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 with traverse of Group I, claims 1-8, in the reply filed on 07/24/2026 is acknowledged.
Applicant has elected to elect with traverse. Applicant argues that the Examiner has failed to establish a serious search burden (see Applicant’s Remarks at pg. 2-3). However, this is not found persuasive because establishment of a search burden is used to determine whether the Office may require restriction in national applications filed under 35 (U.S.C. 111(a). The analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis). See MPEP Chapter 1800, in particular MPEP § 1850, § 1875, and § 1893.03(d). In other words, the requirement regarding a serious search burden does not apply to national stage applications submitted under 35 U.S.C. 371.
Therefore, the restriction/election requirement is still deemed proper and is made final.
Claims 9-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 9-16 are directed to a non-elected invention. Applicant timely traversed the restriction requirement in the reply filed on 07/24/2026.
Claim Objections
Claim 4 is objected to because of the following informality:
• Claim 4 should be amended as follows: “..contains a water-miscible polymer binder as the binder.”
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 1-8 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 “wherein the fibrous material and the binder is present in the mixture in a ratio in the range from 1:1 to 1:5” is unclear. There is no indication whether the ratio is of the fibrous material to the binder (fiber:binder) or the binder to the fibrous material (binder:fiber). For the purposes of examination, the Examiner is interpreting either ratio to suffice. Claims 2-8 are also rejected by virtue of their dependency on claim 1.
Similarly, in claim 2, the phrase “the mixture contains fibrous material and (binder + thickener) in a ratio in the range from 1:1 to 1:5.5” is unclear. There is no indication whether the ratio is of the fibrous material to the binder+thickener (fiber:(binder+thickener)) or the binder+thickener to the fibrous material ((binder+thickener):fiber). For the purposes of examination, the Examiner is interpreting either ratio to suffice.
In claims 2-8, the term “preferably” is used in each claim. Each use of the term “preferably” in claims 2-8 is indefinite, given it is unclear whether it necessitates the limitations following the word “preferably” or not. For the purposes of examination, the Examiner is interpreting any limitations following the word “preferably” in the claims to be optional. For example, in claim 8, a mixture that simply contains a preservative or a combination of preservatives is sufficient to read on the claim, with the “preferable” concentration range interpreted as being optional.
Claim Rejections - 35 USC § 102
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, 2, 4, and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Serre et al. (FR-2930258-A1), with reference to the included machine translation (hereinafter referred to as “Serre”), with evidence from Maier et al. (US-20210221748-A1) (hereinafter referred to as “Maier”) as to the rejection of claim 4 only.
Regarding claim 1, Serre teaches a sprayable mixture for covering joints between building boards in drywall constructions, which contains 0.01 to 10 wt.-% of a fibrous material, 1 to 20 wt.-% of a binder, 1 to 10 wt.-% of a thickener and 50 to 97.99 wt.-% of a solvent, wherein the fibrous material and the binder is present in the mixture in a ratio in the range from 1:1 to 1:5 (see Serre at pg. 2, para. 2-4, teaching a product which has a high covering power, which makes it possible to mask the joints made with a jointing compound; also see Example 12 of untranslated Serre at pg. 11, which is reproduced below:
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Example 12 of Serre contains 2 wt% of Fiber Axilat NYL0,8 (“Fibre” translates to Fiber); 3.01 wt% of Binder Acronal S559 (“Lianl” translates to binder); 1.19 wt% of Kelzan RD thickener (“Epaississant” translates to thickener), and 53.54 wt% of water as a solvent (“Eau” translates to water); Example 12 of Serre meets all the claimed compositional limitations; further, the ratio of fiber to binder in Example 12 of Serre is 2:3.01, which falls within the claimed ratio range; also see Serre at pg. 4, para. 9, teaching the preferred application method is a spraying method).
It is noted that the limitation of claim 1 necessitating the composition to be used “for covering joints between building boards in drywall constructions” is a recitation of intended use. Since the structure of the prior art teaches all structural limitations of the claim, the same is considered capable of meeting the limitation. See MPEP § 2111.
Regarding claim 2, see Example 12 of untranslated Serre at pg. 11, teaching an example composition containing 2% of fiber, 3.01 wt% of binder, and 1.19 wt% of thickener; thus, the ratio in Example 12 is 2:(3.01+1.19), or 2:4.2, or 0.476:1; this ratio falls completely within the claimed ratio range.
Regarding claim 4, see Example 12 of untranslated Serre at pg. 11, teaching an example composition containing Acronal S559; Acronal S559 is an aqueous polyacrylate dispersion, as evidenced by Maier at para. 0055; accordingly, given Acronal S559 is an aqueous dispersion, it necessarily follows that the binder is “water-miscible.”
Regarding claim 6, see Example 12 of untranslated Serre at pg. 11, teaching an example composition containing 2 wt% of fiber, which falls within the claimed fiber range; note that that “and/or” language only necessitates one of the ranges to be met.
Regarding claim 7, see Example 12 of untranslated Serre at pg. 11, teaching an example composition containing water; note that the limitations following the term “preferably” do not positively limit the claim, see the claim interpretation set forth in the 112(b) rejection above.
Regarding claim 8, see Example 12 of untranslated Serre at pg. 11, teaching an example composition containing biocides; the biocides correspond to the claimed “preservative;” note that the limitations following the term “preferably” do not positively limit the claim, see the claim interpretation set forth in the 112(b) rejection above.
Claim Rejections - 35 USC § 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.
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Serre, with evidence from Cherukuri (US-20100310864-A1) (hereinafter referred to as “Cherukuri”).
Regarding claim 5, while Serre teaches the composition according to claim 1 outlined above, Serre fails to explicitly teach the composition as containing starch as a thickener.
However, Serre teaches both xanthan gum and starch as a suitable thickener (see Serre at pg. 3, para. 4-5).
Example 12 of Serre contains Kelzan RD as a thickener, which is a xanthan gum, as evidenced by Cherukuri at para. 0016.
In this case, both xanthan gum and starch are functional equivalents, i.e., both are taught as suitable thickeners in the composition of Serre.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the Kelzan RD xanthan gum of Example 12 of Serre with a starch thickener like that disclosed by Serre, as the substitution of art-recognized equivalents has been shown to be within the level of ordinary skill in the art. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). See MPEP § 2143.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Moyer et al. (US-20170066946-A1) (hereinafter referred to as “Moyer”), with evidence from Negri et al. (US-20160186019-A1) (hereinafter referred to as “Negri”) and Smith et al. (US-4474911-A) (hereinafter referred to as “Smith”) as to the rejection of claim 4 only.
Regarding claim 1, Moyer teaches a sprayable mixture for covering joints between building boards in drywall constructions (see Moyer at para. 0003, 0009, and 0020, teaching a sprayable flexible adhesive composition for holding two panels together at a joint seam, which can include drywall panels) which contains
• 0.01 to 10 wt.-% of a fibrous material (see Moyer at para. 0010, teaching the composition as containing fibers in an amount ranging from 0.1 to 25% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05),
• 1 to 20 wt.-% of a binder (see Moyer at para. 0010, teaching the composition as containing a binder in an amount ranging from 1 to 50% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05),
• 1 to 10 wt.-% of a thickener (see Moyer at para. 0010, teaching the composition as containing a thickener in an amount ranging from about 0.1 to about 2% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05), and
• 50 to 97.99 wt.-% of a solvent (see Moyer at para. 0010, teaching the composition as containing water in an amount ranging from 25 to 75% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05), wherein
• the fibrous material and the binder is present in the mixture in a ratio in the range from 1:1 to 1:5 (see Moyer at para. 0010, teaching the composition as containing fibers in an amount ranging from 0.1 to 25% by weight and a binder in an amount ranging from 1 to 50% by weight; accordingly, Moyer necessarily suggests a ratio of the fiber to the binder ranging from 0.002 to 25 (0.1% fiber min/50% binder max = 0.002 ratio min; 25% fiber max/1% binder min = 25 ratio max); this range of 0.002 to 25 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 2, see Moyer at para. 0010, teaching the composition as containing fibers in an amount ranging from 0.1 to 25% by weight, a binder in an amount ranging from 1 to 50% by weight, and a thickener in an amount ranging from about 0.1 to about 2% by weight; accordingly, the ratio of the fiber to binder+thickener ranges from 0.0019 to 22.72 (0.1% fiber min/(50% binder max + 2% thickener max) = 0.0019 ratio min; 25% fiber max/(1% binder min + 0.1% thickener min) = 22.72 ratio max); this range of 0.0019 to 22.72 overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05.
Regarding claim 3, see Moyer at para. 0032, teaching the fiber may be a natural fiber, such as cellulosic fibers.
Regarding claim 4, see Moyer at para. 0039, teaching UCAR 367 as a suitable binder resin; UCAR 367 is an aqueous latex, as evidenced by Smith at col. 4, lines 3-9; accordingly, given UCAR 367 is an aqueous latex, it necessarily follows that the binder is “water-miscible;” alternatively, see Moyer at para. 0039, teaching TurCOR 3025 as a suitable binder; TurCOR 3025 contains a polyvinyl alcohol resin, as evidenced by Negri at para. 0041; polyvinyl alcohol is taught by Applicants as a “water-miscible” resin, see claim 4; accordingly, it necessarily follows that Negri teaches the presence of a “water-miscible” binder via the polyvinyl alcohol in TurCOR 3025; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II).
Regarding claim 5, see Moyer at para. 0041, teaching starch may be used as the sole binder; accordingly, Moyer necessarily teaches their composition may contain 1 to 50% of starch as a binder, in combination with 0.1 to 2% by weight of a thickener (see Moyer at para. 0010); in this case, since the starch binder of Moyer is the same as that claimed, it necessarily follows that the starch binder additionally functions as a “thickener” like that claimed; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II).
Regarding claim 6, see Moyer at para. 0010, teaching the composition as containing fibers in an amount ranging from 0.1 to 25% by weight; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05; note that that “and/or” language only necessitates one of the ranges to be met.
Regarding claim 7, see Moyer at para. 0010, teaching the composition as containing water in an amount ranging from 25 to 75% by weight.
Regarding claim 8, see Moyer at para. 0062, teaching the composition may contain a preservative.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R 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.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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