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 of Group I, claims 1-17 in the reply filed on 07/27/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/27/2026.
Upon reconsideration the following restriction is further required.
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-9, drawn to a gypsum panel, classified in B32B 2264/303.
III. Claims 10-17, drawn to a gypsum panel, classified in B32B 13/02.
The inventions are distinct, each from the other because of the following reasons:
Inventions of Group I and of Group III are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed can have a materially different design, mode of operation, function, or effect given that the invention of Group I requires the intumescent additive having an average particle size from about 1 micron to about 100 microns which is not found in the invention of Group III while the invention of Group I requires the intumescent additive having a particle size distribution that is multi-modal which is not found in the invention of Group I. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr. David Griffith on 08/27/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-17 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2021/0238096).
Regarding claims 1 and 9, Li et al. teaches composite gypsum board containing a set gypsum core sandwiched between two cover sheets, wherein the core is formed from a slurry containing stucco, water, and optional ingredients such as foaming agent, accelerator, retarder, polyphosphate, starch, and dispersant, and core intumescent material which can include expandable vermiculite, expandable graphite, or perlite (See Abstract). The expandable graphite has an average particle size of from about 5 mesh to about 400 mesh (paragraph [0040]) which is equivalent to approximately 37 microns to 4000 microns, which overlaps the claimed range of about 1 to about 100 microns. As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); see MPEP 2144.05.
Regarding claim 2, Li et al. teaches slurry comprising gypsum (paragraph [0050]).
Regarding claim 3, given that Li et al. teaches additives can be present in the gypsum slurry in an amount of from about 0% to about 20% by weight of the stucco and the water-to-stucco ratio (WSR) is from about 0.3 to about 1.5 (paragraphs [0048] and [0050]), the amount of gypsum would necessarily overlap the presently claimed range.
Regarding claim 4, Li et al. teaches wherein the core intumescent material is present in the core slurry in an amount of from about 1% to about 5% (paragraph [0044]) which falls within the claimed range of about 50 wt% or less.
Regarding claim 5, given that Li et al. teaches additives can be present in the gypsum slurry in an amount of from about 0% to about 20% by weight of the stucco and the water-to-stucco ratio (WSR) is from about 0.3 to about 1.5 (paragraphs [0048] and [0050]), the weight ratio of gypsum to intumescent additive would necessarily overlap the presently claimed range.
Regarding claim 6, the claimed limitation is a process limitation. It is noted that “[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). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Li et al. meets the requirements of the claimed intumescent additive, Li et al. clearly meets the requirements of present claims.
Regarding claim 7, Li et al. teaches wherein the gypsum slurry can include at least one dispersant which are lignosulfonates (paragraph [0056]).
Regarding claim 8, given that Li et al. teaches fire resistance composition comprising materials and structure identical to that presently claimed, the fire resistance composition would necessarily have a density in an amount as presently claimed, absent evidence to the contrary. Further, it is noted Li et al. disclose the board overall to have a density of about 40 lb/MSF or less (paragraph [0208]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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