This is an alternative rejection to the above anticipation rejection for claims 4 and 5. Martin does not detail the process of adding the liquid polysiloxane to the slurry. However, the present claims simply require that an emulsion is formed. As set forth in Blackburn, it is well known in the gypsum slurry art to add a siloxane component to the slurry as an emulsion in order to obtain a slurry which can be thoroughly mixed [0046]. It would have been obvious to one of ordinary skill in the art to have provided the PDMS component to the slurry of Martin in an emulsion form, as taught in Blackburn, motivated by the desire to obtain a slurry that can be thoroughly mixed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Blaine Copenheaver whose telephone number is (571)272-1156. The examiner can normally be reached M-F 8-5.
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/BLAINE COPENHEAVER/Primary Examiner, Art Unit 1781