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 § 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 24, 26-38 and 40-43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 60005056 A (JP ‘056).
JP’056 discloses a gypsum composition for use in making a board. See the abstract and the second paragraph of the detailed description in the translation. JP ‘056 exemplifies the following additives in Table 2:
Additive
Corresponding chemical formula
n
m
n+m
Amount wt%
sodium monofluorophosphate, (MFP(Na))
Na2PO3F
3
1
4
0.1
calcium monofluorophosphate (MFP(Ca))
CaPO3F
3
1
4
1.0
potassium monofluorophosphate (MFP(K))
K2PO3F
3
1
4
1.0
sodium difluorophosphate, (MFP(Na))
NaPO2F2
2
2
4
1.0
calcium difluorophosphate, (MFP(Ca))
Ca1/2PO2F2
2
2
4
1.0
These additives anticipate the formula P(O)n(X)m recited in claims 24 and 26, and one or more of the additives anticipate the species of phosphates recited in claims 27-33.
The nail pull resistances recited in claims 24 and 42 are presumed to be inherent to the board of JP’056 because the board has a composition that is identical to the presently claimed composition.
As to claim 34 and 35, JP’056 exemplifies a composition containing 0.1 wt% sodium monofluorophosphate (MFP(Na)). See table 2.
As to claims 36 and 37, JP’056 teaches a gypsum composition containing 100 weight units of gypsum to 52 units of water. See table 1. This results in a water/stucco weight ratio of 52/100 = 0.52.
As to claim 38, JP’056 discloses adding PVA (i.e., polyvinyl acetate) to the slurry in table 1, and PVA is a dispersant.
The set times recited in claims 40 and 41 are presumed to be inherent to the board of JP’056 because the board has a composition that is identical to the presently claimed composition.
The compressive strength recited in claims 43 is presumed to be inherent to the board of JP’056 because the board has a composition that is identical to the presently claimed composition.
Claims 24, 26-28, 32, 34, 36-38 and 40-43 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sang et al. (US 2017/0362124 A1)(Sang).
Sang discloses a gypsum wallboard made from a slurry containing 8 grams of a sodium trimetaphosphate solution. See the title and example 3, Table 4. The sodium trimetaphosphate solution contains 2 wt% sodium trimetaphosphate, and corresponds to 2% x 8 grams = 0.16 grams of sodium trimetaphosphate being added to the slurry . See paragraph [0180]. The slurry contains 400 grams stucco. See table 4. Therefore, the slurry contains 0.16 g/400 g = 0.0004, or 0.04 wt% sodium trimetaphosphate based upon the weight of the stucco. This amount falls within the range recited in claims 24 and 34.
Sodium trimetaphosphate has a formula of Na3P3O9, and can be simplified to NaPO3. NaPO3 is a salt of PO3-1 and falls within the formula P(O)n(X)m where n is 3 and m is zero. Therefore, this disclosure anticipates the phosphate formula recited in instant claims 24 and 26.
The board of Sang has a nail pull resistance of at least 70 lbf according to ASTM C473-10 (paragraph [0124]) whereas the instant claims recite the test is performed using ASTM C1396. The board of Sang has a nail pull resistance of greater than 70 lbf according to a different method, and a composition that is identical to the presently claimed composition. For these reasons, Sang is presumed to inherently possess a nail pull resistance of at least 70 lbf according to ASTM C1396. See MPEP 2112.
Claim 27 is met by Sang because sodium trimetaphosphate falls within the genus of compositions represented by the formula, P(O)n(X)m, when m = 0 and X = fluoro.
As to claim 28, sodium trimetaphosphate is represented by the formula, NaPO3, where n=3.
As to claim 32, sodium trimetaphosphate is a phosphorous compound comprising sodium, an alkali metal.
As to claims 36 and 37, example 3 of Sang is formed using a water to stucco ratio of 1. See paragraph [0180].
As to claims 38, example 3 of Sang contains a dispersant. See table 4.
As to claims 40 and 41, example 3, compositions 1G and 1K, have setting times of 3.3 and 3.4 minutes, respectively. See Table 5. These setting times fall within the ranges recited in claims 39 and 40. It is noted that 3.3 and 3.4 minutes become 3 minutes when considering a single significant figure as employed in claim 41. Sang does not disclose the setting time was measured using ASTM C266 with a Gillmore needle. However, the disclosed setting times of example 3, compositions 1G and 1K of Sang, fall within the claimed setting time ranges and the compositions of example 3, compositions 1G and 1K of Sang, are identical to the presently claimed composition. For these reasons, Sang is presumed to inherently possess the claimed setting time using ASTM C266 with a Gillmore needle.
As to claim 42, the board of Sang has a nail pull resistance of at least 77 lbf according to ASTM C473-10 (paragraph [0124]) whereas the instant claims recite the test is performed using ASTM C1396. However, the board of Sang has nail pull resistance of at least 77 lbf when measured with a different method, and employs a composition that is identical to the presently claimed composition. For these reasons, Sang is presumed to inherently possess a nail pull resistance of at least 77 lbf according to ASTM C1396. See MPEP 2112.
As to claim 43, the boards of Sang have compressive strengths in excess of 300 psi. See Table 6. Sang does not disclose employing ASTM 1396. However, the board of Sang has the a compressive strength of greater than 300 psi when measured using a different method, and a composition that is identical to the presently claimed composition. For these reasons, Sang is presumed to inherently possess the compressive strength of at least 300 psi when measured using ASTM C1396. See MPEP 2112.
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.
Claims 35 and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al. (US 2017/0362124 A1)(Sang) as applied to claim 24 above.
Example 3 anticipates claim 24 for the reasons recited above.
As to claim 35, example 3 employs 0.04 wt% sodium trimetaphosphate (as described above), whereas claim 35 recites an amount of 0.1 to 0.4 wt%.
However, Sang teaches a general range for phosphate additives of from 0.01 to 0.5 % in terms of the weight of the stucco. See paragraph [0102]. This range overlaps the claim 35 range, and overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have employed sodium trimetaphosphate in an amount between 0.01 to 0.5 wt%, because overlapping ranges have been held to establish prima facie obviousness.
As to claim 39, Sang discloses employing a dispersant in example 3 but does not identify the specific dispersant.
Sang teaches the dispersant may be a sulfonated dispersant or a polycarboxylic ether in paragraph [0096].
Therefore, it would have been obvious to one of ordinary skill in the art to have employed any of the dispersants taught by Sang including sulfonates or polycarboxylic ethers. It has been held to have been obvious to have employed a known material based upon its suitability for its intended purpose. See MPEP 2144.07.
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 24-35, 38-39 and 42-43 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,952,315 (‘315). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-21 of the ‘315 patent completely encompass all of the limitations of instant claims 24-43. The claims of the ‘315 patent do not teach the amount of phosphate/phosphite additions in terms of wt% based upon the weight of the stucco as recited in claims 24, 34 and 35. Claim 15 of the ‘315 patent teaches adding the phosphate/phosphite in an amount of 0.001 lbs/MSF to 10 lbs/MSF. This range is believed to overlap the presently claimed range.
It would have been obvious to one of ordinary skill in the art at the time of filing to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claims 24-43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-17 and 19-24 of copending Application No. 17/896,232, (‘232 application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-2, 4-17 and 19-24 of the ‘232 patent completely encompass all of the limitations of instant claims 24-43. Claim 11 of the ‘232 application teach the amount of phosphate/phosphite additions is 0.01 to 5 wt%. This range overlaps the presently claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2002/0128352 A1 teaches adding sodium hypophosphite to a gypsum composition but does not teach an amount. US 2009/0104144 A1 teaches the addition of tetramethylammonium hexafluorophosphate (among other additives) to a gypsum composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David Sample whose telephone number is (571)272-1376. The examiner can normally be reached Monday to Friday 7AM to 3:30 PM.
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/David Sample/Primary Examiner, Art Unit 1784