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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 January 2026 has been entered.
Introduction
Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
The amendments to claims 1 and 21 are sufficient to overcome the rejection based upon Brooks (US 2017/0334783 A1). Brooks teaches a genus of metal salt additives. As to claim 1, Brooks prefers magnesium and calcium as the possible alkaline earth metal. From these teachings, it would not have been obvious to have selected both iron chloride and barium chloride.
As to claim 21, Brooks fails to disclose or suggest “wherein the specific surface area of the gypsum at a temperature of 950° C is about 40% or more than the specific surface area of the gypsum at a temperature of 22° C.”
The obviousness type double patenting rejection over US 11, 339,572 has been overcome by the amendments to claims 1, 11 and 29. As to claim 1, the ‘572 claims, alone or in combination with other prior art, fail to teach or suggest iron chloride and barium chloride additions to a method of making wall board. As to claim 11, the ‘572 claims, alone or in combination with prior art, fail to teach or suggest iron chloride additions to a wall board. As to claim 21, the ‘572 claims, alone or in combination with the prior art as a whole, fail to teach or suggest “wherein the specific surface area of the gypsum at a temperature of 950° C is about 40% or more than the specific surface area of the gypsum at a temperature of 22° C
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/449,484 (‘484), fails to provide adequate written support in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The ‘484 fails to provide adequate written support for at least the following claim limitations present in the instant application:
An area shrinkage range of “less than 20%” (claims 1, 11 and 21);
A range of shrinkage reducing additive of 0.05 to 4 wt% (claims 1, 11 and 21);
Including of iron chloride as a shrinkage reducing additive (claims 1, 11 and 23);
An area shrinkage range of “less than 10%” (claims 9, and 19);
An area shrinkage range of “less than 6%” (claims 10 and 20);
“Wherein the specific surface area of the gypsum at a temperature of 950° C is about 40% or more than the specific surface area of the gypsum at a temperature of 22° C” (claims 21 and 24);
The particle size of the shrinkage reducing additive as recited in claims 25, 26, 29 and 30, 32 and 33;
A range of shrinkage reducing additive range of about 0.25 to about 2 wt% (claims 27 and 28, 31); and
A range of shrinkage reducing additive range of about 0.5 to about 3 wt% (claim 34).
Accordingly, the U.S. effective filing date of the instant application is 23 January 2018, based upon parent application serial no. 15/877,993.
Claim Rejections - 35 USC § 102
Claims 11, 19, 20 and 31 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bailey (US 2018/0346383 A1).
Bailey has a filing date of 02 June 2017, which is before the US effective filing date of the instant application.
Bailey discloses a gypsum wallboard containing 0.1 and 1 wt% ferric (i.e., iron) chloride based on the weight of the gypsum. See the title, paragraphs [0010], [0020] and Table 4. The gypsum board is formed by applying gypsum between two sheets (i.e., facing materials).
Bailey fails to disclose:
an area shrinkage of less than 20% (claim 11);
an area shrinkage of less than 10% (claim 19);
an area shrinkage of less than 6% (claim 20); or
However, these properties are presumed to be inherent to the ferric chloride examples Bailey because the composition is identical to the presently claimed composition. See MPEP 2112.
As to claim 31, Bailey discloses an example containing 1 wt% ferric chloride. See Table 4.
Claim Rejections - 35 USC § 103
Claims 29 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Bailey (US 2018/0346383 A1).
Bailey anticipates claim 11 for the reasons recited above. Bailey teaches the ferric chloride is added in the form of a powder (paragraph [0013]). Bailey fails to disclose the particles size of the ferric chloride as recited in claims 29 and 30.
However, it is within the level or ordinary skill in the art of gypsum wallboard to adjust the particle size of a powder added to the wallboard. Moreover, a particle size of 200 µm or less, or 75 µm or less is ordinary and customary particle size employed in powders for use materials science applications.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have adjusted the particle size of the powder of ferric chloride of Bailey. The rationale for doing so is that it is within the level of ordinary skill in the art to have changed the size of a prior art product. See MPEP 2144.04 IV.A.
Claims 11, 19, 20, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over by Brooks et al. (US 2017/0334783 A1) as evidenced by Ferric Chloride anhydrous definition in Hawley's Condensed Chemical Dictionary.
Brooks et al. teaches adding 0.5-10 wt% metal salt additive based upon the entirety of the composition (see the abstract), which appears to overlap the claim 11 and 31 ranges when reported as a percent of the stucco. Overlapping ranges have been held to have established prima facie obviousness. See MPEP 2144.05.
Brooks et al. teaches preferred metals of the metal salt additive of calcium, magnesium, aluminum, copper, zinc and iron. See paragraphs [0030]-[0034]. The preferred cations are nitrate and chloride. Id. Brooks et al. teaches the metal salt should decompose at a temperature between 300 and 500° C. Iron chloride decomposes at 306° C. See the definition of ferric chloride in Hawley's Condensed Chemical Dictionary.
It would have been obvious to one of ordinary skill in the art at the time of filing to have employed any of the salts suggested by Brooks et al. such as a chloride of copper, zinc or iron. The rationale for doing so is that it has been held to have been obvious to have chosen a known material based upon its suitability for its intended purpose. See MPEP 2147.07.
One of ordinary skill in the art would have expected the resultant board to have an area shrinkage of less than 20% (claim 11), less than 10% (claim 19) or less than 6% (claim 20) because Brooks et al. teaches the metal salt reduces the shrinkage of the board. See paragraph [0020].
As to claims 29 and 30, Brooks et al. fails to teach the particle size of the metal salt. It is within the level or ordinary skill in the art of gypsum wallboard to adjust the particle size of a powder added to the wallboard. Moreover, a particle size of 200 µm or less, or 75 µm or less is ordinary and customary particle size employed in powders for use materials science applications.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to have adjusted the particle size of the powder of ferric chloride of Brooks. The rationale for doing so is that it is within the level of ordinary skill in the art to have changed the size of a prior art product. See MPEP 2144.04 IV.A.
Response to Arguments
Applicant's arguments filed 09 January 2026 have been fully considered but they are not persuasive with respect to the rejection of claims 11, 19, 20, and 29-31 over Brooks et al.
Applicants assert the examiner employed improper hindsight in rejecting claim 11 over Brooks et al. This argument is not deemed persuasive in view of MPEP 2145 X:
Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
In view of the teachings of Brooks et al, the examiner maintains that it would have been obvious to one of ordinary skill in the art to have used any nitrate or chloride of calcium, magnesium, aluminum, copper, zinc and iron. This genus includes 12 species. Moreover, Brooks et al. teaches the metal salt should decompose at a temperature between 300 and 500° C. Iron chloride decomposes at 306° C.
Applicants note the decision in Merck Sharp & Dohme B. V. v. Warner Chilcott Co., 880 F.3d 1019 (Fed. Cir. 2017); and states Merck included 3 variables in contrast to the six metals and five salt classes taught by Brooks. Merck is distinguishable from the facts of the present case. The case did not relate to the obviousness of a species when considering the disclosure of a genus. In the examiner’s reading, for the court to invalidate the patent, one of ordinary skill in the art needed to proceed against direct teachings of the reference applied by the lower court:
One of ordinary skill in the art would have needed to include both EE and ETO in a single compartment when the reference taught two compartments: one for ETO and one for EE;
One of ordinary skill in the art would have needed to employ a single compartment when the reference taught away from a single compartment device.
Applicants further argue that there is a 3.33% chance of arriving at iron chloride from the genus taught by Brooks et al. This is true based upon the six metals and five salt classes, i.e., 30 species. However, Brooks et al. guides the ordinary skilled artisan towards a smaller set of species. Brooks et al. prefers nitrate and chloride salts as disclosed in paragraph [0034] of Brooks et al. This reduces the set of species down to 12. It would have been obvious to have selected any of these metal salts. Notwithstanding, Brooks et al. guides the ordinary skilled artisan to metal salts that decompose at a temperature of between 300 and 500°C. See paragraph [0030]. Anhydrous iron chloride has a decomposition temperature of 306°C which is within the Brooks et al. decomposition range.
Applicants argue that Brooks et al. focuses on nitrates in the examples and only employs a chloride as magnesium chloride. However, a reference may be employed for all that it fairly suggests to one of ordinary skill in the art, and is not limited to examples for disclosure.
Applicants argue Brooks et al. does not suggest the narrowly claimed amounts of shrinkage reducing when Brooks teaches the broader range of 1 % to 15%. However, the Brooks et al. range overlaps the presently claimed range, and overlapping ranges have been held to establish prima facie obviousness.
Allowable Subject Matter
Claims 1, 9, 10, 21, 23-28 and 32-34 allowed.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David Sample/Primary Examiner, Art Unit 1784