Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/22/2026 has been entered.
Claims 1-3, 5-15, and 17-20 are pending in the application. Claims 4 and 16 have been cancelled. Claims 7, 9-11, and 18-20 have been withdrawn from consideration as being directed to a non-elected invention. Claims 1-3, 5, 6, 8, 12-15, and 17 are rejected.
The rejection over Cruz has been withdrawn in view of the amendment and response filed on 4/22/2026. Cruz discloses a composite sheet for used as a drywall board comprising an insulation board made of a polystyrene foam with a plurality of apertures and slots extending through the thickness of the polystyrene foam; a gypsum plaster applied to both the top and bottom surfaces of the insulation board and filling the apertures of the foam; and a paper sheet provided on the surface of the gypsum plaster (abstract, and figure 2). The filling apertures and slots are regularly oriented. Therefore, Cruz fails to teach the composite sheet wherein the polystyrene foam comprises a plurality of pores being randomly distributed and each pore being penetrated by the gypsum plaster.
The rejections over Abertelli alone, and further in view of Wang have been maintained.
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 1-3, 5, 6, 8, 12-15, and 17 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.
As to claim 1, it is unclear whether the pores and the cells are the same or different. Further, the same token applies to the cementitious and the gypsum slurry. Appropriate correction is required.
As to claim 2, the volume fraction of the open pores could be as low as 0.01%. However, this raises the question of whether such the volume fraction is sufficient for the slurry to fill the pores adequately, thus ensuring the proper adhesion of the foam to the cementitious core material.
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.
(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.
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.
Claims 1-3, 5, 6, 12-15 and 17 are 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 US 5,060,291 to Abertelli (hereinafter “Abertelli”).
As to claim 1, bertelli discloses a composite material for a wallboard panel having a structure CABAC wherein A represents a layer formed from settable material, B represents a foamed sheet and C represents at least one layer made of plastics, metal, wood or wood product (column 3, lines 65-69 and column 9, lines 1-5).
The foam sheet contains a substantially open cell structure so that the settable material can be pressed into the pores (column 4, lines 45-50).
The settable material is obtained from a gypsum plaster (example 1).
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1: a glass-reinforced plaster layer
2: a foam layer
3: the plaster within the pores of the foam layer (column 10, lines 60-67).
Turning to column 5, lines 25-35, Albertelli discloses:
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The passage indicates that the penetration of the plaster slurry into the pores of the foam must be accomplished through application of high pressure. Without such pressure, achieving the desired thickness of the plaster is not possible. Therefore, the application of high pressure to force the slurry in the foam’s pores should be regarded as a process step for connecting the foam to the plaster, rather than an intermediate product as stated by the Examiner in the final rejection mailed on 01/22/2026. The fact that the slurry should not penetrate the pores without the application of external pressure, does not imply that Albertelli discourages the penetration of the pores with plaster; rather, it demonstrates that the pores of the foam can be effectively penetrated by the plaster under pressure, as illustrated in figure 1 and example 5.
As to claim 2, the foam sheet contains a substantially open cell structure so that the settable material is pressed into the open pores (column 4, lines 45-50). The open cell structure reads on the claimed at least 0.01% to 100% of the pores comprising an open pore geometry.
As to claims 3 and 13, the foam layer has a thickness of 10 mm (example 5).
As to claims 5 and 16, the degree of penetration of the settable material within the pores varies along the surface of the foam wherein the penetration is significantly deeper in some location than in other locations and the depths of penetration over the face of the panel is random (example 5). The settable material does not penetrate through the full thickness of the foam sheet.
As to claim 6, the foam sheet is made of a phenolic foam (column 4, lines 65-68).
As to claim 12, the foam sheet has a thickness of 10-50 mm (examples 3 and 5). The gypsum plaster has a thickness of 1.5 mm. The thickness of the composite sheet fully encompasses the claimed value of 5/8 inch.
In the case, where the claimed ranges overlap or touch the range disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257,191 USPQ90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997).
The claim is not rendered unobvious because discovering the optimum or workable ranges involves only routine skill in the art. Difference in the thickness of the composite material will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such the thickness is critical or provides unexpected results.
Therefore, in the absence of unexpected results, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the composite material having a thickness of 5/8 inch instantly claimed, motivated by the desire to provide adequate strength and dimensional stability. This is in line with In re Aller, 105 USPQ 233 which holds discovering the optimum or workable ranges involves only routine skill in the art.
As to claims 14 and 15, the settable material is obtained from a gypsum plaster (example 1).
As to claim 17, Albertelli does not explicitly disclose the composite sheet having a thermal conductivity of from 0.03 to 0.5 W/mK, a thermal resistance of from 0.03 to 0.3 K.m2/W and/or R-value of from 0.4 to 5.
However, it appears that the composite sheet meets all structural limitations and chemistry required by the claims.
The composite material for a wallboard panel comprises a structure CABAC wherein A represents a layer formed from settable material, B represents a foamed sheet and C represents at least one layer made of plastics, metal, wood or wood product (column 3, lines 65-69 and column 9, lines 1-5). The foam sheet contains a substantially open cell structure so that the settable material can be pressed into the open pores (column 4, lines 45-50). The settable material is obtained from a gypsum plaster (example 1). The degree of penetration of the settable material within the pores varies along the surface of the foam wherein the penetration is significantly deeper in some location than in other locations and the depths of penetration over the face of the panel is random (example 5). The settable material does not penetrate through the full thickness of the foam sheet. the foam sheet is made of a phenolic foam (column 4, lines 65-68). The foam sheet has a thickness of 10-50 mm (examples 3 and 5). The gypsum plaster has a thickness of 1.5 mm.
Therefore, the examiner takes the position that the thermal conductivity of from 0.03 to 0.5 W/mK, the thermal resistance of from 0.03 to 0.3 K.m2/W and/or the R-value of from 0.4 to 5 would be present as like material has like property. This is in line with In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) which holds that if the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the claimed properties or functions will be presumed to be inherent. The burden is shifted to the applicant to show unobvious differences between the claimed product and the prior art product.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Abertelli as applied to claim 1 above, and further in view of US 2018/0022856 to Wang et al. (hereinafter “Wang”).
Abertelli does not explicitly disclose the foam sheet comprising an ether-based polyurethane.
Wang, however, discloses a polyurethane foam for a wall structure having a good thermal insulation, acoustic insulation, great adhesion and increased dimensional stability, obtained from a composition comprising two different polyether polyols, polyisocyanate, catalyst and flame retardant (abstract). The polyurethane foam having an open cell foam does not shrink or deform under natural temperature conditions (paragraph 41).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute a polyurethane foam disclosed in Wang for the phenolic foam disclosed in Albertelli motivated by the desire to provide a wallboard panel having great adhesion, increased dimensional stability without compromising good thermal insulation and acoustic insulation.
Response to Arguments
Applicant alleges that Albertelli’s slurry should not have a consistency
such that it is readily absorbed by the foam layer or readily runs off the surface (column 5, lines 30-35). Applicant then concludes that Albertelli does not anticipate or render the claim obvious because Albertelli fails teach a slurry of the gypsum material penetrating into the pores of the foam layer when the slurry is applied to the surface of the foam layer.
The examiner respectfully disagrees.
Applicant has mischaracterized the Albertelli reference for the following reasons.
Turning to column 5, lines 25-35, Albertelli discloses:
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The passage indicates that the penetration of the plaster slurry into the pores of the foam must be accomplished through application of high pressure. Without such pressure, achieving the desired thickness of the plaster is not possible. Therefore, the application of high pressure to force the slurry in the foam’s pores should be regarded as a process for connecting the foam to the plaster, rather than an intermediate product as stated by the Examiner in the final rejection mailed on 01/22/2026. The fact that the slurry should not fill the pores without the application of external pressure, does not imply that Albertelli discourages the penetration of the pores with plaster; rather, it demonstrates that the pores of the foam can be effectively penetrated by the plaster under pressure, as illustrated in figure 1 and example 5.
Accordingly, the rejections over Albertelli alone, and further in view of Wang have been maintained.
It is suggested that incorporation in the claim of the foam material layer including one or more sheets of foam material having an open pore geometry and one or more sheets of foam material having a closed pore geometry would be sufficient to exclude Albertelli as prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hai Vo whose telephone number is (571)272-1485. The examiner can normally be reached M-F: 9:00 am - 6:00 pm with every other Friday off.
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/Hai Vo/
Primary Examiner
Art Unit 1788
Prosecution Insights