DETAILED ACTION
Claim Interpretation
Claims 7 and 8 are objected to because of the following informality: The claims list spacing values 3.8, 6.9, and 6.4 without listing the units of measure. The examiner will assume the units are in centimeters. Appropriate correction is required.
Election/Restrictions
Applicant’s election without traverse of Claims 1-4, 7-9, 13, and 14 in the reply filed on 05/18/2026 is acknowledged.
Claims 5, 6, 10-12, and 15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 05/18/2026.
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.
Claims 1, 8, and 14 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.
Claim 1 requires that the panel is rolled from a first side to a second side into a rolled condition. Incorporating a method step into a product claim is an improper hybrid claim which renders the scope of the claim indefinite due to lack of clarity.
Claim 8 specifies a gypsum stud and requires a full sized panel and also cutting the first and second sheets to form multiple wallboard studs. The claim doesn’t specify what is meant by a full sized panel. Furthermore, Claim 1, specifies retaining intact an opposing one of said first and second facing sheets. If in Claim 8, cuts are made in the first and second sheets to form multiple studs. The claim preamble only specifies one club, not multiple stud. Also, multiple cuts in the first in second sheet to form multiple studs would mean a larger panel has been cut down to form multiple studs. This contradicts the requirement in Claim 1 that requires that the first and second facing sheets remain intact.
Claim 14 specifies that a first spacing of said cuts on said first facing sheet is different from a second spacing of said cuts on said second facing sheet. The applicant has elected the species shown in Figure 8 which is has an outer portion (74) and an inner portion (72). While the inner portion ((72) has cuts on both first and second sheets, those cuts would have to have the same spacing since the hinged sections of inner portion (72) appear to be the same length. The outer portion (74) has cuts with different spacing but all of these cuts appear to be on a same side and therefore in the same facing sheet. This contradicts the limitations for Claim 14 which renders the scope of the claim indefinite. An appropriate correction is required. A determination of patentability will be made when clarification of the claim limitations is provided.
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) 1-4 and 13 is/are rejected under 35 U.S.C. 102(a2) as being anticipated by Barrance (WO 94/10403).
In re Claims 1 and 13, Barrance teaches a gypsum wallboard/plasterboard panel (33) having first and second facing sheets (34) sandwiching a core therebetween. The plasterboard is covered on at least one face by a sheet of paper, card, or cloth on at least one face. Therefore, this allows for the coverage on both sides/sheets of the plasterboard/ wallboard. Plasterboard/ wallboard has a gypsum core between these two sheets. A series of cuts (35) formed on at least one of said first and second facing sheets and extending into a core located between said sheets, retaining intact an opposing one of said first and second facing sheets to form a hinge point; said panel being rolled from a first side to a second side into a rolled condition so that a rolled up stud (37) is formed. (Figures 7.8; Page 6,Lines 6-33)
In re Claim 13, under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform or be made by the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out or being made by the claimed method, it can be assumed the device will inherently perform or be made by the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986). MPEP 2112.02
In re Claim 2, Barrance teaches that a layer of adhesive/nails applied to at least one of said first and second facing sheets so that said panel is held in said rolled condition. The adhesive fastens the stud (37) to block/panel(39) and therefore would have to be applied on the interface of the inner facing sheet and the block/panel(39). (Figures 7.8; Page 6,Lines 6-33)
In re Claim 3, Barrance teaches that the cuts (35) form 90 degree angles and may therefore be considered 90 degree cuts. (Figures 7.8; Page 6,Lines 6-33)
In re Claim 4, Barrance teaches cuts (35) extend up to the opposite facing sheet (34)from where they begin. (Figures 7.8; Page 6,Lines 6-33)
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) 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Barrance (WO 94/10403).
In re Claims 7 and 9, Barrance has been previously discussed but does not teach that the cuts are made in the sequence of 3.8 (1.5 in.), 6.9 (2.7 in.), 3.8 (1.5 in.), 6.9 (2.7 in.), 6.4(2.5 in.), 6.4 (2.5 in.), 6.4 (2.5 in.). It would have been obvious to one having ordinary skill in the art to use spacings of this size, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). It would be obvious to make cuts were needed in order to flexibly configure the stud for the installation.
In re Claim 8, as was noted above, the limitation, full sized, has not been defined. Starting with a standard size wallboard panel, would be obvious as these would be readily available. Further, depending on the size of stud needed, the same panel could be cut down to fashion multiple studs. Separating the material to make two studs would require completely cutting through the wallboard material which would involve cutting through the first and second sheets.
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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