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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/20/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 6 is objected to because of the following informalities:
It appears in the second line “a” is missing between “and wall”, it appears it should read “and a wall”.
Appropriate correction is required.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Sang et al. (WO 2022/1531818 A1) [IDS dated 02/20/2025], herein Sang.
Regarding claim 1, Sang teaches a plasterboard panel comprising a plaster gypsum core between facing sheets [Abstract, 0002, 0016, 0079, 0104, 0114]. The core comprising an interlocking matrix of gypsum and air voids [0044, 0128]. At least 90% of the air voids are connected by a channel [0055-0056]. Additionally, at least about 95% of the air voids are connected to at least one other void [0056]. The voids may further connect to a third , a fourth and even a fifth void, thus having a coordination number of 4 [0051-0052].
Sang does not expressly teach the average coordination number is between 2 and 6, but does teach that preferably the channels have a coordination of 2 to 4 [0051-0052]. Sang teaches such connectivity increases the acoustic properties of the gypsum core [0053].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured that the average neighbor coordination is between 2 and 4 as Sang teaches such connectivity increases the acoustic properties of the gypsum core.
Regarding claim 2, Sang further teaches air void volume may be at least 60% to about 80 % of the core volume [0047, 0146].
Regarding claim 3, Sang further teaches gypsum core in example embodiments can be at least 80% gypsum based on the weight [0042]. This overlaps the claimed range.
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).
Regarding claim 4, Sang further teaches the average diameter of the void channels is between about 10 microns and about 50 microns [0057].
Regarding claim 5, Sang does not expressly teach the wall thickness of the connected air pores or the wall thickness of the connected pores. However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
Regarding claim 6, Sang further teaches that unconnected air pores are present in the plasterboard as only 95% are connected to at least one other air void [0056].
Sang does not expressly teach the wall thickness of the unconnected air pores or the average wall thickness. However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 7, Sang further teaches the air voids have an average diameter of less than 200 microns [0057].
Regarding claim 8, Sang does not expressly teach the specific mass of the plasterboard. However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 9, Sang further teaches the air voids ( connected and unconnected) have an average diameter of less than 200 microns [0057]. S
Sang does not expressly teach the porosity of the plasterboard for the air . However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 10, Sang further teaches the air voids ( connected and unconnected) have an average diameter of less than 200 microns [0057]. Sang does not teach the porosity volume of the air pores having a diameter which is greater than 100 microns.
Sang does not expressly teach the porosity of the plasterboard of those pores in the claimed range. However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 11, Sang further teaches the air voids have a lower bound of the average air void diameter of 110 microns [0048]. Thus, the volume limitations are expected to be met.
Additionally, Sang does not teach the volume of the clamed pores in the claimed range. However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 12, Sang further teaches the water voids have a diameter of 5 mircons or less [0049]. This overlaps the claimed ranges.
Sang does not teach the distribution of pore sized of the water pores.
However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 13, Sang does not teach the permeability of the plasterboard.
However, Sang teaches a substantially identical material made by a substantially similar process (see claim 15) such that one would expect the physical properties of the plasterboard of Sang would be similar to that of the claimed plasterboard, see In re Best.
Regarding claim 14, Sang does not expressly teach the average neighbor coordination of the connected air pores is between 3 and 6. However, Sang teaches the air voids may further connect to a third , a fourth and even a fifth void, thus having a coordination number of 4 [0051-0052].
Sang does not expressly teach the average coordination number is between 3 and 6, but does teach that preferably the channels have a coordination of 4 [0051-0052]. Sang teaches such connectivity increases the acoustic properties of the gypsum core [0053].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured that the average neighbor coordination is between 3 and 4 as Sang teaches such connectivity increases the acoustic properties of the gypsum core.
Regarding claim 15, Sang teaches the limitations of claim 1 as set forth above. Sang further teaches a method for making a plasterboard [0018, 0104]. The method comprises forming a plaster slurry comprising at least 80% alpha gypsum hydrate [0042, 0091, 0104]. This overlaps the claimed range. The slurry is combined with an aqueous foam and the slurry is poured onto a facing sheet [0104]. A second facing sheet is applied and the is cured and heated [0104, 0109-0110].
Regarding claim 16, Sang teaches the water-to-stucco is about 0.6 [0091].
The only deficiency of Sang is that Sang discloses a ratio of about 0.6, while the present claims require less than 0.5.
It is apparent, however, that the instantly claimed ratio and that taught by Sang are so close to each other that the fact pattern is similar to the one in In re Woodruff, 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the ratio disclosed by Sang and the ratio disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the ratio, it therefore would have been obvious to one of ordinary skill in the art that the ratio disclosed in the present claims is but an obvious variant of the amounts disclosed in Sang, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include: Busche et al. (US 20220347971 A1), Goletto et al. (US
20150159365 A1), Morlat et al. (US 20180354857 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
Prosecution Insights