DETAILED ACTION
Claim Objections
Claim 17 is objected to because of the following informalities: it appears that the term “formed” should be between “further” and “from”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 12 recites “the board core has a dry density of about 30 pcf or less” which is the same dry density that claim 8 recites, wherein claim 12 is dependent upon claim 8. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4, 6-10, 12-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 20120207989).
Xu discloses a multilayer core board. Concerning claims 1, 4, 8, and 10, Xu discloses the multilayer core board (FIG. 2) comprises a first core layer (element 32) having a density and thickness and formed from at least water and stucco (para. 0023-0025), upon which a second core layer (element 41) is disposed, wherein the second core layer (i.e. equivalent to the claimed concentrated layer) has a density higher than the first core layer and is formed from at least water and stucco and can further include a strength additive (or enhanced additive) such as starch in each layer and the first core is thicker than the second core with the facing core (or second core layer) has higher content of strength additive than the non-facing (ore first core layer) (para. 0014-0058 and 0074). With respect to the hardness of second core layer (or concentrated layer) being higher than the first core layer, Examiner notes that since the density of the second core layer is higher than the first core layer and the instant application discloses the same, the hardness of second core layer would be higher than the hardness of the first core layer and include and encompass the claimed range.
With respect to claim 2 and content of the strength additive, Xu discloses the content enhances the nail pull (para. 0053); as such, it would have been obvious to one of ordinary skill in the art to have the claimed concentration ratio, in order to provide enhanced nail pull. In regards to claims 3 and 9, the composite density is from 10 to 45 pcf (para. 0029). Xu further discloses a nail pull of from 50 – 150 lbs of force which overlaps the range as claimed (para. 0037). Regarding claims 6 and 12, the second core layer has a density of 35 to 40 pcf and the first core layer has a density of 25 to 35 pcf, resulting in a density of 35 pcf or less (Table 2) which overlaps and includes the claimed density range of 30 pcf or less as claimed. With respect to claims 7 and 13, since the layers contain the same materials and have properties that overlap and include the claimed ranges, the resulting modulus difference would include and encompass the claimed range. Regarding claim 14, the density difference between the core layers would include and encompass the claimed range, given the above cited density for each core layer. Regarding claims 16-20, the above recitations with respect to claims 1-4, 6-10, and 13-14 are applicable. Xu further discloses the second core layer can include a dispersant and a phosphate compound (para. 0079, 0087 and 0042-0052).
Claims 5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 20120207989) as applied to claims 1 and 8 above, and further in view of Sang et al. (US 20140113124).
Xu discloses the above, including the use of pregelatinized starch (Examples). However, Xu is silent to the claimed viscosity.
Sang discloses a pregelatinized starch having a viscosity of 20 to 700 centipoise (para. 0012-0015). A pregelatinized starch having the claimed viscosity provides benefits of reducing cost of raw material, enhancing manufacturing efficiency, and enhancing product strength (para. 0012). As such, it would have been obvious to one of ordinary skill to use a pregelatinized starch having the claimed viscosity in order to produce a product that has an enhanced strength while also providing improved processing and reducing costs.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 20120207989) as applied to claim 8 above, and further in view of Pollock et al. (US 20040092625).
Xu discloses the above but is silent to the second core layer further comprising glass fiber.
Pollock discloses a gypsum panel containing glass fibers. With respect to the addition of glass fibers, Pollock discloses that the addition of glass fibers in a cementitious composition provides improved flexural strength (para. 0100). As such, it would have been obvious to one of ordinary skill in the art to add glass fibers to the second core layer for improving flexural strength.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 10421251. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a composite gypsum panel having overlapping properties as it relates the hardness, and density.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-45 of U.S. Patent No. 10421250. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a composite gypsum panel having overlapping properties as it relates the hardness, and density.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12090744. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a composite gypsum panel having overlapping properties as it relates the hardness, and density.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PRASHANT J KHATRI whose telephone number is (571)270-3470. The examiner can normally be reached M-F 10AM-6:30PM.
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PRASHANT J. KHATRI
Primary Examiner
Art Unit 1783
/PRASHANT J KHATRI/Primary Examiner, Art Unit 1783
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