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 .
Information Disclosure Statement
It is noted that the present application has at least six (6) related foreign filings or publications in other countries. Applicant is reminded of the duty under 37 CFR 1.56(a) to disclose information material to patentability, such as (a) Office Actions and prior art related to the claimed invention which have been cited during prosecution of related filings, (b) prior foreign or domestic filings by Applicant(s) which are related to the claimed or disclosed invention and which constitute prior art, (c) related brochures, dissertations, or other research publications, including that which has been authored by one or more inventors listed under this application or by other individuals under which or along which one or more inventors may have been working, and (d) any other relevant prior art Applicant may be aware of, including since the filing of any previous information disclosure statement (IDS).
Priority
While 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 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).
In particular, the disclosure of the prior-filed application, Application No. 17/263,806, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for at least claim 19 of the instant application for the reason(s) set forth in the rejection made under this statute below.
Claim Objections
Claims 14-15 are objected to because of the following informalities:
At line 2 of claim 14, “the” should be added prior to “drying”.
In claim 15, “lining paper” should be added after “recycled”.
Absent persuasive argument contesting these issues, appropriate correction by amendment is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 19 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. In particular:
The claim 19 omission of a water reducing agent is considered new matter for the same or similar reasons outlined under the 35 U.S.C. 112(a) rejection set forth at pages 4-5 of the Office action issued 13 September 2023 in parent U.S. Application No. 17/263,806.
Specifically, it is not believed that Applicant was in possession of such a broad claim. It is noted that the specification at page 4 lines 11-13 discloses the water reducing agent may be calcium lignosulphonate, and up to 1.5% calcium lignosulphonate solution may be provided in the mixture prior to drying. Additionally, the specification at page 6 lines 9-10 discloses water mixed with calcium lignosulphonate solution water reducing agent and mixed with a dry mix of cement and lime. Likewise, all of the disclosed examples include a calcium lignosulphonate water reducing agent (see the 2nd Table representation in the Specification at page 8 lines 3-4, which discloses calcium lignosulphonate in all of Examples 1 to 3).
As such, the Applicant, in setting forth their invention as disclosed in the specification, is believed to have included the water reducing agent as a component of the claimed building product, particularly since there is no disclosure of the water reducing agent as an optional component, or an embodiment of Applicant’s building product without a water reducing agent.
Additionally, the MPEP teaches that under certain circumstances, omission of a limitation can raise an issue regarding whether the inventor had possession of a broader, more generic invention (e.g. MPEP §§ 2163(I)(B), 2163.05(I)(A)).
Based on the above record, it is believed that the specification as originally filed does not convey with reasonable clarity to one of ordinary skill in the art that, as of the filing date, the applicant was in possession of a method of producing a building product or internal lining board that may or may not contain a water reducing agent as presently recited by claim 19. As such, since the applicant is not believed to have been in possession of the full scope of what the claim 19 omission entails, this claim is rejected as failing to comply with the written description requirement.
Absent persuasive argument contesting this issue, appropriate correction is required, either by amendment or cancelation of the claim at issue.
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.
Claim 9 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In particular:
The language of claim 9 is confusing, in particular in that it is unclear whether the claim requires for the water to be “heated up” to the recited temperature, or for the heating to take place “up to” the recited temperature (i.e. providing a temperature range).
Absent persuasive argument contesting this issue, appropriate correction by amendment is required.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,037,289 taken alone, or in the alternative over these patented claims and further in view of Brzyski et al. (Composite Materials Based on Hemp and Flax for Low-Energy Buildings. Materials 2017, 10, 510, pages 1-23).
As to instant claims 1 and 19, the patented claims individually or collectively recite mixing the claimed ingredients and locating between two sheets of lining paper (patented claim 18, etc.).
While the instantly claimed slurry and paste states are not specified explicitly, these are believed to necessarily result from the patented mixture on account of identical ingredients being utilized. In the alternative that it is ultimately determined that the patented claims are not in fact sufficiently specific in this regard, then Brzyski is recognized for also disclosing a mixture of similar ingredients (see at least the Table 1 binder, water, and food crop byproduct), in particular whereby it is explicitly noted that numerous mixing methods are known in related arts, including for example first forming liquid binder (i.e. a slurry) and mixing with filler/byproduct to form a paste-like consistency (see the final two sentences of p. 4 through p. 5 lines 1-3). Noting also that changing a prior art sequence of adding ingredients together is considered generally obvious absent unexpected results (MPEP § 2144.04(IV)(C)), and that one of ordinary skill in the art would have found it obvious, in determining an optimal consistency with which to apply the patented mixture to sheets of lining paper, to have reached the claimed paste state through routine experimentation performable in accordance with MPEP 2144.05(II), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings of Brzyski into the patented claims, in particular as providing an art-recognized suitable or interchangeable sequence of mixing the patented ingredients, and/or as providing a potential improvement whereby the patented mixture is more easily workable between the sheets of lining paper while also minimizing material loss and/or contamination of manufacturing equipment associated therewith.
Dependent claim 2-18 are additionally met or believed to be obvious over the (modified) patented claims as set forth above.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,037,289 in view of Porter (US 7,846,278), or in the alternative over this combination and further in view of Brzyski et al. (Composite Materials Based on Hemp and Flax for Low-Energy Buildings. Materials 2017, 10, 510, pages 1-23).
As to instant claim 20, the patented claims individually or collectively recite mixing the claimed ingredients and locating between two sheets of lining paper (patented claim 18, etc.).
While the instantly claimed slurry and paste states are not specified explicitly, these are believed to necessarily result from the patented mixture on account of the identical ingredients being utilized. In the alternative that it is ultimately determined that the patented claims are not in fact sufficiently specific in this regard, then Brzyski is recognized for also disclosing a mixture of similar ingredients (see at least the Table 1 binder, water, and food crop byproduct), in particular whereby it is explicitly noted that numerous mixing methods are known in related arts, including for example first forming liquid binder (i.e. a slurry) and mixing with filler/byproduct to form a paste-like consistency (see the final two sentences of p. 4 through p. 5 lines 1-3). Noting also that changing a prior art sequence of adding ingredients together is considered generally obvious absent unexpected results (MPEP § 2144.04(IV)(C)), and that one of ordinary skill in the art would have found it obvious, in determining an optimal consistency with which to apply the patented mixture to sheets of lining paper, to have reached the claimed paste state through routine experimentation performable in accordance with MPEP 2144.05(II), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings of Brzyski into the patented claims, in particular as providing an art-recognized suitable or interchangeable sequence of mixing the patented ingredients, and/or as providing a potential improvement whereby the patented mixture is more easily workable between the sheets of lining paper while also minimizing material loss and/or contamination of manufacturing equipment associated therewith.
While the patented claims do not detail instantly claimed steps of distributing, extruding, using pads or rollers, cutting, and drying, these are all disclosed by Porter, which similarly details manufacture of a cementitious board by locating cementitious material between sheets 18 (see at least the fig. 2 representation and its corresponding description, which is inclusive of the 4:40 cutting and the 8:46-48 curing station believed to correspond to the instantly claimed drying chamber). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Porter into the patented claims as providing a suitable and/or interchangeable apparatus and corresponding processing steps for these unspecified elements of the patented claims, and/or as providing a potential improvement whereby the patented article may be formed continuously.
Claim Rejections - 35 USC § 102/103
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.
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.
Rejection 1
Claims 1-6, 8-13, 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (WO 2017/013413) in view of Perez-Pena (US 2018/0022653), or in the alternative over this combination and further in view of Brzyski et al. (Composite Materials Based on Hemp and Flax for Low-Energy Buildings. Materials 2017, 10, 510, pages 1-23).
As to claim 1, Robinson teaches a method of producing an internal lining board (abstract) in which binder and water are mixed to form a slurry (see the 5:20-24 mixing into a slip, in addition to the second embodiment formulation set forth at 7:14-25 and 8:5-6), followed by mixing a food crop byproduct with the slurry (see at least 5:26-28, 7:26), and locating the resulting mixture between two sheets of lining paper (see at least the 4:12-13, 6:10-22 and/or 4:16-17, 8:20-23 embodiments).
While the claim 1 paste state is not specified explicitly, this is believed to necessarily result from the Robinson’s above-cited 5:26-28 and/or 7:26 mixing the slip with food crop byproduct on account of identical claimed ingredients being utilized for identical claimed steps of mixing. In the alternative that it is ultimately determined that Robinson is not in fact sufficiently specific in this regard, then Brzyski is recognized for also disclosing a mixture of similar ingredients (see at least the Table 1 binder, water, and food crop byproduct), in particular whereby it is explicitly noted that numerous mixing methods are known in related arts, including for example first forming liquid binder (i.e. a slurry) and mixing with filler/byproduct to form a paste-like consistency (see the final two sentences of p. 4 through p. 5 lines 1-3). Noting also that one of ordinary skill in the art would have found it obvious, in determining an optimal consistency with which to apply the prior art mixture to sheets of lining paper, to have reached the claimed paste state through routine experimentation performable in accordance with MPEP 2144.05(II), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings of Brzyski into Robinson, in particular as providing a potential improvement whereby Robinson’s mixture is more easily workable between the sheets of lining paper while also minimizing material loss and/or contamination of manufacturing equipment associated therewith.
Robinson is not believed to specify use of the claim 1 water reducing agent. However, Perez-Pena discloses a similar method in which binder, water, and filler are similarly provided as a mixture 28 before locating between two sheets of lining material 22,32, in particular whereby water reducing agents in the form of superplasticizers are included in the formulation for improving particle dispersion and flow characteristics, including of slurries such as those comprising the same or similar binder ingredients as disclosed by Robinson, while also reducing the amount of water necessary therefor without negatively impacting workability (see Perez-Pena at least at [0158]-[0161]). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Perez-Pena into Robinson, in particular so as to similarly provide a water reducing agent to the Robinson formulation so as to similarly improve dispersion and flow characteristics of Robinson’s mixture while also reducing the amount of water necessary therefor without negatively impacting workability.
The claim 2 locating by distributing across a continuously moving belt, and the claim 3-4 extruding are believed to be met or implied by Robinson’s use of a 4:16-4:17, 8:20-23 distribution and rolling between two sheets of lining material on a conveyor between rollers. In the alternative that it is ultimately determined that Robinson is not sufficiently specific enough to establish use of such a belt or of such extruding, then Perez-Pena is recognized for describing and depicting in greater detail a fig. 1B apparatus comprising such a belt and extruding with use of at least one roller (see also the corresponding description of the above-cited figure). It would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Perez-Pena into Robinson as providing an art-recognized suitable and/or interchangeable forming apparatus, and/or providing an improvement whereby the resulting article may be formed continuously.
Robinson teaches the claim 5-6 heating and claim 13 drying (see at least 6:19-22).
While Robinson is not believed to specify the claim 8-9 water heating, Perez-Pena states explicitly that providing an elevated initial slurry temperature, for example by heating slurry components such as water, can be beneficial and can impact properties such as temperature rise rate and set time (see at least [0203]-[0206]). It is noted that with claim 9 construed as reciting a temperature range of “up to” 90°C, these Perez-Pena teachings are believed to fall within this range, and with claim 9 construed as requiring heating to 90°C, these Perez-Pena teachings are believed to provide sufficient basis for one of ordinary skill in the art to have reached the claimed heating through routine optimization performable in accordance with MPEP § 2144.05(II) utilizing Perez-Pena’s above teachings as a guide, for example to achieve optimal temperatures, heating rate, and set times without negatively impacting the ingredients utilized or quality/properties of the resulting article. It would have been obvious for one of ordinary skill in the art to incorporate these above teachings from Perez-Pena into Robinson as providing an improvement to Robinson’s formulation and/or manufacturing technique whereby temperature and set time are customized or more closely controlled.
The claim 10 use of rollers (as a claimed alternative to vibrating pads) is disclosed by Robinson as set forth in at least the above citations.
The claim 11 cutting is referenced by Robinson for example at 7:12. Additionally/alternatively, Perez-Pena discloses a continuous procedure in which the claim 11-12 cutting is performed via water knife 44 (fig. 1B). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Perez-Pena into Robinson as providing an art-recognized suitable and/or interchangeable cutter for the unspecified cutting means of Robinson, and/or as providing an improvement whereby a continuous process may be utilized, followed by cutting to length.
Robinson teaches the claim 15 paper type in addition to a weight range falling into that of claim 16 (see at least 2:11-12).
Robinson teaches the claim 17 combination of lime and cementitious product (abstract, 3:1-11, etc.).
As to claim 20, Robinson teaches a method of producing an internal lining board (abstract) in which binder and water are mixed to form a slurry (see the 5:20-24 mixing into a slip, in addition to the second embodiment formulation set forth at 7:14-25 and 8:5-6), followed by mixing a food crop byproduct with the slurry (see at least 5:26-28, 7:26), and locating the resulting mixture between two sheets of lining paper (see at least the 4:12-13, 6:10-22 and/or 4:16-17, 8:20-23 embodiments).
While the claim 20 paste state is not specified explicitly, this is believed to necessarily result from the Robinson’s above-cited 5:26-28 and/or 7:26 mixing the slip with food crop byproduct on account of identical claimed ingredients being utilized for identical claimed steps of mixing. In the alternative that it is ultimately determined that Robinson is not in fact sufficiently specific in this regard, then Brzyski is recognized for also disclosing a mixture of similar ingredients (see at least the Table 1 binder, water, and food crop byproduct), in particular whereby it is explicitly noted that numerous mixing methods are known in related arts, including for example first forming liquid binder (i.e. a slurry) and mixing with filler/byproduct to form a paste-like consistency (see the final two sentences of p. 4 through p. 5 lines 1-3). Noting also that one of ordinary skill in the art would have found it obvious, in determining an optimal consistency with which to apply the prior art mixture to sheets of lining paper, to have reached the claimed paste state through routine experimentation performable in accordance with MPEP 2144.05(II), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings of Brzyski into Robinson, in particular as providing a potential improvement whereby Robinson’s mixture is more easily workable between the sheets of lining paper while also minimizing material loss and/or contamination of manufacturing equipment associated therewith.
Robinson is not believed to specify use of the claim 20 water reducing agent. However, Perez-Pena discloses a similar method in which binder, water, and filler are similarly provided as a mixture 28 before locating between two sheets of lining material 22,32, in particular whereby water reducing agents in the form of superplasticizers are included in the formulation for improving particle dispersion and flow characteristics, including of slurries such as those comprising the same or similar binder ingredients as disclosed by Robinson, while also reducing the amount of water necessary therefor without negatively impacting workability (see Perez-Pena at least at [0158]-[0161]). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Perez-Pena into Robinson, in particular so as to similarly provide a water reducing agent to the Robinson formulation so as to similarly improve dispersion and flow characteristics of Robinson’s mixture while also reducing the amount of water necessary therefor without negatively impacting workability.
The claim 20 distributing across a continuously moving belt, extruding, and use of rollers are believed to be met or implied by Robinson’s use of a 4:16-4:17, 8:20-23 distribution and rolling between two sheets of lining material on a conveyor between rollers, with the claimed drying met by that set forth by Robinson at least at 6:19-22. In the alternative that it is ultimately determined that Robinson is not sufficiently specific enough to establish use of such a belt or of such extruding, then Perez-Pena is recognized for describing and depicting in greater detail a fig. 1B apparatus comprising such a belt and extruding with use of at least one roller (see also the corresponding description of the above-cited figure). It would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Perez-Pena into Robinson as providing an art-recognized suitable and/or interchangeable forming apparatus, and/or providing an improvement whereby the resulting article may be formed continuously.
The claim 20 cutting is referenced by Robinson for example at 7:12. Additionally/alternatively, Perez-Pena discloses a continuous procedure in which cutting is performed via water knife 44 (fig. 1B). It would have been obvious for one of ordinary skill in the art to incorporate these teachings from Perez-Pena into Robinson as providing an art-recognized suitable and/or interchangeable cutter for the unspecified cutting means of Robinson, and/or as providing an improvement whereby a continuous process may be utilized, followed by cutting to length.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of references applied to claim 5 above, and further in view of Masuda (JP 2005-281015).
While Robinson is not believed to disclose the claim 7 conduction through the above-cited belt, Masuda pertains also to the manufacture of a cementitious board (title, abstract), whereby the belt or belts onto which a cementitious slurry 11 is provided and conveyed may be heated so as to facilitate control of slurry curing in a continuous process prior to cutting the resulting article to a desired length (see the corresponding description of fig. 1 regarding belt preheaters 9, 9’ in addition to heaters 14, 15 and 17). Noting also Robinson’s teachings with respect to drying and setting (i.e. curing) of the resulting article, including for example via use of applied heat (6:19-22, etc.), in addition to Perez-Pena’s teachings with respect to controlling slurry temperature via heating so as to increase rate of temperature rise and reduce set time ([0203]-[0206]), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Masuda into modified Robinson, in particular so as to provide the above belt heating in order to improve control of, and/or expedite the above-cited drying/setting/curing of Robinson’s mixture and resulting article as well, while also providing the article in better condition for cutting to length without negatively impacting the shape and/or integrity of the resulting article.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of references applied to claim 1 above, or in the alternative over this combination and further in view of Chanvillard et al. (WO 2014/072533). In either instance, claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of references applied to claim 1, and further in view of Chanvillard et al. (WO 2014/072533).
Robinson is not believed to specify use of one of the claim 18 food crop byproduct materials.
While Robinson is not believed to specify an exact density such as that of claim 14, this is believed to result from the above (modified) Robinson process on account of the same or similar ingredients being treated by the same claimed method steps. In the alternative that it is ultimately determined that Robinson is not in fact sufficiently specific in this regard or that the claimed density would not necessarily result as such, then Chanvillard is recognized for disclosing a remarkably similar formulation also comprising binder, water-reducing agent, water, and food crop byproduct, in particular whereby in addition to one or more food crop byproducts recited by claim 18 that are provided in addition/alternative to that disclosed explicitly by Robinson (see Chanvillard at least 7:15-23), a wide range of densities may be provided which encompass or overlap those of claim 14 (see at least 2:1-3, 11:15, pp. 20-23 Tables, etc.), with density being impacted at least in part by the type of binder (16:1-12), type of filler/byproduct (note the wide range of 17:11-25 densities), and/or proportion(s) utilized for such ingredients. Noting also that due to density impacting properties such as strength, durability, weight, and thermal properties (one or more of which is addressed explicitly by Robinson, and also by Chanvillard), with Chanvillard outlining the potential for a wide range of customizable product density, one of ordinary skill in the art would have found it obvious, in determining optimal physical properties, to arrive at the claimed densities through routine experimentation performable in accordance with MPEP 2144.05(II) utilizing the above prior art teachings as a guide, for example by selection of the above different materials and/or proportions thereof to this end. It would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Chanvillard into modified Robinson as providing art-recognized suitable, interchangeable, and/or improved article densities, and/or as providing an improvement whereby density may be customized and/or controlled by selection not only from the filler type (i.e. hemp) disclosed explicitly by Robinson or Chanvillard, but also of different proportions of such filters and the above-cited binder(s). It is noted further that, for claim 18 in particular, it would have been obvious for one of ordinary skill in the art to incorporate the above teachings from Chanvillard into Robinson as providing art-recognized interchangeable filler material(s), and/or as providing an improvement to the Robinson process by the additional/alternative food crop byproduct/filler materials from which to choose, based for example on the impact such materials, and their unique physical and/or other properties, would have provided to the resulting article.
Claim 19 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Robinson (WO 2017/013413), or in the alternative under 35 U.S.C. 103 as unpatentable over Robinson in view of Brzyski et al. (Composite Materials Based on Hemp and Flax for Low-Energy Buildings. Materials 2017, 10, 510, pages 1-23).
As to claim 19, Robinson teaches a method of producing an internal lining board (abstract) in which binder and water are mixed to form a slurry (see the 5:20-24 mixing into a slip, in addition to the second embodiment formulation set forth at 7:14-25 and 8:5-6), followed by mixing a food crop byproduct with the slurry (see at least 5:26-28, 7:26), and locating the resulting mixture between two sheets of lining paper (see at least the 4:12-13, 6:10-22 and/or 4:16-17, 8:20-23 embodiments).
While the claim 19 paste state is not specified explicitly, this is believed to necessarily result from the Robinson’s above-cited 5:26-28 and/or 7:26 mixing the slip with food crop byproduct on account of identical claimed ingredients being utilized for identical claimed steps of mixing. In the alternative that it is ultimately determined that Robinson is not in fact sufficiently specific in this regard, then Brzyski is recognized for also disclosing a mixture of similar ingredients (see at least the Table 1 binder, water, and food crop byproduct), in particular whereby it is explicitly noted that numerous mixing methods are known in related arts, including for example first forming liquid binder (i.e. a slurry) and mixing with filler/byproduct to form a paste-like consistency (see the final two sentences of p. 4 through p. 5 lines 1-3). Noting also that changing a prior art sequence of adding ingredients together is considered generally obvious absent unexpected results (MPEP § 2144.04(IV)(C)), and that one of ordinary skill in the art would have found it obvious, in determining an optimal consistency with which to apply the prior art mixture to sheets of lining paper, to have reached the claimed paste state through routine experimentation performable in accordance with MPEP 2144.05(II), it would have been obvious for one of ordinary skill in the art to incorporate the above teachings of Brzyski into Robinson, in particular as providing a potential improvement whereby Robinson’s mixture is more easily workable between the sheets of lining paper while also minimizing material loss and/or contamination of manufacturing equipment associated therewith.
Additional Applicable Rejections
It is noted that while not outlined herein for the sake of brevity, a rejection is also applicable over a number of additional references of record or hereby added to the record which likewise anticipate, or render obvious, one or more of the pending claims. For example:
As opposed to the above-cited rejection over Robinson in view of Perez-Pena, a rejection could also be made over Perez-Pena, which discloses features corresponding to at least claim 1 with exception of a food crop byproduct, in view of Robinson for this missing ingredient, in addition to Brzyski as necessary.
A rejection is additionally applicable over numerous prior art references recognized for disclosing the claimed combination of binder with food crop byproduct and a water reducing agent but without two sheets of lining paper (e.g. US 7,041,167, WO 2014/072533, or FR 2992640), in view of similar disclosures but where such lining paper sheets are disclosed (e.g. WO 2017/013413, US 2018/0022653, US 8,968,621, US 2015/0024228, US 7,846,278, etc.), in addition to Brzyski as necessary.
This additionally applicable prior art should be addressed in reply to this Office action via amendment and/or remarks.
Interview Request
Applicant’s Representative is encouraged to contact the Examiner upon review of the instant Office action so as to discuss the claimed invention, the above prior art rejection and other applicable prior art, and how it is believed that the crux of the claimed and disclosed invention distinguishes over the prior art as a whole, particularly if it is believed that such a discussion will help to advance prosecution.
Conclusion
See at least the abstract and figures of the additional prior art hereby made of record, which additional prior art is considered pertinent to Applicant’s disclosure and may be relied upon in subsequent rejections against claimed subject matter.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Atul P. Khare whose telephone number is (571)270-7608. The examiner can normally be reached Monday-Friday 9am-6pm.
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/Atul P. Khare/Primary Examiner, Art Unit 1742