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 .
Specification Objection
The use of the term ”1-C Stucco”, (for example Table 1 of the instant Specification) appears to be a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-20 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.
The term “workability composition” is not defined and results in a claim set that is indefinite. The workability composition is not defined as organic or inorganic, etc. The applicant attempts to claim a composition by its functionality / properties it may impart. One of ordinary skill in the art at the time of filing the invention would recognize that many chemicals/additives possess multifunctionality making the claim indefinite as to whether a single additive may meet more than one limitation. For example, an air entraining agent also affords workability, etc. Applicant recognizes same in the instant specification [0012] such as limestone and/or dolomitic rock may comprise one or more metal carbonates, one or more silicates, combinations [0018] cellulose ether provides enhanced workability [0030] air entraining agents enhance workability [0036] Affording the claims the broadest reasonable interpretation in view of the specification, it appears applicant intends to claim an inorganic filler of some sort such as quartz, dolomite, lime limestone calcium carbonate and silicates as the workability composition; however, the examiner cannot read these limitations into the claims.
“workability” is referred to in par. [0010] of the instant specification as a composition that enhances the workability and/or smoothness properties of a plaster composition and ease with which the composition is placed, shaped floated and/or tooled. These parameters are relative and not defined – there is no comparative or specification as to “enhancing”, “smoothness” “ease of placement” “ease of shaping” etc. The term “workability composition” in the claims such as in claims 1, 16 and 17 is a relative term which renders the claim indefinite. The term “workability composition” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu Opsommer (WO 2020/152335A1) further in view of CN 108546009a SU LU et al or in the alternative further in view of Yu et al US 2006/0243171A1
Regarding Claims 1-16;
Wu Opsommer (WO 2020/152335A1) discloses a composition building material such as a gypsum-based composition (P 1 L1-8)
Wu discloses a composition comprising a binder plaster optionally cement; a porous calcium silicate aggregate in the binder where the aggregate includes lime, as well as functional additives, functional fillers, etc. (See claim 1 reference) The calcium silicate aggregate is 0.5 to 85 % of the total composition (see claim 2 reference)
Functional additives include ethyl cellulose, methyl cellulose, starch, air entrainer 0.1 to 5 wt.% (See claim 11 of reference)
The product has a density of 500 kg/m3 to 1500 kg/m3 (see claim 15 reference)
A product formed from a plaster slurry is taught (P6 L17-24) (meeting the limitation for a plaster composition)
The composition comprises a cellulose ether in a range of up to 5 wt.% (i.e. meeting the limitation for a binder and cellulose polymer binder of the instant claims including claims 1, 6-8, and 16 -17 noting binder as defined in instant specification)
The composition comprises a binder (P7 L5-10) (see claim 1 of reference meeting claim 1 and 7 and 16 for a binder ) and cement is 0- 50 % of the binder (see claim 2 of reference)
The composition comprises hydrated calcium silicate in a range of 0.5 to 85 wt.% or 0.05 to 10 wt. % The composition may compress water with a water: solid ratio above 0.5 or between 0.55 and 20 The composition may be shaped (P7 L8-22 i.e. it is workable) The calcium silicate has a mean diameter between 20-150 micrometers (See claim 6 reference)(meeting the limitation for a workability composition)
The mixture of hydratable calcium sulfate is referred to a plaster slurry (P8 L2-8) and comprises 10-95 wt.% hydratable calcium sulfate and optionally cement (P8 L7-11)
The settable mixture also comprises water and mixture comprises no free water (P8 L11-20 i.e. not slaked)
Slaked//hydrated lime is not required thereby overlapping the claim limitations for slaked in in less than about 20%or substantially free
The composition comprises additives for example functional fillers, cellulose ether, foaming agents, fluidizers, fillers, setting accelerators/retarders, (meeting claim 9) pigments, anti-sagging agent, rheology controller, endothermic additive, rheological agents (meeting the limitation for a thickener of claims 11 et seq) , water repellant in amounts of 0.1 to 5 wt.% (P10 L1-33) air entrainers, (see claim 11 of reference) (meeting claims 17 and 20)
The hydraulically setting composition comprises functional additives such as filers, retarders, rheology controllers and agents, water repellants in amounts of 0.1 to 5 wt.% the fillers include expanded perlite, exfoliated vermiculate, expanded clay, pumice, and calcium hydroxide and their carbonates (i.e. calcium carbonate and combinations thereof) (P10 L12-25)
The cellulose ether in amounts of up to 5 wt.% (P10 L22-28) including commercially available such as from Dow Methocel and Ethocel (P10 L25-33) (overlapping the claimed viscosity of claim 13)
The composition may comprise starch to improve adhesion (P11 L16-25)
In particular embodiments, the gypsum matrix may comprise starch The starch may be natural starch or a starch derivative such as a substituted starch The starch may be derived from e.g. potato, tapioca, or corn. starch es are often used to improve the adhesion of a facer to the gypsum matrix (P11)
The material woks in large range of densities including 500 kb/m3 and 1500 kg/m3 or between 700 – 1200 kg/m3 (P11 L25-30) (overlapping the range of claims 3 and 19)
In addition to the binder, the non-woven fabric may further comprise one or more fillers, preferably mineral fillers. Suitable fillers include calcium carbonate, calcium sulfate (anhydrite, hemihydrate, or dihydrate), clay (e.g. kaolin), sand, talc, mica, glass powder, titanium dioxide, magnesium oxide, alumina, alumina trihydrate, silica, silicate, and carbon. The dimensions of the filler are typically such that it substantially penetrates into the fibrous mat. For example, the mineral filler could be particles that have a volume-basis median particle size (d.sub.5o) from about 0.1 pm to about 10 pm, preferable about 0.5 pm to 5 pm. (P12 L27-P13L3)
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(P12) (rendering obvious to one of ordinary skill in the art at the time of filing the invention to use particles with the median particle size for all fillers including those not in the non-woven portion of the composition)
Plaster / hydratable calcium sulfate CaSO.sub.4 H.sub.2O Plaster is obtained from the calcination of calcium sulfate dihydrate (P7 L30-35) (P7 L22-33)
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The amounts/ranges disclosed by Wu encompass and/or overlap the instantly claimed ranges as to wt.%, density, particle size, etc. Wu discloses the amounts with the use of “about are +/- 10 % (P6 L30-36)(as such the ranges of the prior art overlap and/or encompass the instantly claimed ranges as more fully below set forth) See MPEP 2144.05(I): "In the case where the claimed ranges "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)"
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
The examiner maintains the particulate will function as a workability composition as it is a particulate. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990) “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)
The limitations of claim 4 are process limitations. Since the prior art teaches the claimed particle size distribution, the product of the prior art is what determines patentability and not how it is formed. MPEP 2113 "[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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)The examiner maintains that one of ordinary skill in the art at the time of filing of the invention would try to form the particulate by milling or grinding as these are among the most well known means for forming particulate.
No slaked lime or dolomitic slaked lime is required (meeting claims 5-6)
Further Regarding Claims 1-16
While Wu teaches various compositions, it does not expressly disclose stucco.
Wu teaches a mean particle range which may overlap and encompass the claimed median particle range; nonetheless, assuming arguendo it does not, the examiner notes that the median particle range is known to affect workability and the instantly claimed ranges are known by those of ordinary skill in the art at the time of filing the invention:
CN 108546009A SU LU et al discloses a slurry mixture of CaCO3 multi scale grain consisting of not hydrated granules and comprises 1-5% nano limestone and 5- 20 % limestone power, 50-80 % superfine ore residue, 5-40% activator and 1-3 % water reducing agent and water may be added to forma slurry. The nano limestone is median particle diameter 2- 1 microns and less than 0.3 microns two kinds of particle size ranges, the medina particle diameter of the composite and limestone is 9-13 microns and has high fluidity and good dispersibility (Abstract)
The composition includes at last one water reducing agent such as calcium lignosulfonate sodium naphthalene high efficiency water reducing agent, aliphatic high efficiently water reducing agent and poly carboxylic acid high efficiency water reducing agent (Claim 5 reference)
The particles are wet milled ground (P 4 translation further establishing that it is well known to mill particles)
The composition is a high performance mixture providing high fluidity and good dispersibility no shrinkage early strength (Abstract)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to add filer such as calcium carbonate/lime/limestone in the median particle size and wt. % of SU LU to the composition of Wu as it will further impart improved properties such as high fluidity and disperse ability.
Yu et al US 2006/0243171A1 discloses a gypsum composition having a median particle size of 0.5 microns to about 2 microns and calcium sulfate dihydrate water and an additives of a phonic phosphate and mixtures thereof (Abstract) Set gypsum is well known and included and many plaster compositions [0002] [0010] [0017] as well as in stucco [0012] The median particle size range affects workability [0015] [0058]
It would have been obvious to one of ordinary skill int eh art at the time of filing the invention to use the median particle size range of Yu in the composition of Wu to provide workability thereto and to form a plaster and stucco composition thereof as taught by Yu.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wu Opsommer (WO 2020/152335A1) further in view of CN 108546009a SU LU et al or in the alternative further in view of Yu et al US 2006/0243171A1 as applied to claims 1-16 above further in view of Fornatora et al (US 2007/0068424)
Regarding Claims 17-20:
Modified Wu teaches the limitations above set forth. Wu teaches an air entrainer additive but does not specify a carbon chain length of about 8 to about 24 carbons.
Fronatora discloses a stucco plaster composition (Abstract [0007][0014] ) comprising an air entraining additive of Hostapur OSB a C16 alpha olefin sulfonate which is commercially available and provide increased freeze thaw durability and is more workably than non-entrained stucco [0024](within the claimed carbon range)
It would have been obvious to one of ordinary skill in the art at the time of filing the invention to use the commercially available air entrainer additive in the plaster stucco composition of Wu as taught by Fronatora as it will impart improved workability and is readily commercially available for use in plaster stucco compositions.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 accompanying this office action. For example:
Hargis et al (US 2022/0340486) published 10/27/2022 with an effective filing date of 4/19/2021 and no common inventors or assignees: Hargis discloses plaster comprising a composition [0399] having a low density [0399] the composition Air entrainment increases workability of the mix and reduces segregation and blending [0370] workability agents include water reducers and certain finely divided admixtures [0375]The composition includes air entrainers retarders etc. in range of 0.01 to 50 wt.% [0377] Kuo et al (2016/0340248) Kuo discloses a composition for controlling air voids in mastics, cement, mortar, masonry etc. (Abstract) the composition comprises oxidized polyalkoxylated polyamine with air entraining agents [0009]-[0011]
For convenience of applicant:
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA HL WEISS whose telephone number is (571)270-7057. The examiner can normally be reached M-Thur 830 am-700 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Coris Fung can be reached at (571) 270-5713. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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