Ex Parte Currier et al

Patent Trial and Appeal Board

Apr 29, 2016

12372032 (P.T.A.B. Apr. 29, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/372,032 02/17/2009 Alan E. Currier 20418 8934
31743 7590 05/02/2016
Georgia-Pacific LLC
133 Peachtree Street NE - GA030-42
ATLANTA, GA 30303
EXAMINER
GAITONDE, MEGHA MEHTA
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
05/02/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ALAN E. CURRIER1
and Gary A. Ricards
________________

Appeal 2014-0025112
Application 12/372,032
Technology Center 1700
________________

Before PETER F. KRATZ, MARK NAGUMO, and JAMES C. HOUSEL,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Alan E. Currier and Gary A. Ricards (“Courrier”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection3 of claims 1, 2, 4–13, 24,
and 25.4 We have jurisdiction. 35 U.S.C. § 6. We affirm.

1 The real party in interest is listed as Georgia-Pacific Gypsum LLC.
(Appeal Brief, filed 23 September 2013 (“Br.”), 2.)
2 A hearing scheduled for 12 April 2016, was waived in a communication to
the USPTO on 24 March 2016.
3 Office action mailed 22 March 2013 (“Final Rejection”; cited as “FR”).
4 Remaining copending claims 14–22 have been withdrawn from
consideration by the Examiner (FR 1, § 5a), and are not before us.
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OPINION
A. Introduction5
The subject matter on appeal relates to fibrous mat-faced gypsum
panels prepared with pre-coated fibrous mats that comprise glass fibers
having a certain range of diameter. The panels are said to be suitable for
constructing roof decks by various methods such as the Built-up Roofing
(“BUR”) methods in which multiple layers of reinforcing plies and asphalt
overlay the gypsum panels (Spec. 1 [03]), as well as the more recently
developed single ply “peel and stick” methods in which a single layer of a
waterproof polymeric material is rolled onto the gypsum panel roofing
surface in edge-overlapped courses (id. at 1–2 [04]). Commercially
available prior art gypsum panels are said to be “post-coated,” i.e., coated
after the fibrous mat facers have been applied to the gypsum core.
(Id. at 2 [05]–[06].) The separate coating step involved in the production of
such panels is said to be “cumbersome.” (Id. at 3 [10].) Moreover, simply
replacing the prior art facers with pre-coated mats to form nominal 1/4-inch
thick panels is said to have resulted in products unable to meet the Class A
fire tests for roof products, or the uplift resistance Class 1 roof approval
rating (FM 4470) in excess of 90 lbs./square foot. These properties are said
to be necessary to provide a widely accepted commercial product. (Id.)
The claimed panels are said to achieve these goals by providing pre-
coated nonwoven mats ( “fiberglass”) mats having glass fibers nominally

5 Application 12/372,032, Pre-coated non-woven mat-faced gypsum panel,
filed 17 February 2009, claiming the benefit a provisional application
filed 18 February 2008. We refer to the “ʼ032 Specification,” which we cite
as “Spec.”
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about 10 to 17 microns in diameter, preferably no more than
about 11.5 microns (“H fibers”). (Spec. 14–15 [44].) According to
the ʼ032 Specification, the term “precoated” means that “the non-woven
fibrous mats have a dried adherent coating of what was originally an
aqueous coating composition.” (Id. at 8 [25].) The coating is applied on a
dry weight basis of between about 3 to 6 lbs. per 100 sq. ft. of mat.
(Id. at 10 [31].) The desired fire resistance and wind uplift resistance are
said to be obtained by including at least about 0.3 lbs. of reinforcing fibers
per 100 square feet of roofing board (id. at 11 [34]6), and by providing that
the core of the gypsum board have a density sufficient to yield a 1/4 inch
thick board of at least 130 pounds per 100 square feet (id. at 12 [39].) In the
words of the Specification, “[t]he manufacture of a core of a predetermined
density can be accomplished using known techniques, for example, by
controlling or adjusting the amount of foam (soap) added into the aqueous
gypsum slurry from which the core is formed and/or by controlling how the
board is formed or molded before it cures.” (Id., last sentence.)
Claim 1 is representative of the dispositive issues and reads:
A gypsum panel comprising:
(1) a first coated, non-woven fibrous mat, the non-woven
fibrous mat containing glass fibers nominally
about 10 to 17 microns in diameter,
the coating on the first coated non-woven fibrous mat
having a basis weight of 3 to 6 pounds of solids
per 100 square feet of mat and

6 Three previously available gypsum roofing boards provided by Georgia-
Pacific Gypsum are said to include a maximum of about 0.2 lb reinforcing
fibers per 100 square feet of roofing board. (Spec. 11 [34].)
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comprising a dried aqueous mixture of
(i) a mineral pigment and
(ii) a polymer latex adhesive binder
and being substantially free of talc,
the polymer latex adhesive binder comprising on a
dry weight basis at least about 1 % and no more
than about 17 % by weight of the coating,
the first coated non-woven fibrous mat having a coated
side and a non-coated side;
(2) a set gypsum core, the core having
a density sufficient to yield a 1/4 inch thick board of at
least 130 pounds per 100 square feet of the panel
and comprising
at least about 0.3 lbs. of reinforcing fibers
per 100 square feet of the panel,
the panel having an uplift resistance rating under
FM 4470 in excess of 90 lbs./square foot, and
(3) a second coated non-woven fibrous mat,
the non-woven fibrous mat containing glass fibers
nominally about 10 to 17 microns in diameter,
the coating on the second coated non-woven fibrous
mat having a basis weight of 3 to 6 pounds of solids
per 100 square feet of mat and
comprising a dried aqueous mixture of
(i) a mineral pigment, and
(ii) a polymer latex adhesive binder,
the polymer latex adhesive binder comprising on
a dry weight basis at least about 1 % and no more
than about 17 % by weight of the coating,
the second coated non-woven fibrous mat having a
coated side and a non-coated side;
wherein the first and second coated non-woven fibrous
mats are adhered to the set gypsum core by set gypsum
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penetrating only partway into the non-coated sides of the
fibrous mats; and
wherein the gypsum panel is prepared by
depositing a gypsum slurry for forming the set gypsum
core onto the non-coated side of the first coated non-
woven fibrous mat and
forcing the non-coated side of the second coated non-
woven fibrous mat into contact with a free surface of
the gypsum slurry and
allowing the gypsum slurry to harden to form the
gypsum core,
the first and second coated non-woven mats having a
porosity which allows water to evaporate through the
coated mats from the gypsum core during preparation
of the panel.
(Claims App., Br. 18–19; some indentation, paragraphing, and emphasis
added.)
Claims 4, 5, and 10–13 depend from claim 3, which originally
depended from claim 1 via claim 2, but which has been canceled. (Claims
App., Br. 19–21.) For purposes of resolving this appeal, we presume,
without deciding, that these claims depend from claim 2. In the event of
further examination, Currier and the Examiner should ensure that the
dependence of these claims is resolved.
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The Examiner maintains the following grounds of rejection7:
A.8 Claims 1, 2, 4, 6–8, and 10 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Bland,9 Jaffee,10 and Heseltine.11
A1. Claims 5, 9, and 11–13 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Bland, Jaffee, and Randall.12
A2. Claims 24 and 25 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Bland and Kajander.13
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Currier has presented substantive arguments for
patentability solely on the basis of limitations in claim 1. All other claims

7 Examiner’s Answer mailed 30 October 2013 (“Ans.”).
8 Claim 3 is included mistakenly in the statement of rejection. (FR 2.)
9 Brian W. Bland and Alan E. Currier, Interior wallboard and method of
making same, U.S. Patent Application Publication 2006/02400236 A1
(2006), now U.S. Patent No. 7,635,657, issued 22 December 2009, and
assigned to Georgia-Pacific Gypsum LLC, the present real-party-in-interest.
10 Alan Michael Jaffee, Non-woven glass fiber mat faced gypsum board and
process of manufacture, U.S. Patent Application Publication 2004/0266304
Al (2004).
11 Robert W. Heseltine and J.H.B. Morellssen, Fire-resistant gypsum, U.S.
Patent Application Publication 2005/0263925 Al (2005).
12 Brian G. Randall and Russell S. Smith, Mat faced gypsum board, U.S.
Patent Application Publication 2004/0209074 Al (2004).
13 Richard Emil Kajander, Coated mat products, laminates and method,
U.S. Patent Application Publication 2005/0181693 Al (2005).
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thus stand or fall with claim 1, although we also address briefly the
arguments regarding claim 12 post.
We consider first the arguments focusing on the non-woven mats,
second, the arguments focusing on the gypsum core, and finally, the
arguments focusing on the properties of the panel as a whole.
The non-woven mats: parts (1) and (3)
Briefly, the Examiner finds that Bland describes non-woven glass
fiber mat-faced gypsum panels that meet the limitations of the coated mat of
part (1) (FR 2, ll. 13–14), including the glass fiber diameter range
(id. at ll. 14–15, citing Bland [0021]), the coating density of 30 to 60 lbs. per
1000 sq. ft. [i.e., 3–6 lbs. per 100 sq. ft.] (id. at ll. 15–17, citing
Bland [0063]), and the composition of the coating material (id. at ll. 17–19,
citing Bland [0048]). The Examiner finds that Bland does not teach
explicitly those limitations of the second mat recited in part (3). (Id. at 3,
ll. 4–11.) However, the Examiner finds that “Bland teaches the second mat
made of K fibers facing the studs of a room.” (Id. at ll. 11–12; no citation to
Bland is provided.) The Examiner concludes that it would have been
obvious “to replace this mat with another, perhaps identical to the first, for
an application where both sides of the gypsum panel needed handling”
(id. at ll. 11–14). The Examiner explains that such a duplication of parts has
been held obvious. (Id. at ll. 14–16, citing a passage in the MPEP.)
Currier urges that Bland “fails to disclose, teach, or suggest two
similar mat panels sandwiching a gypsum core.” (Br. 7, ll. 18–19.)
“Instead,” Currier continues, “Bland teaches a gypsum core that is
sandwiched between two different mat panels.” (Id. at 8, ll. 1–2.)
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The first argument is contradicted directly by Bland. Initially, we
note that the second inventor listed on Bland, Alan E. Currier, of Atlanta,
Georgia, appears to be the same Alan E. Currier, of Atlanta, Georgia, who is
the first-named inventor of the ʼ032 Application. We may, therefore,
assume without prejudice that Currier has complete knowledge and
understanding of the teachings of Bland. In particular, Bland teaches:
The optionally coated non-woven mat which is adhered to
the other major surface of the gypsum core intended to face
the studs of a room (the second mat), is prepared using glass
fibers having a nominal diameter of at least
about 13 microns (K fibers) but generally not higher than
about 16 microns (M fibers).
(Bland 4 [0036]; emphasis added.) The twelve panels described in the
Example (Bland 9 [0084]–10 [0090]) all appear to meet the fiber diameter
limitations for both mats. The ranges of coating density (id. at 7 [0063]) and
of the coating composition (id. at 5 [0048]) are disclosed to be the same for
the second mat as the first. In other words, Bland teaches that the second
mat, although not identical to the first mat, is entirely within the limitations
recited in part (3) of claim 1. It follows that Currier’s second argument is
irrelevant.
We conclude that Currier has overlooked or misapprehended the
teachings of Bland, and has failed to demonstrate harmful error in the
Examiner’s findings of fact regarding the second mat described by Bland.
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The gypsum core: part (2)
The Examiner finds that Bland does not disclose the following
features of part (2): the higher density of the gypsum core14 (FR 2, l. 23–24),
panels that are 1/4 ″ thick (id. at 4, l. 3), the amount of reinforcing fiber in
the gypsum core (id. at ll. 9–10), and the uplift resisting rating.
Regarding the difference in density, the Examiner finds that Bland
discloses gypsum panels have densities typically in the range of 46
to 50 lbs./ft3, but that Bland teaches that cores having both higher and lower
densities can be used. (Id. at 2, l. 23–24.) The Examiner reasons that it
would have been obvious to use the higher density core due to the greater
weight and strength, “which is particularly suited for outdoor, weather-
resistant applications.” (Id. at 2, l. 25, to 3, l. 3.)
Currier urges that “[a]lthough Bland teaches that a gypsum core may
have a density that is higher or lower than the disclosed range of 40
to 55 lbs./ft3, Bland fails to identify or suggest the boundaries of such
variations.” (Br. 7, ll. 4–6.) The absence of a prior art citation to the
minimum core density of 62.4 lbs./ft3 required by the claims is, in Currier’s
estimation, fatal to the rejection. (Id. at ll. 6–9.)
This argument is not persuasive of harmful error. The minimum
density of 62.4 lbs./ft3 required by the appealed claims is about 25% higher
than the 50 lbs./ft3 upper limit cited by the Examiner, about 13.5% higher
than the 55 lbs./ft3 upper limit cited by Currier, and about 2.5% higher than

14 The Examiner finds that 130 lbs./100 sq. ft. of 1/4″ panel corresponds to a
density of 62.4 lbs./cubic foot:
130 lbs./(100 ft.2× ¼ inch × 1 ft./12 inch) = 62.4 lbs./ft3.
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the 60 lbs./ft3 upper limit reported by Bland. (Bland 7 [0063, ll. 5–6
and 14].) Currier does not direct our attention to any disclosure in the
supporting Specification or in the prior art that core density higher by as
little as 2.5% (2.4 lbs./ft3) was so far beyond the norm as to have been
nonobvious. Indeed, Bland teaches
Of course, cores having both higher and lower densities can
be used in particular applications if desired. The
manufacture of cores of predetermined densities can be
accomplished by using known techniques, for example by
introducing an appropriate amount of foam (soap) into the
aqueous gypsum slurry from which the core is formed or by
molding.
(Bland at 8 [0071].) The second sentence of this passage is identical to the
last sentence of the ʼ032 Specification at 12 [39]. The differences in density
are thus modest, in light of Bland’s encouragement to use higher densities
and Bland’s relative indifference to the composition of the core, which
includes additives such as reinforcing fibers (Bland 7 [0069]). We are thus
not persuaded of harmful error in this aspect of the appealed rejections.
Currier raises similar unembellished arguments for claim 12, which
recites gypsum core densities of 135 to 145 pounds per 100 square feet
of 1/4″-thick panel.15 In light of the considerations just discussed, these
arguments amount to no more than reciting what the claims require and
asserting that the references do not disclose or suggest the claimed subject
matter. Such “argument” is not “considered an argument for separate

15 Currier describes these densities as “about 64.9 and 69.7 lbs./ft.3”
(Br. 13, l. 4).
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patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv) (2013), last
sentence.16
The Examiner finds that although Bland only teaches typical
thicknesses of 1/2″ to 1″, Jaffee teaches methods of making gypsum panels
with non-woven coated glass fiber mats on both sides, having thicknesses
ranging from 1/4 ″ to 1″. (FR 4, ll. 3–5.) The Examiner concludes that it
would have been obvious to make panels 1/4” thick. (Id. at ll. 5–8.)
Currier does not challenge the Examiner’s findings regarding Jaffee’s
teachings about the thickness of gypsum panels. (Br. 9, ll. 7–8.) Rather,
Currier criticizes the Examiner’s conclusions based on the failure of Jaffee
to teach the density of reinforcing additives in the core material. (Id. at ll. 8–
14.) However, the Examiner does not rely on Jaffee for this feature.
Accordingly, we are not persuaded that the Examiner’s reliance on Jaffee
amounted to harmful error.
Regarding the reinforcing fibers in the gypsum core, the Examiner
finds that Bland is not particularly concerned with the particular core
composition. (FR ll. 10–11, citing Bland [0068]). The Examiner finds that
Heseltine teaches methods of making fire-resistant gypsum boards having
core compositions with 0.05 to 1.6 pounds of reinforcing fiber
per 100 square feet of panel. (Id. at ll. 12–15, citing Heseltine [0058].) The

16 Our reviewing court has approved this interpretation of the Rule. In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.
Because Lovin did not provide such arguments, the Board did not err in
refusing to separately address claims 2–15, 17–24, and 31–34.”)
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Examiner reasons that it would have been obvious to use amounts of
reinforcing fibers throughout the disclosed range for their beneficial effects.
Currier urges that a person having ordinary skill in the art would not
have looked to Heseltine to modify Bland or Jaffee. Currier argues, without
elaboration, that Heseltine teaches adding reinforcing fibers wallboard core
compositions to impart desirable fire resistant properties. (Br. 9, ll. 15–20.)
It is well-settled, however, that the reasons for modifying prior art
references, provided those reasons can be discerned from the prior art of
record, do not have to be the same as Appellants’ reasons. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 420 (2007) (“Under the correct analysis, any
need or problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”); see also In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996); In re Dillon, 919 F.2d 688, 692–693 (Fed. Cir. 1990) (en banc).
Here, Heseltine teaches increasing fire-retardant properties of materials
intended for use in occupied structures by adding reinforcing fibers—a
material taught by Bland to be added to gypsum cores. Moreover, it has not
escaped our notice that the ʼ032 Specification indicates that deficiencies of
prior art glass-fiber faced gypsum panels with respect to Class A fire tests
was recognized. (Spec. 3 [10].) In any event, adding a known substance for
its known use to an article of manufacture subject to health-and-safety
related regulations is generally at least prima facie obvious. We conclude
that harmful error has not been shown regarding the addition of reinforcing
fibers to the gypsum core.
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The panel as a whole
Currier urges further that Bland does not teach or suggest a gypsum
panel having an uplift resistance rating under FM 4470 in excess
of 90 lbs./ft2. (Br. 9, ll. 21–23.) This property, Currier argues, “is a property
of the entire gypsum panel claimed by the Appellants.” (Br. 10, ll. 9–10.)
The Examiner’s findings are insufficient, in Currier’s view, to demonstrate
inherency. (Id. at 10.)
Currier’s focus on inherency is misplaced. We found, supra at 3, that
the ʼ032 Specification teaches that the recited uplift resistance arises when
the amount of reinforcing fiber in the gypsum core is greater than 0.3 pounds
per hundred square feet of panel, and the density of the panel is at
least 130 pounds per 100 square feet [of 1/4″ thick] panel, or 62.4 lbs./ft3
(Spec. 11 [34] and 12 [39]). Both of these parameters are suggested in the
prior art of record, all of which relate to gypsum panels intended for use in
the construction of occupied structures. Thus, on the present record, this
“limitation” is not an additional requirement. Rather, it is necessarily
present when the reinforcing fiber is present in amounts of at
least 0.3 lbs./100 sq. ft. of panel, and the density of the panel is at
least 130 lbs./100 sq. ft. Cf. In re Kubin, 561 F.3d 1351, 1357 (Fed.
Cir. 2009) (“Even if no prior art of record explicitly discusses the
[limitation], [applicants’] application itself instruct that [the limitation] is not
an additional requirement imposed by the claims on the [claimed invention],
but rather a property necessarily present in [the claimed invention]”). To the
extent Currier argues that this property is evidence of unexpected results, we
find that the absence of working examples or experimental evidence
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comparing embodiments of the prior art to embodiments of the claimed
subject matter leaves these arguments unsubstantiated.
In summary, we are not persuaded of harmful error in the appealed
rejections.
C Order
It is ORDERED that the rejection of claims 1, 2, 4–13, 24, and 25 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED