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 .
Claim Rejections - 35 USC § 112(b)
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 1-20 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, the phrase “viscosity in the range of 50 to 600 BU and/or in the range of 50-600 centipoise” is confusing and therefore vague and indefinite due to the use of the phrase “and/or”. This phrase is confusing because the material cannot have both viscosity measurements as BU and centipoise are not equivalent measurements of viscosity since 1 BU is equal to 2.1 centipoise. Also the conditions for the measurement of the viscosity are unclear as the viscosity is dependent on various parameters such as temperature and methods of measurement. Clarification is requested.
In claim 2, the phrase “viscosity of at least 100 BU less than and/or at least 100 centipoise” is confusing and therefore vague and indefinite due to the use of the phrase “and/or”. This phrase is confusing because the material cannot have both viscosity measurements as BU and centipoise are not equivalent measurements of viscosity since 1 BU is equal to 2.1 centipoise.
In claim 3, the terminology of “e.g.” renders the claim indefinite because it is unclear whether the limitations following this term are part of the claimed invention. See MPEP § 2173.05(d).
In claim 7, the phrases “the gel temperature of starch A” and “the gel temperature of starch B” lack proper antecedent basis.
In claim 11, the phrases “the gel temperature of starch C” and “the gel temperature of starch D” lack proper antecedent basis.
In claim 15, the conditions for the measurement of the viscosity are unclear as the viscosity is dependent on various parameters such as temperature and methods of measurement. Clarification is requested.
In claim 16, the phrase “viscosity of at least 100 BU less than and/or at least 100 centipoise” is confusing and therefore vague and indefinite due to the use of the phrase “and/or”. This phrase is confusing because the material cannot have both viscosity measurements as BU and centipoise are not equivalent measurements of viscosity since 1 BU is equal to 2.1 centipoise.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 4-7, 9, and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
Claim 4 fails to further limit claim 1 as claim 1 recites a maximum viscosity of 600 BU whereas this claim recites 800 BU.
Claim 6 fails to further limit claim 4 and ultimately claim 1 as claim 1 recites a maximum viscosity of 600 BU whereas this claim recites 800-1400 BU.
Claim 9 fails to further limit claim 8 and ultimately claim 1 as claim 1 recites a maximum viscosity of 600 BU whereas this claim recites an upper limit of 800 BU.
Claim 17 fails to further limit claim 15 as claim 15 recites a maximum viscosity of 600 BU whereas this claim recites 800 BU.
Claims 5-7 are included in this rejection as they depend from rejected claim 4.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Claims 1-3, 14-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al (US Patent Application Publication No US 2020/0024190 A1).
The reference teaches, in claim 1, a board comprising: a set gypsum core disposed between two cover sheets, the core formed from a slurry comprising stucco, water and at least one pregelatinized starch, wherein the starch has a characteristic of a viscosity from about 35 centipoise to about 425 centipoise when the viscosity is measured while the starch is subjected to the conditions according to the VMA method, wherein the pregelatinized starch is in an amount from about 0.5% to about 5% by weight of the stucco. Claim 5 teaches that the slurry comprises a second type of starch that is (a) not gelatinized, (b) is a pregelatinized starch having the characteristic of a viscosity below 35 centipoise according to the VMA method, and/or (c) is a pregelatinized starch having the characteristic of viscosity above 425 centipoise according to the VMA method.
The instant claims are obvious over the reference. It should be noted that claim 1 is a product-by-process claim and therefore patentability is determined based on the product itself.
As for claim 1, the reference teaches a gypsum core formed from a slurry comprising stucco, water and at least one pregelatinized starch having a viscosity from about 35 centipoise to about 425 centipoise. The amount of the starch based on the amount of the stucco is 0.5 to about 5% by weight. A board is formed by placing the slurry between a first and second cover sheet to form an assembly which is cut into a board and the board is dried (see paragraph [0098] as well as claim 15). The reference further teaches that a second starch can be added having a viscosity about 425 centipoise. The reference therefore teaches the use of 2 starches where the second starch has a viscosity higher than the first starch. The viscosity ranges and the amount of starches overlap the claimed range and overlapping ranges and 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), see MPEP 2144.05. While the reference does not teach the same method as it fails to recite the drying temperature utilized in the process, the resulting product is believed to be the same. As stated in MPEP 2113 [R-1]: "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Once a product appearing to be substantially identical is found and a rejection is made, the burden shifts to the applicant to show an unobvious difference "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). Accordingly since the resulting product appears to be the same the instant claim is rendered obvious by the reference.
As for claim 2, based on the viscosity range of the first starch and the second starch, the first starch can possess a viscosity of at least 100 centipoise less than the second. Note that the viscosity of the first starch ranges from 35 to 425 centipoise and the second is greater than 425.
As for claim 3, paragraph [0028] teaches that the amount of the starch to other starches is 25:75, about 30:70, about 50:50 etc. and this falls within the claimed ratios.
As for claim 14, the reference teaches an amount of starch that overlaps the claimed range and 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), see MPEP 2144.05.
As for claim 15, the reference teaches a gypsum core formed from a slurry comprising stucco, water and at least one pregelatinized starch having a viscosity from about 35 centipoise to about 425 centipoise. The amount of the starch based on the amount of the stucco is 0.5 to about 5% by weight. A board is formed by placing the slurry between a first and second cover sheet to form an assembly which is cut into a board and the board is dried (see paragraph [0098] as well as claim 15). The reference further teaches that a second starch can be added having a viscosity about 425 centipoise. The reference therefore teaches the use of 2 starches where the second starch has a viscosity higher than the first starch. The viscosity ranges and the amount of starches overlap the claimed range and overlapping ranges and 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), see MPEP 2144.05. While the reference does not recite the drying temperature it is within the level of ordinary skill in the art to determine the drying temperature necessary to dry the gypsum board. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). Further, the selection of a drying temperature would have been obvious because a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art.
As for claim 16, based on the viscosity range of the first starch and the second starch, the first starch can possess a viscosity of at least 100 centipoise less than the second. Note that the viscosity of the first starch ranges from 35 to 425 centipoise and the second is greater than 425.
As for claim 20, the reference teaches an amount of starch that overlaps the claimed range and 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), see MPEP 2144.05.
References Cited By The Examiner
US Patent Application Publication No. US 20190322584 A1 teaches a method of preparing gypsum board comprising: (a) providing a first cover sheet; (b) mixing a slurry comprising stucco, water, and an accelerator comprising calcium sulfate dihydrate particles and starch having a cold water solubility of at least about 25% (e.g., at least about 35%), and a viscosity of about 25 Brabender Units (BU) or less when the starch is in a 30% aqueous starch slurry at 92° C.; (c) disposing the slurry between the first cover sheet and a second cover sheet to form an assembly; (d) cutting the assembly into a board; and (e) drying the board.
This reference fails to teach the use of a mixture of starches having a viscosity within the claimed range.
US Patent Application Publication No. US 20210147297 A1 teaches a gypsum board comprising: a set gypsum core disposed between two cover sheets, the core formed from a slurry comprising stucco, water, and at least one uncooked starch having a peak viscosity of from about 120 Brabender Units to about 900 Brabender Units when the viscosity is measured by putting the starch in a slurry with water at a starch concentration of 15% solids, and using a Viscograph-E instrument set at 75 rpm and 700 cmg
This reference fails to teach the use of a mixture of starches having a viscosity within the claimed range.
US Patent Application Publication No. US 20210253476 A1 teaches a gypsum board comprising: a set gypsum core disposed between two cover sheets, the core formed from a slurry comprising stucco, water, and at least one uncooked starch having a hot water viscosity of from about 20 Brabender Units to about 300 Brabender Units when the viscosity is measured by the HWVA method.
This reference fails to teach the use of a mixture of starches having a viscosity within the claimed range.
Allowable Subject Matter
Claims 8, 10-13 and 18-19 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 and provided that all 112(b) rejections are overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or render obvious the limitations found in these claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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 R. Orlando can be reached at (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.
/ANTHONY J GREEN/
Primary Examiner, Art Unit 1731
ajg March 16, 2026