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 .
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.
Claim 11 is rejected under 35 U.S.C. 112(b) 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 11 recites a ratio of intumescent material to gypsum of 0:100 – 10:90 and simultaneously recites where the interlayer comprises an intumescent material which necessarily means the content of intumescent material is greater than zero. As such, claim 11 is considered indefinite as it is unclear how the intumescent material may simultaneously be greater than zero and encompass zero at the same time.
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)(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.
Claims 1-5 and 12-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yuan et al. (US 2020/0102744).
Considering claims 1 and 12-13, Yuan teaches gypsum panels comprising a core containing unexpanded perlite (abstract). An embodiment is taught in Fig.3 (reproduced below) of facer materials (306) and (314) (e.g. 1st and 2nd cover sheets) with gypsum layers (302) and (310) (e.g. 1st and 2nd layers) sandwiching gypsum layer (308) (e.g. an interlayer) (Paragraph 57). The perlite (e.g. an intumescent material) is present in the gypsum core greater than any component other than gypsum (Paragraph 30). Yuan does not specify the claimed TC4 failure time or improvement thereof or expansion. However, Yuan teaches a gypsum panel of substantially identical materials as those which are claimed and disclosed as forming the claimed building board and therefore these features are expected to be present as a material and its properties are inseparable, absent an objective showing.
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Considering claims 2 and 14, Yuan teaches where the gypsum is calcium sulfate dihydrate (Paragraph 49).
Considering claims 3-4 and 15-16, Yuan teaches where the core contains perlite (Paragraph 30).
Considering claim 5, Yuan teaches an exemplar particle size of the perlite being 20-200 mesh (Paragraph 34). See MPEP 2131.03.
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.
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.
Claims 9-11, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Yuan et al. (US 2020/0102744) as applied to claims 1, 3 and 13 above.
Considering claim 9, in addition to the teachings of Yuan as outlined above, Yuan teaches where the panel may have any suitable thickness and where this may be about ¼ - 1 inch (Paragraph 32) and this range overlaps and encompasses that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claims 10-11, Yuan teaches where the panel has a weight from 800-2,500 lb/msf (Paragraph 52) and where the perlite is present in an amount of 1-300 lb/msf (Paragraph 31) and where the perlite is present in the gypsum core greater than any component other than gypsum (Paragraph 30). As such, this overlaps the claimed amount of intumescent material and the ratio between perlite:gypsum. See MPEP 2144.05.
Considering claim 17, Yuan teaches an exemplar particle size of the perlite being 20-200 mesh (Paragraph 34). See MPEP 2144.05.
Considering claim 20, in addition to the panel structure as outlined in claim 1 above, Yuan teaches where the perlite may be combined with vermiculite (e.g. 1st and 2nd intumescent materials) (Paragraph 34) and where the perlite is present in the gypsum core greater than any component other than gypsum (Paragraph 30) and where the perlite is present in an amount of 1-300 lb/msf (Paragraph 31). This is considered to teach where other materials (e.g. vermiculite) may be present from <1 - <300 lb/msf which overlaps the claimed ratio. See MPEP 2144.05.
Claims 1, 3, 6-10, 12-13, 15, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tinianov et al. (WO 2009/025885) and claim 8 is rejected over Tinianov et al. (WO 2009/025885) as applied to claim 1 further in view of Tinianov et al. (US 10,174,499 – hereafter Tinianov’499).
Considering claims 1 and 12-13, Tinianov teaches a wallboard for building construction (e.g. a building board) (abstract). The wallboard comprises an embodiment having improved fire resistance (Paragraph 12) of a laminated panel with exterior layers (301) and (303) (e.g. first and second cover sheets) and constraining layers (302) and (306) with glue layer (305) (e.g. an interlayer) (Paragraph 29). The constraining layers may be gypsum, etc. (Paragraph 25) and the glue is an intumescent viscoelastic material (Paragraph 10).
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While not expressly teaching a singular example of the claimed building board this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tinianov as this is considered a conventionally known combination of materials known to form wallboards and one would have had a reasonable expectation of success. Further, while not teaching the claimed TC4 failure or improvement thereof or expansion, these features are expected to be present as Tinianov teaches a substantially identical wallboard and materials thereof as that which is claimed and disclosed and therefore these features are expected to be present as a material and its properties are inseparable, absent an objective showing. See MPEP 2112.01.
Considering claims 3 and 15, Tinianov teaches where the glue comprises an intumescent (Paragraph 10).
Considering claims 6 and 18, Tinianov teaches where the glue is placed in a pattern (Paragraph 16) which is necessarily discontinuous.
Considering claims 7 and 19, Tinianov teaches where the glue comprises an intumescent (Paragraph 16) and where the composition does not contain gypsum (Table 1).
Considering claim 8, Tinianov teaches where the glue is applied as a pattern (Paragraph 16), but does not teach the claimed coverage.
In a related field of endeavor, Tinidanov’499 teaches laminated boards for use in construction (abstract). The panel comprises two or more different materials including gypsum boards and a layer of adhesive comprising an intumescent glue (Column 3 lines 39-54). The glue may be applied in a pattern including about 20-80% coverage (Column 10 lines 29-51) and the pattern is taught to improve handling during installation (Column 11 lines 6-12).
As both Tinianov and Tinianov’499 teach gypsum panels with adhesive they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Tinianov with the adhesive pattern taught by Tinianov’499 as this is known to improve handling during installation and one would have had a reasonable expectation of success.
Considering claim 9, Tinianov’499 teaches where the thickness of the glue layer is 1/32 – 5/8” in thickness (Column 3 lines 50-54) (e.g. 0.03125-0.625 inches). See MPEP 2144.05.
Considering claim 10, Tinianov teaches where the zinc borate (e.g. the intumescent material) content in the adhesive is up to 25 wt.% (Table 1). See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Roberts (US 3,908,062), Xu et al. (US 2012/0207989), Garvey et al. (US 2014/0273687), Li et al. (US 2018/0119417), Li et al. (US 10,053,860), and Glean et al. (US 2020/0247091) teach gypsum panels demonstrating the level of ordinary skill in the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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