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 .
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 1-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12000158 in view of Ayambem et al. (US 2015/0158999). Claim 1 of '158 recites a low-dust joint compound composition comprising a dust reduction additive emulsion comprising colloidally protected wax- based microstructures and a first water which reads of claim 1 of the current application. ‘158 fails to teach the low dust compound has at least about 90% bond according to an ASTM C474 peel test. Ayambem et al. discloses a low dust joint compound composition used for drywall finishing application (see abstract, 0056) comprising water and wax emulsion (see 0011-0013) wherein the compound has at least 99% bond according to an ASTM C474 peel test (see 0075). The wax emulsion comprises polyvinyl alcohol; paraffin wax; a base; and a dispersant (see claim 6, 0049). Ayambem et al. states the wax emulsion can act as a dedusting agent (see 0056). It would have been obvious to form the composition of ‘694 to have a bond of at least 99% as taught by Ayambem et al. One would have been motivated to do so since both are directed to low dust compounds where Ayambem et al. teaches a composition that has improved bonding to a substrate which is desired when bonding to materials together.
Claim 16 of '158 recites a method of using the low dust joint compound composition by applying said composition to a joint between adjacent wallboard panels; and allowing the composition to dry; and sanding the dried composition reading on claim 16 of the current application. Claim 17 of '158 recites a method of reducing the quantity of dust generated by a joint compound composition comprising providing a join compound composition a filler, a water, binder and at least one of a defoamer, wetting agent, preservative, fungicide, thickener, non-leveling agent, surfactant, and a solvent; subsequently adding a sufficient quantity of dust reduction additive emulsion to the composition to reduce the quantity of dust generated by sanding the hardened joint compound composition by at least 5% which reads on claim 18 of the current application.
The dependent claims 2-16 and 19-20 are anticipated by the claims of '158.
Claims 18-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-19 of U.S. Patent No. 10801217. Although the claims at issue are
not identical, they are not patentably distinct from each other because claim 18 of '217 recites a
method of reducing the quantity of dust generated by a joint compound composition, the method
comprising providing a joint compound composition comprising a filler, a first water, binder, and
at least one of a deformer, wetting agent, preservative, fungicide, thickener, non-leveling agent,
surfactant, and a solvent; and subsequently adding a sufficient amount of dust reductional
additive emulsion to the compound to reduce the quantity of dust generated by sanding the
hardened joint compound composition by at least 5% which anticipates claim 18 of the current
application.
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.
Claim(s) 1, 3-17, and 21-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ayambem et al. (US 2015/0158999) in view of Sasantani (US 6987137).
As to claim 1, Ayambem et al. discloses a low dust joint compound composition used for drywall finishing application (see abstract, 0056) comprising water and wax emulsion (see 0011-0013) wherein the compound has at least 99% bond according to an ASTM C474 peel test (see 0075). The wax emulsion comprises polyvinyl alcohol; paraffin wax; a base; and a dispersant (see claim 6, 0049). Ayambem et al. states the wax emulsion can act as a dedusting agent (see 0056).
Ayambem et al. fails to teach the composition comprises colloidally protected wax-based microstructures as required by claim 1.
Sasantani discloses a grindable composition comprising microcapsules having an encapsulated material in a liquid state such as liquid paraffin and a wall material such as a thermoplastic film. Sasantani states the use of such materials decreases the amount of scattered dust during the grinding process (dust reduction) while the strength isn’t comprised (see abstract, col. 1, lines 45-59, line 61 – col. 2, line 2 and col. 3, line 46 – col. 4, line 35).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Ayambem et al. to include using the microcapsules disclosed by Sasatani as the dust reductive material. One would have bene motived to do so since both are directed providing a material include paraffin used to prevent airborne dust during grinding or cutting where Sasatani states the use of the encapsulated wax results in reduction of dust, the wax is securely fixed within the compound without sacrificing the strength of the joint compound.
As to claim 3, Sasatani states the shell material is a polymer but is not limited and gives examples of materials. Sasatani fails to teach a polyvinyl alcohol as claimed. However, it would have been obvious to one having ordinary skill in the art use such materials as shell materials since Ayambem et al. show that the polymer materials of Sasatani are alternatives to polyvinyl alcohol and can be used in such compositions. It has been established that the mere substitution of one known element for a known alterative has a prime facie case of obviousness.
As to claim 4, the composition further comprises a rheology modifier (see 0041 of Ayambem et al.) and filler (see 0041-0042)
As to claim 5, the filler is selected from calcium carbonate, calcium sulfate hemihydrate, diatomaceous earth or silica (see 0042 of Ayambem et al.).
As to claim 6, the composition can further comprise of micro-roughened filler or clay (see 0021 of Ayambem et al.).
As to claims 7-9, Sasatani disclose the use of a base of diethanol amine as a hardening agent (see col. 7 lines 42-50). Langford teaches a dispersing agent such as a surfactant and water.
As to claims 10-11, the dust reduction additive is provided at 0.1 to 10% by weight of the composition (see 0051 and Ayambem et al.).
As to claim 12, the low dust composition has a peak air-borne dust generation of less than 100 mg/m3(see 0052 of Ayambem et al.).
As to claims 13-14, states the amount of dust is reduced by at least 80% (see Ayambem et al. 0063-64).
As to claims 15-16, the joint compound comprises metal siliconate salt (see 0026-0028 of Ayambem et al.).
As to claim 17, the composition is applied between wallboards, dried and sanded (see 0057 of Ayambem et al.).
As to claims 21-23, Ayambem et al. teaches the compound has a bond of 100% (see 0185).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant amended claims to overcome the previous written description requirement, which broadened what is encompassed by the clam, thereby requiring a new ground of rejection.
Conclusion
There are no prior art rejections over claims 2 and 18-20. As to claims 2 and 18-20, the prior art fails to teach or suggest forming a dust reducing additive emulsion having a core of paraffin and nonparaffin component as claimed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CACHET I. PROCTOR/
Examiner
Art Unit 1712
/CACHET I PROCTOR/ Primary Examiner, Art Unit 1712