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 .
Election/Restrictions
Applicant’s election without traverse of Species group I(b) wherein the starch comprises the unmodified starch and the acid modified starch (claim 3) and Species group II(a) wherein the acid modified starch has a peak viscosity of between about 200 BU to about 800 BU (claim 7) in the reply filed on 06/18/2026 is acknowledged.
Claims 2, 4, 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/18/2026.
Priority
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 under 35 U.S.C. 120 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).
The disclosure of the prior-filed applications, Application No. 18/321,035 and Application No. 14/575,867, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, there is no support in prior-filed applications for the limitation in claim 1 of wherein the starch comprises an unmodified starch and a chemically modified starch, an acid modified starch, or a mixture thereof.
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.
Claims 1, 5-7, 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al. (US 2014/0113124).
Regarding claims 1 and 3, Sang et al. teaches a gypsum board, comprising: a gypsum core formed from a gypsum slurry having a composition comprising water, stucco and at least one pre- gelatinized starch (paragraph [0006]) and foaming agent (paragraph [0028]). The pre-gelatinized starch can include acid modification (paragraph [0014]). The gypsum slurry may include other types of starches including pregelatinized corn starch (paragraph [0027]), i.e. unmodified starch.
Given the overlap between the gypsum board of Sang et al. and that presently claimed, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a gypsum board that is both disclosed by Sang et al. and encompassed by the present claims and thereby arrive that the claimed invention.
Regarding claim 5, Sang et al. teaches wherein the gypsum board exhibits a nail pull resistance of at least 65 lb in accordance with ASTM C 473 (paragraph [0043]) which encompasses the claimed range of from about 68 lbf to about 91 lbf. 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); see MPEP 2144.05.
Regarding claims 6 and 7, given that Sang et al. teaches starch identical to those presently claimed, the starch would necessarily have a peak viscosity, as presently claimed, absent evidence to the contrary.
Regarding claim 15, Sang et al. teaches further comprising the slurry used to make the gypsum core is disposed between a first cover sheet and a second cover sheet (paragraph [0008]) which meets a first facing material positioned on the front side of the gypsum core and a second facing material positioned on the back side of the gypsum core.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al. (US 2014/0113124) in view of Xu et al. (US 2012/0207989).
Sang et al. is relied upon as disclosed above.
Regarding claims 16 and 17, Sang et al. fails to teach starch content as claimed.
However, Xu et al. teaches a gypsum board (See Abstract, paragraph [0002]) comprising a gypsum core (paragraphs [0023]-[0024] and [0073]-[0075]) comprising stucco (paragraph [0024]) and acid-modified, non-substituted starch (paragraphs [0053] and [0087]) wherein the gypsum core inherently has a front side, a back side, and a center core between the front and back sides.
While Xu et al. does not explicitly disclose a ratio as claimed, Xu et al. does disclose wherein the gypsum core has a starch content at the front and back sides of the gypsum core that is higher than the starch content in the center core in order to enhance nail pull resistance (paragraph [0053]). Since the instant specification is silent to unexpected results, the specific ratio of starch content is not considered to confer patentability to the claims. As the nail pull resistance is a variable that can be modified, among others, by adjusting the ratio of starch content, the precise ratio would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed ratio cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the ratio of starch content in Xu et al. to obtain the desired nail pull resistance (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claim 18, Sang et al. fails to teach gypsum board having a weight as claimed.
However, Xu et al. teaches gypsum board having a weight of from about 1100 lbs/MSF to 1500 lbs/MSF (paragraph [0036], Table 4) which overlaps the claimed range of about 1255 lbs/MSF to about 1478 lbs/MSF. 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); see MPEP 2144.05.
It would have been obvious to one of ordinary skill in the art to choose a weight for the gypsum board of Sang et al. in order to accept a desired load (Xu et al., paragraph [0016]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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