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 without traverse of Group I, claims 1-17, in the reply filed on 24 August 2026 is acknowledged. The requirement is still deemed proper and is therefore made FINAL.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 24 August 2026.
In the event of allowable subject matter, the restriction requirement may be reconsidered.
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 8-17 are 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 8 recites an intercalated additive comprising an intumescent material and one or more intercalated compounds and/or ions wherein the intercalated additive is a multi-intercalated additive and is considered indefinite as Paragraph 41 of the specification sets forth where “multi-intercalated additive” refers to an additive that comprises two or more intercalated compounds and/or ions and it is unclear how the claimed intercalated additive may comprise one compound while simultaneously required to comprise two or more. Clarification is required. Claims 9-17 are included in this rejection as they depend upon a rejected claim.
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.
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 8, 10, and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2021/0238096 – cited by applicant).
Considering claim 8, Li teaches a composite gypsum panel comprising a gypsum core sandwiched between two cover sheets (abstract). The core comprises gypsum and an intumescent material (Paragraph 9) and may comprise expandable graphite (Paragraph 33). The expandable graphite may comprise an intercalating agent which may be sulfuric acid, nitric acid, etc. and combinations thereof (Paragraph 37) and this is considered to teach a “multi-intercalated additive” per applicant’s definition set forth in Paragraph 41 of the originally filed specification.
While not expressly teaching a singular example of the claimed gypsum panel this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Li as this is considered a combination of conventionally known intercalating agents for an intumescent material in a gypsum panel and one would have had a reasonable expectation of success.
Considering claim 10, Li teaches where the intercalant comprises sulfuric acid (e.g. H2SO4, a sulfate compound/ion).
Considering claim 12, Li teaches where the intumescent material may comprise expandable graphite (Paragraph 33).
Considering claims 13-14, Li teaches where the intumescent material may include vermiculite, expandable graphite, perlite, or combinations thereof (Paragraph 7).
Considering claims 15-17, the recitation of “is formed by” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed gypsum panel. Absent an objective showing, these limitations are considered to be met by Li. See MPEP 2113.
Claims 1-2, 4-7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2021/0238096 – cited by applicant) in view of Greinke (US 6,669,919).
Considering claims 1 and 9, the teachings of Li as applied to claim 8 are outlined above. Li teaches a composite gypsum panel comprising a gypsum core sandwiched between two cover sheets (abstract) in wallboards exposed to fire (Paragraphs 3 and 7). The core comprises gypsum and an intumescent material in the core and a skim coat (Paragraph 9) and may comprise expandable graphite (Paragraph 33). The expandable graphite may comprise an intercalating agent which may be sulfuric acid, nitric acid, etc. and combinations thereof (Paragraph 37). The intumescent material may be present in about 1-5 wt.% in the core and about 2-20 wt.% in the skim coat by weight of the stucco in the gypsum core (Paragraph 46) for an overall amount of about 3-35 wt.%. However, Li does not teach the claimed intercalated additive weight.
In a related field of endeavor, Greinke teaches intercalated graphite flakes (abstract) having improved expansion characteristics when exposed to elevated temperatures (Column 1 lines 8-11) and materials exposed to fire (Column 1 lines 36-30). The graphite comprises an intercalant reacted with graphite flakes (Column 2 lines 41-47) and the intercalating agent comprises nitric acid, sulfuric acid, etc. (Column 3 lines 31-53) and is present in about 0.2-10 wt.% of the graphite flakes (Column 4 lines 54-62).
As Li and Greinke are directed toward fire resistant materials 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 Li with the intercalating agent weight taught by Greinke as this is considered a combination of graphite and intercalant known to form graphite having improved expansion characteristics and one would have had a reasonable expectation of success. Further, Li teaches where the graphite may be present in about 3-35 wt.% of the core and Greinke teaches where the intercalating agent is present in about 0.2-10 wt.% for a combined amount of about 0.6-3.5 wt.% of the total gypsum amount overlapping 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 claim 2, Li teaches where the intercalant comprises sulfuric acid (e.g. H2SO4, a sulfate compound/ion).
Considering claim 4, Li teaches where the intumescent material may comprise expandable graphite (Paragraph 33).
Considering claim 5, Li teaches where the intumescent material may include vermiculite, expandable graphite, perlite, or combinations thereof (Paragraph 7).
Considering claims 6-7, the recitation of “is formed by” is considered a product-by-process limitation and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the final structure of the claimed gypsum panel. Absent an objective showing, these limitations are considered to be met by modified Li. See MPEP 2113.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2021/0238096 – cited by applicant) in view of Greinke (US 6,669,919) as applied to claim 1 above and claim 11 is rejected over Li et al. (US 2021/0238096 – cited by applicant) as applied to claim 8 above, both further in view of Wu et al. (CN112480474 – machine translation).
Considering claims 3 and 11, the teachings of Li and Greinke as applied to claims 1 and 8 are outlined above. Li teaches a composite gypsum panel (abstract) in wallboards exposed to fire (Paragraphs 3 and 7). The core comprises gypsum and an intumescent material in the core and a skim coat (Paragraph 9) and may comprise an intercalating agent which may be sulfuric acid, nitric acid, etc. and combinations thereof (Paragraph 37), but does not teach the claimed carbonate or bicarbonate.
In a related field of endeavor, Wu teaches an intumescent flame retardant material comprising 70-99 wt.% of an intumescent flame retardant and 1-30 wt.% of a Ca-based ternary hydrotalcite comprising inorganic and organic intercalations (abstract). Hydrotalcite has good heat adsorption and suppresses smoke (Paragraph 5). The intercalant for the hydrotalcite comprises carbonate, borate, etc. (Paragraph 11).
As Li, Greinke, and Wu teach fire resistant materials 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 Li and/or Li in view of Greinke with the hydrotalcite intercalated with carbonate as this is known to have good head adsorption and suppress smoke and one would have had a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Greinke et al. (US 4,895,713), Reinheimer et al. (US 7,118,725), Reinheimer et al. (US 7,479,513), and Li et al. (US 2018/0119417) teach graphite materials with intercalants similar to that which is claimed.
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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