DETAILED ACTION
Claims 1-6 are pending.
Claims 1-6 are rejected.
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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. US 8734582 B2 (patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the reasons set forth below.
The patent/co-pending claims meet all limitations of the present claims.
Specifically, the present claims require a mold-making gypsum composition comprising gypsum hemihydrate, wherein the gypsum hemihydrate comprises a-gypsum hemihydrate and gypsum hemihydrate in a ratio of 25:75 to 65:35.
Patent claim 1 recites a dry gypsum composition consisting essentially of: hemihydrate gypsum prepared by blending b-hemihydrate gypsum and a-hemihydrate gypsum at a ratio from 30:1 to 2:1, which overlap the ranges of the presently claimed.
Further regarding claim 6, given that Patent recites an identical or essentially composition with that of the presently claimed, i.e., a dry gypsum composition consisting essentially of: hemihydrate gypsum prepared by blending b -hemihydrate gypsum and a -hemihydrate gypsum at a ratio from 30:1 to 2:1, therefore it is clear that the dry gypsum composition of the Patent would necessarily and inherently meet the claimed limitation that wherein a pot life of a slurry-like malaxated product obtained by adding water to the mold-making gypsum composition in such a way that the mixing water amount is 45% and malaxating the water and the mold-making gypsum composition is 8 minutes or longer, and a setting time thereof is 30 minutes or shorter.
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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
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 1-6 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.
Claim 1, line 2, recites a phrase “a ratio”. However, it is unclear what the phrase refers to, i.e., a mass ratio, a volume ratio, etc. The examiner interprets that the phrase refers to a mass ratio. Interpretation is speculative. Clarification is requested.
If the interpretation above is accurate, it is advised to point to the originally filed disclosure, or to provide a declaration, to support the position.
Regarding dependent claims 2-6, these claims does not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claims 2-3, each recite a phrase “a ratio”, and are rejected for the same reason set forth above.
Claim 6, line 4, recites a phrase “45%”. However, it is unclear what the phrase refers to, i.e., a mass ratio, a volume ratio, etc. The examiner interprets that the phrase refers to a mass ratio. Interpretation is speculative. Clarification is requested.
Furthermore, it is unclear what the 45% is based on, i.e., based on weight of the gypsum hemihydrate, or a total weight of the mold-making gypsum composition, etc. The examiner interprets that 45% is based on weight of the gypsum hemihydrate. Interpretation is speculative. Clarification is requested.
If the interpretation above is accurate, it is advised to point to the originally filed disclosure, or to provide a declaration, to support the position.
Furthermore, line 4 of claim 6 recites a phrase “is adjusted to be” and line 5 of claim 6 recites a phrase “is adjusted to”. However, it is unclear what each phrase refers to, as it is unclear what is required to be adjusted, or if anything is required to be further adjusted upon the obtaining of the slurry-like malaxated product.
The examiner interprets that nothing is required to be further adjusted upon the obtaining of the slurry-like malaxated product. Interpretation is speculative. Clarification is requested.
If the interpretation is correct, applicant is suggested to amend each phrase to “is”.
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobori, JP 03279248 A (Kobori) (provided in IDS received on 08/24/2023).
The examiner has provided a machine translation of Kobori, JP 03279248 A. The citation of the prior art set forth below refers to the machine translation.
Regarding claims 1-3, Kobori discloses a material capable of readily forming a mold (Kobori, Abstract);
the aimed mold material comprises gypsum (Kobori, Abstract); the gypsum used may be either β-hemihydrate gypsum or α-hemihydrate gypsum (Kobori, page 2, 6th paragraph);
in Example 7, 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum are used as the gypsum in the material (Kobori, page 5, Example 7), therefore, Kobori teaches a mass ratio of α-hemihydrate gypsum to β-hemihydrate gypsum of 1:1, which is within the claimed ranges.
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 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kobori, and taken in view of evidence by Azuma et al. US 4,838,923 (Azuma).
Regarding claims 4-5, as applied to claim 1, Kobori further teaches the aimed mold material is obtained by blending 100 parts by weight gypsum; with 0-1000 parts by weight inorganic or organic filler, 0.001-1.0 parts by weight alkylsulfonic acid salt or derivative thereof, 0.001-5 parts by weight chelate agent, 0.5-15 parts by weight hydrophilic urethane (Kobori, Abstract); in Example 7, 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum are used as the gypsum in the material (Kobori, page 5, Example 7).
Therefore, it would have been obvious to a person of ordinary skill in the art that in the broad teaching of the mold material above, to use 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum are used as the gypsum in the material, wherein 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum together reads upon the gypsum hemihydrate, which accounts for 8.9 to 99.5 parts by mass of the mold material (i.e., 100/(100+0.001+0.001+0.5)=99.5%; 100/(100+1000+1+5+15)=8.9%), and overlaps that range of the presently claimed.
According to Azuma, alkylsulfonic acid salt is a dispersant (i.e., water reducing agent according to specification [0041]), therefore 0.001-1.0 parts by weight alkylsulfonic acid salt corresponds to 0.001-1.0 by weight based on 100 parts by mass of the gypsum hemihydrate, which encompasses the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim Rejections - 35 USC § 102/103
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 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.
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 6 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Kobori.
Regarding claim 6, as applied to claim 1, given that Kobori discloses a mold material composition, i.e., a mold material comprises 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum, that is identical or substantially identical to that of the present invention (claim 1), therefore, it is clear that the mold material of Kobori would necessarily meet the claimed limitation that wherein a pot life of a slurry-like malaxated product obtained by adding water to the mold-making gypsum composition in such a way that the mixing water amount is 45% and malaxating the water and the mold-making gypsum composition is 8 minutes or longer, and a setting time thereof is 30 minutes or shorter.
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 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kobori as applied to claim 1 above, and further in view of Hjelmeland et al., WO 96/38394 (Hjelmeland).
Regarding claim 6, as applied to claim 1, Kobori teaches in Example 7, 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum are used as the gypsum in the material (Kobori, page 5, Example 7).
Therefore, it would have been obvious to a person of ordinary skill in the art that in the broad teaching of the mold material above, to use 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum are used as the gypsum in the material, wherein 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum together reads upon the gypsum hemihydrate.
Kobori further teaches the material capable of readily forming a mold is obtained by blending the drawn ingredients with 25-150 parts by weight of water (reading upon a slurry-like malaxated product obtained by adding water to the mold-making gypsum composition) (Kobori, Abstract), which corresponds to a water amount of 20% to 150% based on a weight of the gypsum, which encompasses the range of the presently claimed;
the pot life can be adjusted to 3 to 10 minutes (Kobori, page 2, 18th paragraph), which overlaps the range of the presently claimed.
Kobori does not explicitly disclose a setting time for the mold material that comprises 50 parts of β-hemihydrate gypsum and 50 parts α-hemihydrate gypsum.
With respect to the difference, Hjelmeland teaches a curable gypsum-based composition (Hjelmeland, Abstract); for production of casting molds of gypsum (Hjelmeland, page 3, 2nd paragraph). Hjelmeland specifically teaches the resulting plaster slurry may also contain one or more accelerating substances in varying quantities, so that the time required to obtain sufficient stiffness and protection of the core sample may be decreased to a desired level of between two minutes and the native setting time of the plaster slurry without additives, but preferably with a hardening time of from 8 to 20 minutes.
As Hjelmeland expressly teaches, the disadvantages of set retarding additives for gypsum water compositions is that the compositions after application to a wall or into a mold, will creep or block the form for a long period of time; some retarding substances require from 15 minutes to hours to obtain a strength level allowing further processing or handling, dependent on the portion of the retarding substance (Hjelmeland, page 3, 2nd paragraph); there is a need for a curable gypsum-based composition providing a gypsum composition ready for use, a composition having a long pot life but short setting time after application and preventing creep (Hjelmeland, page 3, 2nd paragraph).
Hjelmeland is analogous art as Hjelmeland is drawn to a curable gypsum-based composition; for production of casting molds of gypsum.
In light of the motivation of having short setting time on a gypsum-based composition for casting molds, it therefore would have been obvious to a person of ordinary skill in the art to adjust the setting time on the gypsum composition of Kobori, and achieve a short setting time, such as shorter than 15 minutes, or 8 to 20 minutes, in order to prevent creeping from the mold, and therefore arrive at the claimed invention.
Conclusion
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/KELING ZHANG/
Primary Examiner
Art Unit 1732