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 with traverse of Claims 1-8 in the reply filed on 05/08/2026 is acknowledged. The traversal is on the ground(s) that the search is not burdensome and that the USPTO has examiner application containing multiple sets of claims in the past. This is not found persuasive because this is a merely a broad statement and not actual evidence. No details are provided other than this blanket statement. The examiner maintains, as was stated in the restriction, that the combination does not require all of the particulars of the subcombination and that the subcombination has a separate utility. Furthermore, the product could be made without attaching the support structure attachment portion to a framing element
The requirement is still deemed proper and is therefore made FINAL.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/08/2026.
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.
Claim 3 is 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.
Claim 3 recites the limitation "the first projection" and “the second projection”. There is insufficient antecedent basis for these limitations in the claim.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5, and 6 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Ipsen (WO 9817881).
In re Claims 1, Ipsen teaches a building surface product comprising: a substantially planar plasterboard panel having a front surface (2), a rear surface (1), a first side, a second side, a first end, and a second end. Plasterboard has a gypsum body between the front surface and the rear surfaces. Ipsen teaches and a first press-in fastener (9) positioned on the rear surface of the substantially planar panel, the first press-in fastener comprising: a mending plate portion comprising a plurality of prongs inserted into the rear surface of the substantially planar panel, and a support structure attachment portion. (Figures 3,4, annotated Figures)
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In re Claims 2-3, the examiner notes that the first and second projections with their angled faces are not clearly identified. Figure 1c of the specification does show angled surfaces that extend along the first and second sides of the panel. Therefore, Ipsen teaches, that the panel includes a first projection extending along the first side of the panel and positioned at the front surface of the panel, and a second projection extending along the second side of the panel and configured to fit behind a first projection of a neighboring panel. These first and second projections are as much projections as those shown in the instant application. The first projection has an angled rear face, and the second projection has an angled front face. (Figures 3,4, annotated Figures)
In re Claims 5, Ipsen teaches the support structure attachment portion of the first press-in fastener (9) extends upward from the mending plate portion of the first press-in fastener. (Figures 3,4, annotated Figures)
In re Claims 6, Ipsen teaches that the support structure attachment portion extends above an upper edge of the rear surface of the planar panel. (Figures 3,4, annotated Figures)
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.
Claim(s) 4, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ipsen (WO 9817881).
In re Claim 4, Ipsen has been previously discussed. As is shown in Figures 3 and 4, the fasteners (9) extend from a first side but are not shown as being found extending to the second side. Therefore, it is clear that come portion of the panel from the interior to the rear surface to the second side is free of fasteners. However, it is not clear if that fastener free area extends from the panel centerline to the second side. However, this would be obvious to one of ordinary skill in the art, prior to the filing date of the invention since the fastener (9) is shown to be mostly near the first side. That fastener not extending to or even beyond the centerline depends on the size of the panel itself.
However, changes in size, shape, and proportion which have been held to involve only routine skill in the art. In re Rose, 105 USPQ 137; In re Dailey, 149 USPQ 47 (CCPA 1966); In re Reese, 129 USPQ 402. Gypsum panel/drywall/plasterboard is a lightweight material and it would be obvious for the panel to be of a size where the fastener is only at one side of the panel. As the panel is lightweight, it could be of sufficient size to cover an area of wall space such that the fastener is only along this one side and the area between the center of the panel and the second side is fastener free.
In re Claim 7 and 8, Ipsen has been previously discussed but does not teach that the push-out strength of the building surface product at the center and seam are at least about 150 pounds. It would have been obvious to one having ordinary skill in the art made to have the push-out strength of the board at the center and seam are at least about 150 pounds, since it has been held that where the general conditions of a 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 233. Having the pushing strength of the building surface product be at least 150 pounds at the center and the seam would assure a durable, smooth, and continuous surface arrangement of panels that maintain their positioning.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM G BARLOW whose telephone number is (571)270-1158. The examiner can normally be reached Monday - Friday, 9:00 am-4:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Glessner can be reached at (571) 272-6754. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM G BARLOW/ Examiner, Art Unit 3633
/BRIAN E GLESSNER/ Supervisory Patent Examiner, Art Unit 3633
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