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 Invention I, Claims 1 - 10 in the reply filed on January 28, 2026, is acknowledged.
Claim 14 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 28, 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Response to Amendment
Applicant’s amendment to the claims filed on January 28, 2026, has been entered. Claims 1 – 5, and 9 are currently amended. Claims 21 – 23 are new. Claims 14 – 20 are withdrawn. Claims 11 – 13 are canceled. Claims 1 – 10, and 21 – 23 are pending and under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 15, 2026, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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.
Claims 1 – 10, and 21 – 23 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 contains the trademark/trade name Viscograph®-E, Claims 5, and 9 contains the trademark/trade name Brookfield® . Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name(s) is/are used to identify/describe a Viscograph®-E instrument, and the Brookfield® viscometer method and, accordingly, the identification/description is indefinite.
Claims 2 – 10, 21 – 23 are rejected as indefinite based in their direct/indirect dependent status from a rejected claim.
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claim(s) 1 – 10, and 21 – 23 are rejected under 35 U.S.C. 103 as being unpatentable over SANG et al. (US 2014/0113128 A1), in view of Li et al. (US 2016/0376191 A1).
Regarding claim 1, SANG et al. teaches a gypsum board comprising [0002]:
a set gypsum core disposed between two cover sheets [0002, 0006], the core formed from a slurry comprising stucco, water, and at least one pregelatinized (comprising “any degree of gelatinization”, “partially gelatinized” [0006, 0020], , TABLE 5), chemically modified, non-substituted starch (e.g., SAND et al. discloses the use of Clinton®-260 (ADM), Supercore® S23F (GPC), Clinton® 444 (ADM), [0021]) having a peak viscosity of from about 120 Brabender® Units (BU) to about 900 Brabender Units (e.g., 61.43 BU for Clinton® 277, 204.76 BU for Clinton® 260, 314.29 BU for Clinton® 240, 2447.62 BU for Clinton® 106, see TABLE 5 and [0147], SANG discloses viscosity measurements could be converted from other units e.g., cP to BU by the following formula cP = BU x 2.1) when the viscosity is measured by putting the starch in a slurry with water at a starch concentration of 15% solids, and using a Viscograph®-E instrument set at 75 rpm and 700 cmg (see [0006, 0023, 0147]),
where the starch is heated from 25 °C to 90 °C at a rate of 5 °C/minute, the slurry is held at 90 °C for ten minutes, and the starch is cooled to 80 °C at a rate of -5 °C/minute [0144],
wherein the at least one chemically modified, non-substituted starch is included in the slurry in a weight percentage of total starch content in the slurry that is greater than 30% ([0033] “a percentage of total starch content to be added to gypsum slurry can be, e.g., at least about 10% by weight, such as at least about 20%, at least about 30%, at least about 40%, at least about 50%, at least about 60%, at least about 70%, at least about 80%, at least about 90%, at least about 95%, at least about 99%, at least about 100%, or any range in between)”);
wherein the gypsum board has a density of about 35 pcf or less (see [0055, 0083-0087]); and
wherein the gypsum board has a strength such that the gypsum board has a nail pull resistance of at least about 70 lb. according to ASTM Standard C473-10, Method B, when the gypsum board is cast at a thickness of ½ inch (see [0043, 0103-0105]).
SANG et al. does not specifically disclose the starch being uncooked in the set gypsum core formed from a slurry comprising stucco, water, and at least one chemically modified, non-substituted starch, and where the starch is heated from 25 °C to 95 °C at a rate of 3 °C/minute, the slurry is held at 95 °C for ten minutes, and the starch is cooled to 50 °C at a rate of -3 °C/minute.
SANG et al., however, discloses the use of commercially available starches supplied without gelatinization (uncooked) [0161] (e.g., Clinton® 260 (ADM)), in similar if not identical composition percentages, see [0033]), which is the same commercially available starch disclosed as an uncooked, chemically modified, non-substituted starch by the Applicant in Example 1, [0125] of the instant application and thus, it would inherently have similar properties. Furthermore, it is noted that SANG et al. discloses that the starch could comprise a “combination of starches may be pre-mixed (e.g., in a dry mix, optionally with other components such as stucco, etc., or in a wet mix with other wet ingredients) before addition to the gypsum slurry, or they can be included in the gypsum slurry one at a time, or any variation thereof.” [0033], and that, “In some embodiments, the pregelatinized starch is not fully gelatinized, even upon exiting the kiln so long as the starch meets the mid-range viscosity characteristic when under the conditions according to the VMA method.” [0024], in some embodiments, “the slurry comprises a second type of starch that is (a) not gelatinized” [0088]. SANG further discloses that the starch could comprise any degree of pre-gelatinization (under the broadest reasonable interpretation, “any degree” is being interpreted as any degree of gelatinization over 0%), which overlaps with Applicant’s definition of “uncooked” as disclosed in paragraph [0037] of the instant application and cited for reference bellow:
“As used herein, uncooked means that the starch has a degree of gelatinization of less than about 5% (e.g., less than about 3%, or less than about 1%, such as zero) before being included in the gypsum slurry.”
Therefore, the claimed physical properties (e.g., peak viscosity at the claimed conditions “where the starch is heated from 25 °C to 95 °C at a rate of 3 °C/minute, the slurry is held at 95 °C for ten minutes, and the starch is cooled to 50 °C at a rate of -3 °C/minute”, density, board strength) implicitly would have been achieved by the gypsum board as claimed and rendered obvious (MPEP 2112.01(I,II)).
Like SANG et al., Li et al. discloses a composite gypsum board comprising a board core comprising set gypsum formed from at least water, stucco, and optionally, an enhancing additive, the board core defining first and second core faces in opposing relation [0007], wherein the enhancing additives can include uncooked starches, or pregelatinized starches, which are generally preferred over acid-modifying migrating starches which generally provide paper-core bond enhancement but not core strength enhancement [0101-0102].
Li et al. discloses that due to their low viscosity in water uncooked starches are selected because they are easy to mix with water, and can be selected over pregelatinized (cooked), since pregelatinized starches can sometimes cause “fish eye,” which is a condition that is characterized by one or more large lumps that form in the water solution during mixing. “Uncooked starches are believed to avoid the fish eye condition because of their cold water insolubility, which results in the separation of starch granules.” [0107-0108].
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected at least one uncooked, chemically modified, non-substituted starch (e.g., SANG Clinton® 260 and/or 240) in the slurry to form the set gypsum core in the gypsum board of SANG et al., as an enhancing additive and to avoid/prevent a fish eye condition, as suggested and taught by Li et al., since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. See MPEP § 2144.07: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 2, SANG/Li teaches the gypsum board of claim 1, except for explicitly disclosing, wherein the uncooked chemically modified, non-substituted starch has a bulk density of from about 40 pcf to about 45 pcf.
SANG, however, discloses the same commercially available uncooked chemically modified, non-substituted starch (e.g., Clinton® 260 (ADM)) and thus, has similar properties. Therefore, the claimed physical properties (e.g., bulk density) implicitly would have been achieved by the uncooked chemically modified, non-substituted starch in the gypsum board of SANG/Li as claimed and rendered obvious. It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 3, SANG/Li teaches the gypsum board of claim 1, except for explicitly disclosing, wherein the uncooked chemically modified, non-substituted starch has a peak viscosity of from about 300 BU to about 875 BU.
SANG, however, discloses the use of the same commercially available uncooked chemically modified, non-substituted starches used by the Applicant (e.g., Applicant’s disclosure at paragraph [0128] discloses Clinton® 240, Clinton® 277, and Applicant’s paragraph [0133] discloses Clinton® 260), which SANG discloses are staches having densities around 61.43 BU for Clinton® 277, 204.76 BU for Clinton® 260, 314.29 BU for Clinton® 240, 2447.62 BU for Clinton® 106, see TABLE 5 and [0147], SANG discloses viscosity measurements could be converted from other units e.g., cP to BU by the following formula cP = BU x 2.1).
Therefore, the claimed physical properties (e.g., peak viscosity) implicitly would have been achieved by the uncooked chemically modified, non-substituted starch in the gypsum board of SANG/Li as claimed and rendered obvious. It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 4, SANG/Li teaches the gypsum board of claim 1, wherein the uncooked chemically modified, non-substituted starch is acid-modified (SANG [0178]).
Regarding claim 5, SANG/Li teaches the gypsum board of claim 1, except for explicitly disclosing, wherein the uncooked chemically modified, non-substituted starch has a cold water viscosity of less than about 50 centipoise, as measured according to the Brookfield viscometer method.
SANG, however, discloses the use of the same commercially available uncooked chemically modified, non-substituted starches used by the Applicant (e.g., Applicant’s disclosure at paragraph [0128] discloses Clinton® 240, Clinton® 277, and Applicant’s paragraph [0133] discloses Clinton® 260), which are disclosed by SANG (e.g., Clinton® 277, Clinton® 260, Clinton® 240, Clinton® 106, see TABLE 5 and [0147]).
Therefore, the claimed physical properties (e.g., a cold water viscosity of less than about 50 centipoise, as measured according to the Brookfield viscometer method) implicitly would have been achieved by the uncooked chemically modified, non-substituted starch in the gypsum board of SANG/Li as claimed and rendered obvious. It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01.
Regarding claim 6, SANG/Li teaches the gypsum board of claim 1, wherein the slurry further comprises a dispersant (SANG [0044]).
Regarding claim 7, SANG/Li teaches the gypsum board of claim 1, wherein the slurry further comprises a polyphosphate (SANG [0048]).
Regarding claim 8, SANG/Li teaches the gypsum board of claim 7, wherein the polyphosphate is sodium trimetaphosphate, and the slurry further comprises a dispersant (SANG [0048-0049] “Sodium trimetaphosphate (STMP) is preferred”).
Regarding claim 9, SANG/Li teaches the gypsum board of claim 1, wherein the uncooked, chemically modified, non-substituted starch has a bulk density of from about 35 pcf to about 45 pcf (see the discussion of claim 2 above), the uncooked chemically modified, non-substituted starch is acid-modified (see SANG TABLE 4 and TABLE 5), the uncooked chemically modified, non-substituted starch has a cold water viscosity of less than about 50 centipoise, as measured according to the Brookfield viscometer method (see the discussion of claim 5 above), and the board has a density of from about 16 pcf to about 35 pcf (SANG [0055, 0132]).
Regarding claim 10, SANG/Li teaches the gypsum board of claim 9, wherein the board has a nail pull resistance of at least about 72 lb.-f according to ASTM 473-10, method B (SANG [0054, 0057, 0104]).
Regarding claim 21, SANG/Li teaches the gypsum board of claim 1, wherein the at least one uncooked, chemically modified, non-substituted starch is included in the slurry in a weight percentage of total starch content in the slurry that is greater than 90% ([0021] “The starch can be in the form of a flour (e.g., corn flour) containing starch, such as flour having at least about 75% starch by weight of the flour, e.g., at least about 80%, at least about 85%, at least about 90%, at least about 95%, etc.).”).
Regarding claim 22, SANG/Li teaches the gypsum board of claim 1, except for, wherein the slurry does not include a pregelatinized starch.
Li et al. discloses that due to their low viscosity in water uncooked starches are selected because they are easy to mix with water, and can be selected over pregelatinized (cooked), since pregelatinized starches can sometimes cause “fish eye,” which is a condition that is characterized by one or more large lumps that form in the water solution during mixing. “Uncooked starches are believed to avoid the fish eye condition because of their cold water insolubility, which results in the separation of starch granules.” [0107-0108].
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have selected at least one uncooked, chemically modified, non-substituted starch (e.g., SANG Clinton® 260 and/or 240) in the slurry to form the set gypsum core in the gypsum board of SANG et al., so that the slurry does not include a pregelatinized starch, to avoid/prevent a fish eye condition from any pregelatinized starch, as suggested and taught by Li et al., since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. See MPEP § 2144.07: Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 23, SANG/Li teaches the gypsum board of claim 1, except for explicitly disclosing, wherein the at least one uncooked, chemically modified, non-substituted starch is a non-migratory starch.
SANG, however, discloses the use of the same commercially available uncooked chemically modified, non-substituted starches used by the Applicant (e.g., Applicant’s disclosure at paragraph [0128] discloses Clinton® 240, Clinton® 277, and Applicant’s paragraph [0133] discloses Clinton® 260), which are disclosed by SANG (e.g., Clinton® 277, Clinton® 260, Clinton® 240, Clinton® 106, see TABLE 5 and [0147]). Furthermore, one of ordinary skill in the art would have been motivated to use a non-migratory starch, since Li et al. discloses that “Preferred starches, whether cooked or uncooked, are different than acid-modified migratory starches which do not confer the same strength properties and are used in the art for paper-core bond enhancement as they migrate to the paper-core interface due to their smaller chain lengths” [0103].
Therefore, the claimed physical properties (e.g., non-migratory) implicitly would have been achieved by the uncooked chemically modified, non-substituted starch in the gypsum board of SANG/Li as claimed and rendered obvious. It has been held that when the claimed and prior art products are at least substantially identical, claimed properties are presumed to be inherent. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01.
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 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 10 of copending Application No. 18/804,420 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because, as is, claim 1 of the instant application encompass all of the limitations of the independent claim 1 of the reference application, and it would have been obvious to one of ordinary skill in the art to combine the limitations of dependent claims to provide the resulting product with the presumed benefits of the further limitations and because the courts have held the selection of a known material (e.g. the uncooked, chemically modified, non-substituted starch in claim 1 of the instant Application No. 18/804,424, as the uncooked starch of the reference Application No. 18/804,420) based on its suitability for its intended use (e.g. as an uncooked, chemically modified, non-substituted starch of the instant Application No. 18/804,424) supported a prima facie obviousness determination.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US Pat. No. 5,641,349: Col. 7 lines 20 – 40 “When the thermally-inhibited starches and flours are non-pregelatinized granular starches or flours, the starches or flours exhibit an unchanged or reduced gelatinization temperature. In contrast, most annealed and heat/moisture treated starches show an increased gelatinization temperature. Chemically-crosslinked starches show an unchanged gelatinization temperature. It is believed the overall granular structure of the thermally-inhibited starches and flours has been altered.”
US PGPub. 2005/0223949 A1: [0022] As used herein, the term "gelatinization" refers to the irreversible physico-chemical change of a starch composition wherein the starch granules swell upon the addition of a solvent and heat. Gelatinization onset is illustrated at the point when the viscosity of the starch slurry composition initially increases upon the addition of heat. [0023] As used herein, the term "acid modified starch" refers to a class of starches that have properties that have been chemically and/or physically altered through the addition of an acid to perform degradative attacks on the starch molecule. The principle objective of acid modification is to decrease the molecular weight of the starch by breaking the starch chains and to reduce the hot paste viscosity; thus the term "thin-boiling" starch. [0024] As used herein a "Brabender micro visco amylograph" is a measuring devise to determine the viscosity profile of a starch slurry at a given percent solids by measuring viscosity relative to time at a given start temperature, temperature rate increase/decrease, concentration, speed (rpm), and measuring range (cmg). The Brabender micro visco amylograph is commercially available from C. W. Brabender, South Hackensack, N.J. The test parameters set forth in the general operating procedures (Example 7) and in FIGS. 3-6, are the parameters that were employed to generate the viscosity profiles set forth herein and in the claims. [0025] As used herein the phrase "nail pull" refers to an industry measure of strength, typically measured in pounds, for the amount of force required for the board to be pulled over the head of the nail. A typical nail pull value for gypsum wallboard is in the range of 65 to 85 pounds of force.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDGAREDMANUEL TROCHE whose telephone number is (571)272-9766. The examiner can normally be reached M-F 7:30-5:30.
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/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742