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 .
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 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.
Claims 1-20 are pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-17 and the following species in the reply filed on 06/09/26 is acknowledged. The traversal is on the ground(s) that the species have not been shown to be mutually exclusive chemical compounds that are not obvious variants of each other. This is not true and there is sufficient basis for them to be patentably distinct (non-obvious variants) based on the manner in which they are recited in the claims (i.e., as different options for the interface binding ingredient). If Applicant wishes to state on the record that they are obvious variants and not patentably distinct, then the species requirement would be withdrawn and any prior art teaching of one species will be (hypothetically) by Applicant’s admission sufficient to render obvious all the other species, even if those species are not disclosed in the prior art. This patentable distinction also makes searching for all the species a burden.
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The requirement is still deemed proper and is therefore made FINAL.
Claim(s) 18-20 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected subject matter, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/09/26.
Claim Rejections - 35 USC § 112(b)/second paragraph
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(s) 3-5, and 8-10 is/are 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 pre-AIA the applicant regards as the invention.
Claims 3-5 and 8-10 recite “the cementitious fire-resistant layer” which lacks proper antecedent basis and is therefore vague.
The rest of the rejected claims not specifically addressed above are rejected because they depend from one of the claims specifically addressed above and therefore include the same indefiniteness issue(s) via their dependency.
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 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.
If this application currently names joint inventors: in considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
When something is indicated as being “obvious” this should be taken as shorthand for “prima facie obvious to one having ordinary skill in the art to which the claimed invention pertains before the effective filing date of the invention”.
When a range is indicated as overlapping a claimed range, unless otherwise noted, this should be taken as short hand to indicate that the claimed range is obvious in view of the overlapping range in the prior art as set forth in MPEP 2144.05, in the case where the claimed range “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).
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wambaugh (U.S. 2023/0047741) in view of Tanaka (JP 10-251599 see machine translation) in view of Mechanical Properties and Fire Resistance of Magnesium-Cemented Poplar Particleboard (2019) in view of Freeman (U.S. 2020/0181448) in view of Huddy (U.S. 2020/0115900).
Regarding claims 1-17, Wambaugh teaches a wood substrate (e.g., OSB) bearing a cementitious coating of, e.g., magnesium oxychloride (as in claims 9 and 16), to provide fire resistance and stability in hot water (see abstract, [0039], [0100]). Although the cementitious coating is not explicitly disclosed as being applied on both sides, given that the coating is disclosed as providing fire resistance and hot water stability, it would have bene obvious to have provided the coating on both major surfaces of the wood board in order to provide fire resistance to the major surfaces of the board (instead of just one side) as in claim 6.
Wambaugh does not disclose that the epoxy silane species is applied to the wood substrate between the wood and the cementitious layer and/or is added to the cementitious coating. However, Tanaka is also directed to coatings that improve resistance and teaches that epoxy functional silane coupling agents, like the elected species (and as in claims 3, 8, and 12), provide chemical/solvent resistance and also improve adhesion to wood and cement and may be applied to the surface of wood ([0001], [0006]). Furthermore, the Mechanical Properties NPL document is also directed to fire resistant cementitious compositions and discloses that epoxy functional silane coupling agents, like the elected species (KH560 is glycidoxypropyltrimethoxyslane, as in claims 3, 8, and 12), can improve fire, heat and smoke resistant properties when mixed into magnesium oxychloride based cementitious slurry compositions (see abstract, and pages 12-13).
Thus, it would have been obvious to have used the elected silane coupling agent as a surface treatment (thereby forming an interface binding layer) on the wood substrate in Wambaugh as taught by Tanaka to provide chemical/solvent resistance and also improve adhesion (to the subsequently applied cementitious coating), with such benefits further rendering obvious the amount of such a silane coupling agent in the surface treatment layer as part of the routine optimization of the degree of such benefits imparted to the wood substrate, as in claims 4-5. Furthermore, for the same reasons discussed above regarding providing the cementitious coating to both sides of the wood board in Wambaugh, it would likewise be obvious to apply the surface treatment from Tanaka to both sides of the wood (prior to applying the cementitious coating) in order to provide the chemical/solvent resistance and also improve adhesion to both surfaces of the wood that will receive the cementitious coating.
It is further obvious in view of the NPL document to have added epoxy silane, (as in claims 3, 8, and 12), to the cementitious coating composition/slurry of Wambaugh in order to improve the fire, heat and smoke resistant properties with such benefits further rendering obvious the amount of such a silane coupling agent in the cementitious layer as part of the routine optimization of the degree of such benefits imparted to the cementitious layer, as in claims 13-14.
Modified Wambaugh does not disclose using the particular species of wood as in claims 2, 7, and 15 for forming the wood board. However, this would have been obvious to one of ordinary skill in the art based on whatever wood species is most available in the close proximity of the manufacturing facility (to reduce transportation costs). In addition to this independently being obvious as explained above, Freeman is also directed to wood board articles and discloses that southern yellow pine was a known suitable wood species for forming OSB ([0133]) as sought by Wambaugh such that use of this species would have been obvious in Wambaugh based on its disclosed suitability for forming the desired wood board.
Modified Wambaugh does not disclose that the cementitious coating is disposed onto the wood substrate via a carrier veil web as in claims 10 and 17. However, this appears to be an immaterial product by process limitation, related only to how the cementitious coating is applied to the wood substrate, and thus does not carry patentable weight because the final product (cement coated wood substrate) would be the same regardless of how the coating is disposed on the substrate. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113.
Even if this limitation was given patentable weight, arguendo, Huddy is also directed to cementitious coatings as fire resistance improvers for wood substrates (see abstract, [0024]) and discloses carrier veil web deposition is a known application method for such cementitious coatings ([0070]), such that use of a carrier veil web to apply the cementitious coating in modified Wambaugh would have been obvious as a known application method as taught by Huddy.
Huddy also confirms the obviousness of applying a fire resistant cementitious coating to both sides of a wood substrate (see abstract, [0024]), as already discussed above.
Conclusion
References cited in any corresponding foreign applications have been considered but would be cumulative to the above. Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B NELSON whose direct telephone number is (571)272-9886 and whose direct fax number is (571)273-9886 and whose email address is Michael.Nelson@USPTO.GOV. The examiner can normally be reached on Mon-Sat, 7am - 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300 (faxes sent to this number will take longer to reach the examiner than faxes sent to the direct fax number above).
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/MICHAEL B NELSON/
Primary Examiner, Art Unit 1787
Prosecution Insights