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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant's election with traverse of claims 1-5 in the reply filed on 06/05/2026 is acknowledged. The traversal is on the ground(s) that the International Search Report found unity of invention to be present. This is not found persuasive because the reply does not specifically point out the errors in determining that U.S Patent No. 5,704,555 demonstrates that the shared technical feature of the groups does not make a contribution over the art a priori.
The requirement is still deemed proper and is therefore made FINAL.
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 1-5 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.
Regarding claim 1, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) “for calcining and extruding raw gypsum” in line 1-2, “for raw gypsum” in line 3, and “configured to capture and/or retain water liberated in the calcination zone” in line 17-18, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Further, the phrase “in particular” renders the claim indefinite because it is unclear whether the limitation(s) “already ground raw gypsum” in line 3 and “an orifice” in line 16, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 2, the phrase “in particular” and “like” renders the claim indefinite because it is unclear whether the limitation(s) “a simple inlet port like a nozzle” in line 9 and line 11, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the phrase “in particular” renders the claim indefinite because it is unclear whether the limitation(s) “an overpressure-valve” in line 5-6, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) “5°C and 280°C” in line 4-5, “10°C and 200°C” in line 5, “15°C and 180°C” in line 5, “40°C and 280°C” in line 8, “45°C and 200°C” in line 9, “80°C and 180°C” in line 9, “5°C and 80°C” in line 12, “10°C and 45°C” in line 12, “15°C and 40°C” in line 13, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Further, the phase “in particular” renders the claim indefinite because it is unclear whether the limitation(s) “- to set the temperature of the extrudate in the calcination zone to, and optionally keep at, temperatures of between 5°C and 350°C, preferably 40°C and 280°C, more preferably between 45°C and 200°C, even more preferably between 80°C and 180°C, and- to set the temperature of the extrudate in the mixing zone or at least at the end of the mixing zone to, or optionally keep at, temperatures of between 5°C and 120°C, preferably 5°C and 80°C, more preferably between 10°C and 45°C, even more preferably between 15°C and 40°C” in line 7-13, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase “preferably” renders the claim indefinite because it is unclear whether the limitation(s) “gypsum panels” in line 2, which follows the phrase, is part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections – 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arastoopour (US5704555).
Regarding claim 1, Arastoopour teaches an extruder (Figure 1), comprising at least the following elements:
A) inlet (see annotated Figure 1 below);
B) extruding zone (zone 1 to zone 4 in Figure 1) comprising at least one extruder screw (screw 14; Figure 1) and comprising
B1) a calcination zone (zone 2 in Figure 1; col 9 line 5-7 teaches an example with heating to and maintaining a temperature of 150 °C and where Applicant’s instant disclosure states “set the temperature of the extrudate in the calcination zone to, and optionally keep at, temperatures of between 5 °C and 350 °C” then zone 2 of Arastoopour reaches temperatures that would be capable of performing calcination);
B2) a mixing zone (zone 3 and zone 4; col 3 line 49-53);
the extruding zone comprising one or more temperature setting devices each setting at least a part of the extruder barrel (heaters 12 in Figure 1; col 9 line 5-8);
C) outlet zone (col 7 line 52-54).
Further, Examiner notes that while it is unclear whether the limitations pertaining to raw gypsum and the captured or retained water that is delivered into the mixing zone are required (see 35 USC 112(b) rejection of claim 1 above), the raw gypsum and water are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
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Regarding claim 2, Arastoopour teaches the extruder according to claim 1, wherein it comprises at least one device for supplying solid additives into the inlet A), which can be of any kind known in the art (hopper 11; Figure 1). Examiner notes that solid additives are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
Regarding claim 3, Arastoopour teaches the extruder according to claim 1, wherein it has different pressure zones (col 7 line 16-33).
Regarding claim 4, Arastoopour teaches the extruder according to claim 1, wherein the temperature setting devices are each independently configured to heat the extrudate depending on its position in the extruder to temperatures of between 90°C and 150°C (col 9 line 5-15).
Regarding claim 5, Arastoopour teaches an apparatus or, comprising
- an extruder according to claim 1 (see rejection of claim 1 above), wherein the apparatus does not comprise a calcination device for the raw gypsum other than the extruder (as noted in the rejection of claim 1 above, Applicant’s instant disclosure states “set the temperature of the extrudate in the calcination zone to, and optionally keep at, temperatures of between 5 °C and 350 °C” such that zone 2 of Arastoopour reaches temperatures that would be capable of performing calcination within the extruder). Further, Examiner notes that gypsum (moulded) articles are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
Claim(s) 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamamato (JP2016168699- Machine translation provided herein).
Regarding claim 1, Yamamoto teaches an extruder (Figure 1), comprising at least the following elements:
A) inlet (see annotated Figure 1 below);
B) extruding zone comprising at least one extruder screw (screw 6; Figure 1) and comprising
B1) a calcination zone (see annotated Figure 1 below, “stirring chamber 2 is configured to heat the raw material supplied to the inside to about 160 to 200 ° C. by a heater (not shown)… The heating temperature of the stirring unit 2 is preferably 160 ° C. or more, more preferably 170 to 200 ° C., at which dihydrate gypsum releases crystal water and becomes hemihydrate gypsum”- see pg. 7 and where Applicant’s instant disclosure states “set the temperature of the extrudate in the calcination zone to, and optionally keep at, temperatures of between 5 °C and 350 °C” then stirring chamber 2 of Yamamoto reaches temperatures that would be capable of performing calcination);
B2) a mixing zone (see annotated Figure 1 below);
the extruding zone comprising one or more temperature setting devices each setting at least a part of the extruder barrel (“The heating temperature of the stirring unit 2 is preferably 160 ° C. or more, more preferably 170 to 200 ° C.” and “The feed part temperature of the above-mentioned melt-kneading extruder was set to 190 ° C., the cylinder temperature was set to 180 ° C.”- see pg. 8);
C) outlet zone (die 7 in Figure 1 and see annotated Figure 1 below).
Further, Examiner notes that while it is unclear whether the limitations pertaining to raw gypsum and the captured or retained water that is delivered into the mixing zone are required (see 35 USC 112(b) rejection of claim 1 above), the raw gypsum and water are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
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Regarding claim 2, teaches the extruder according to claim 1, wherein it comprises at least one device for supplying solid additives into the inlet A), which can be of any kind known in the art (supply conveyor 1 in Figure 1). Examiner notes that solid additives are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
Regarding claim 3, teaches the extruder according to claim 1, wherein it has different pressure zones (“The melt kneading extrusion unit 3 is provided with a plurality of vent portions 8. The vent portion 8 is provided by branching the exhaust path to the cylinder 5 of the melt kneading extrusion portion 3. The exhaust path is connected to a vacuum pump 9 so that the inside of the cylinder 5 is vacuumed. The vent portion 8 discharges moisture when the stirred raw material is melt-kneaded and extruded, and removes moisture from the raw material to be melt-kneaded and extruded to obtain the composition”- see pg. 7).
Regarding claim 4, teaches the extruder according to claim 1, wherein the temperature setting devices are each independently configured to heat the extrudate depending on its position in the extruder to temperatures of between 170°C and 200°C (“The heating temperature of the stirring unit 2 is preferably 160 ° C. or more, more preferably 170 to 200 ° C.” and “The feed part temperature of the above-mentioned melt-kneading extruder was set to 190 ° C., the cylinder temperature was set to 180 ° C.”- see pg. 8). Further, Examiner notes that gypsum (moulded) articles are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
Regarding claim 5, Yamamato teaches an apparatus or, comprising
- an extruder according to claim 1 (see rejection of claim 1 above), wherein the apparatus does not comprise a calcination device for the raw gypsum other than the extruder (as noted in the rejection of claim 1 above, Applicant’s instant disclosure states “set the temperature of the extrudate in the calcination zone to, and optionally keep at, temperatures of between 5 °C and 350 °C” such that the calcination zone of Yamamato reaches temperatures that would be capable of performing calcination within the extruder). Further, Examiner notes that gypsum (moulded) articles are considered materials worked upon by the apparatus and, therefore, do not impart patentability to the claim (see MPEP 2115).
Relevant Prior Art
The following is a list of relevant prior not relied upon:
Bayer (US20050113492): Bayer teaches an extruder (extruder 52; Figure 2) comprising an inlet ([0071] The extruder (52) has an intake throat (53) for receiving the byproduct particulates (50), and for receiving respective amounts thermoplastic resin by resin stream (56)), extruding zone (Z1 to Z5) comprising at least one extruder screw (screw 155; Figure 2) a calcination zone (Z1, Z2) and a mixing zone (Z3, Z4; [0071] The extruder then melt mixes the particulates, resin and functionalized compound and forces the resulting resin composition through a die or into a mold (60) resulting in a shaped article (62) (final resin product/article stream (62)) or pellets depending upon the cross-sectional configuration of the die (60)), the extruding zone comprising one or more temperature setting devices each setting at least a part of the extruder barrel ([0071] The extruder (52) (see also FIG. 2) may be a conventional melt extruder for filled thermoplastics and contains conventional heating and cooling controls for maintaining the extruder within a temperature range suitable for melt processing of the composition).
Liu (CN 203128194U- Machine translation provided herein): Liu teaches an extruder (see Figure 1) comprising an inlet (calcined material feeding port 8; Figure 1), extruding zone (preheated extruder charging barrel 4 and calcined extruder 7 in Figure 1) comprising at least one extruder screw (preheating screw 3 and calcining screw 9; Figure 1), a calcination zone (calcined extruder 7; Figure 1), and a mixing zone (preheated extruder charging barrel 4; Figure 1)
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 19 of copending Application No. 18/871,996 (reference application) in view of . Although the claims at issue are not identical, they are not patentably distinct from each other because Reference Application teaches an extruder having a calcination zone and a mixing zone (see claim 19 line 1-2) and a plurality of individual temperature setting elements (see claim 19 line 2-3).
While Reference Application fails to teach an inlet, an outlet, and at least one extruder screw, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to have the extruder of the Reference Application comprise an inlet and outlet to allow for material to go into the extruder and be processed by the extruder for its intended use, as taught by Arastoopour and Yamamato, and for the extruder to comprise a screw, as taught by Arastoopour and Yamamato, to allow for mixing and conveying of the material introduced into and outputted by the extruder.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIELLA MACHNESS whose telephone number is (408)918-7587. The examiner can normally be reached Monday - Friday, 6:30-2:30 PT.
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/ARIELLA MACHNESS/ Examiner, Art Unit 1743
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