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 .
DETAILED ACTION
Response to Amendment
1. This action is in response to the amendment filed June 17, 2026.
Claims 1, 17 and 20 were amended, rendering claims 1-20 pending.
Claim Rejections – 35 USC 112
2. 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.
3. Claims 1-10 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
In claim 1, the phrase, “binder is substantially free from magnesium chloride” is indefinite. It is unclear whether the binder is free from magnesium chloride or not.
Claims 2-10 are rejected as being dependent on instant claim 1.
Claims 8-9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim Rejections – 35 USC § 103
4. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
5. Claims 1-7, 10 are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (CN 113382856).
Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Although Boucke does not disclose the exact molar ratio of MgO and MgSO4, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), as in claims 1-2.
Concerning claim 3, Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Although Boucke does not explicitly disclose the weight percentage of the binder, weight percentage modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04.
Concerning claim 4, Figure 5a of Boucke shows a panel body comprising a first major surface opposite a second major surface and perforations extending from a first major surface to a second major surface of the body.
Concerning claim 5, Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Although Boucke does not explicitly disclose the average diameter of the perforations, average diameter modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04.
Concerning claim 6, Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Boucke does not appear to explicitly teach the perforation density, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the panel is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the panel discussed above would be expected to meet the claimed perforation density.
Concerning claim 7, Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Although Boucke does not explicitly disclose the weight percentage of the cellulosic fiber (particulate), weight percentage modifications involve a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art and therefore obvious. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984) See MPEP 2144.04.
Concerning claim 10, Figure 5a of Boucke shows a panel body comprising a first major surface opposite a second major surface and perforations extending from a first major surface to a second major surface of the body. Boucke does not appear to explicitly teach the NRC value, however substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the panel is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the panel discussed above would be expected to meet the claimed NRC value.
Allowable Claims
6. Claims 11-20 are allowed. The prior art of record does not teach or suggest the recited method of manufacture of a building panel further including wherein the binder composition comprises MgO and MgSO4 in a molar ratio ranging from about 7:1 to about 9:1.The prior art of record does not teach or suggest the recited blend for the manufacture of building materials further including the MgO in an amount ranging from about 20 wt. to about 30 wt. % based on the total dry-weight of the particulate filler; sodium silicate in an amount ranging from about 10 wt. % to about 20 wt. % based on the total dry-weight of the particulate filler; magnesium sulfate in an amount ranging from about 1 wt. % to about 10 wt. % based on the total dry-weight of the particulate filler; calcium carbonate in an amount ranging from about 1 wt. % to about 10 wt. % based on the total dry-weight of the particulate filler; and the cellulosic fiber in an amount ranging from about 40 wt. % to about 60 wt. % based on the total dry-weight of the particulate filler; wherein the MgO and MgSO4 in a molar ratio ranging from about 6.5:1 to about 9.5:1.
The prior art does not teach motivation or suggestion for modification to make the invention as instantly claimed.
Response to Arguments
7. Applicant’s argument of the rejection made under 35 U.S.C. 103 as being unpatentable over Boucke (CN 113382856) has been considered; however, is unpersuasive. Applicant argues Boucke broadly discloses magnesium-based cement systems, including compositions based on magnesium oxide and magnesium salts. Importantly, Boucke explicitly teaches magnesium chloride-containing systems (MOC systems) as a primary embodiment. In contrast, amended claim 1 requires: "wherein the binder is substantially free of magnesium chloride (MgCl₂)." This limitation defines a different chemical system, excluding chloride-based binders relied upon in Boucke. The present specification explicitly recites that binder may be substantially free of magnesium chloride, and may be free of components forming chloride ions. Accordingly, Boucke fails to disclose or suggest the claimed chloride-free binder system.
In response to Applicant’s argument, Boucke discloses a panel comprising cellulosic fiber (paragraph 4) and a binder comprising MgO and MgSO4 having a molar ratio of about 5:1 (paragraph 7). Although page 5, paragraph 2 of Boucke discloses one embodiment may include magnesium chloride; page 5, paragraph 3 discloses the preferred embodiment does not include magnesium chloride, which is interpreted as Boucke does not require magnesium chloride. Therefore, the rejection
under 35 U.S.C. 103 as being unpatentable over Boucke (CN 113382856) is maintained for reasons of record.
Conclusion
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781
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