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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11, in the reply filed on 09/04/2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/04/2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claims 5-6 and 9 are objected to because of the following informalities:
Claims 5-6 and 9 include parenthetical expressions, reciting “(hereinafter referred to as…)” (see claim 5 at lines 2-3, claim 6 at lines 2-4, and claim 9 at line 3); the claims should be amended to remove the language in parentheses and more directly define the recited components. E.g., it is suggested to amend claim 5 to read “The gypsum hardened product according to claim 1, comprising a component (A), which is a surfactant, and gypsum.”, and to amend claims 6 and 9 in a similar fashion.
Appropriate correction is required.
Claim Interpretation
For purposes of claim interpretation, “coefficient of variation of bubble size” as recited in claims 1 and 4 (see claim 1 at line 5 and claim 4 at line 2) is interpreted as meaning bubble size standard deviation divided by average bubble size, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0012].
For purposes of claim interpretation, “LogP” as recited in claim 10 (see claim 10 at line 2) is interpreted as meaning a coefficient indicating affinities of an organic compound for water and 1-octanol, wherein the 1-octanol/water partition coefficient “P” is, in distribution equilibrium when a trace amount of a compound is dissolved as a solute in the liquid phase solvents 1-octanol and water, a ratio between equilibrium concentrations of the compound in the respective solvents, as this would appear most in keeping with Applicant’s intent as discussed in the specification at paragraph [0033].
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.
Claim 10 is 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 10 recites the limitation “further comprising (C) a nonionic compound with a LogP of 0 or more and less than 2.0 (excluding a compound qualifying as component (B))” (see claim 10 at lines 2-3). This language renders the scope of the claim indefinite as it is not clear whether or not the limitation in parentheses is actually meant to be a part of the claimed invention. It is also not clear to what “component (B)” is meant to refer, as there is no “component (B)” recited in claim 5, from which claim 10 depends, or in claim 1. It cannot be ascertained what, if anything, is meant to be excluded from the composition of claim 10, or whether an undefined “compound B” is meant to be part of claim 10.
For purposes of examination, Examiner treated claim 10 as though it just recites “The gypsum hardened product according to claim 5, further comprising (C) a nonionic compound with a LogP of 0 or more and less than 2.0.”. Clarification is requested.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Cao, et al. (U.S. Pub. No. 2015/0104629-A1) (hereinafter, “CAO”; it is noted that CAO incorporates Diez, et al. (U.S. Pat. No. 5,240,639-A; hereinafter, “DIEZ”) and Savoly, et al. (U.S. Pat. No. 5,158,612-A; hereinafter, “SAVOLY”) by reference, therefore the disclosures of DIEZ and SAVOLY are considered part of the disclosure of CAO; see MPEP 2163.07(b)).
Regarding claim 1, CAO teaches a gypsum hardened product containing bubbles (see CAO at Abstract and paragraph [0053], teaching a gypsum board comprising air voids),
wherein a density of the gypsum hardened product is 0.4 g/cm3 or more and 0.8 g/cm3 or less (see CAO at paragraph [0061] and Table 1F, teaching a density of 24 to 48 lbs/ft3, i.e., 0.38 to 0.77 g/cm3, e.g., a density of 39 to 40 lbs/ft3, i.e., 0.62 to 0.64 g/cm3),
and in the gypsum hardened product, an average bubble size overlaps with and thereby renders obvious the claimed range of 200 μm or more and 600 μm or less (see CAO at paragraph [0054], teaching an average size of 125 to 325 μm),
and a coefficient of variation of bubble size overlaps with and thereby renders obvious the claimed range of 0.30 or more and 0.48 or less (see CAO at paragraph [0054], teaching an average size of 125 to 325 μm and a standard deviation of 100 to 200, which is a coefficient as claimed of 0.31 to 1.6).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 2, CAO teaches a gypsum hardened product according to claim 1, wherein the density of the gypsum hardened product is 0.5 g/cm3 or more and 0.75 g/cm3 or less (see CAO at paragraph [0061] and Table 1F, teaching a density of, e.g., 39 to 40 lbs/ft3, i.e., 0.62 to 0.64 g/cm3).
Regarding claim 3, CAO teaches a gypsum hardened product according to claim 1, wherein the average bubble size in the gypsum hardened product overlaps with and thereby renders obvious the claimed range of 250 μm or more and 580 μm or less (see CAO at paragraph [0054], teaching an average size of 125 to 325 μm).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 4, CAO teaches a gypsum hardened product according to claim 1, wherein the coefficient of variation of bubble size in the gypsum hardened product overlaps with and thereby renders obvious the claimed range of 0.32 or more and 0.43 or less (see CAO at paragraph [0054], teaching an average size of 125 to 325 μm and a standard deviation of 100 to 200, which is a coefficient as claimed of 0.31 to 1.6).
As set forth in MPEP § 2144.05, in the case where the claimed ranges “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)).
Regarding claim 5, CAO teaches a gypsum hardened product according to claim 1, comprising component (A), which is a surfactant, and gypsum (see CAO at Abstract and paragraphs [0031] and [0046], teaching gypsum and surfactants such as lignosulfonate, liquid soap, and other surfactant foaming agents as described in DIEZ and SAVOLY).
Regarding claim 6, CAO teaches a gypsum hardened product according to claim 5, wherein the component (A) is one or more selected from component (A1) an anionic surfactant and component (A2) a nonionic surfactant (see CAO at paragraph [0031], teaching lignosulfonate, an anionic surfactant; see CAO at paragraph [0046], teaching using the foaming agents described in DIEZ and SAVOLY).
Regarding claim 7, CAO teaches a gypsum hardened product according to claim 6, wherein the component (A1) is an alkyl or alkenyl sulfate or a salt thereof having an alkyl group or an alkenyl group with 8 or more and 18 or less carbons (see CAO at paragraph [0046], teaching using the foaming agents described in DIEZ; see DIEZ at Abstract and col. 3, lines 27-54, teaching foaming agents comprising such alkyl sulfates, e.g., octyl decyl alcohol sulfate).
Regarding claim 8, CAO teaches a gypsum hardened product according to claim 6, wherein the component (A2) is an alkyl glycoside-type nonionic surfactant (see CAO at paragraph [0046], teaching using the foaming agents described in SAVOLY; see SAVOLY at col. 3, lines 5-23, teaching foaming agents comprising alkyl polyglucoside, which is an alkyl glycoside-type nonionic surfactant).
Regarding claim 9, CAO teaches a gypsum hardened product according to claim 5, further comprising a component (B), which is a monohydric alcohol with 6 or more and 10 or less carbons (see CAO at paragraph [0046], teaching using the foaming agents described in DIEZ; see DIEZ at col. 5, lines 5-11, teaching foaming agents including, e.g., monohydric alcohols having 8-10 carbon atoms, such as octyl alcohol or decyl alcohol).
Regarding claim 10, CAO teaches a gypsum hardened product according to claim 5, further comprising (C) a nonionic compound with a LogP of 0 or more and less than 2.0 (see CAO at paragraph [0046], teaching using the foaming agents described in SAVOLY; see SAVOLY at col. 3, lines 5-23, teaching foaming agents comprising nonionic compounds, e.g., monoalkyl ethers of ethylene glycol, or isopropanol (i.e., 2-propanol), which has a logP value of 0.05 as discussed in Applicant’s specification at paragraph [0035]).
Regarding claim 11, CAO teaches a gypsum hardened product according to claim 1, wherein the hardened product is a gypsum board (see CAO at Abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH CATHERINE CASE whose telephone number is (703)756-5406. The examiner can normally be reached M-Th 7:00 am - 5:00 pm EST.
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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