Ex Parte Stevens et al

Patent Trial and Appeal Board

Jan 24, 2019

12621835 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/621,835 11/19/2009
45455 7590 01/28/2019
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Richard B. Stevens
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
4210AUSGYP/2033.81835 3222
EXAMINER
OLSEN,KAJK
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
01/28/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket@gbclaw.net
verify@gbclaw.net
ptomail@ gbclaw. net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD B. STEVENS and CHARLES J. MILLER
Appeal2017-002755
Application 12/621,835
Technology Center 1700
Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's decision
finally rejecting claims 1-17 and 21-23. An oral hearing was conducted on
January 17, 2019, before this Board panel. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 This Decision includes citations to the following documents: Specification filed
Nov. 19, 2009 ("Spec."); Final Office Action dated Jan. 14, 2016 ("Final"); Appeal
Brief filed June 10, 2016 ("Appeal Br."); Examiner's Answer dated Nov. 4, 2016
("Ans."); and Reply Brief filed Dec. 23, 2016 ("Reply Br.").
2 Appellants identify the real party in interest as United States Gypsum Company.
Appeal Br. 2.
Appeal2017-002755
Application 12/621,835
The invention relates to a ready-mix joint compound that chemically hardens
quickly and reliably within a stated time. Spec. 1 :7-9. In forming a wall, gypsum
wallboard panels are attached to studs and joint compound is used to fill and coat
the joints between the wallboard panels. Id. at 1: 11-14. In general, joint
compounds contain a filler, a binder, and a thickener. Id. at 2:10-11.
"[C]onventional fillers are calcium carbonate, calcium sulfate dihydrate (gypsum),
and calcium sulfate hemihydrate (plaster of Paris)." Id. at 2:12-14. In addition to
being added as a filler, calcium carbonate may be present as a naturally occurring
contaminant of other raw materials. Id. at 3 :28--4: 1.
According to the Specification, calcium sulfate hemihydrate is used only in
setting-type joint compounds. Id. at 2: 14--15. Setting-type joint compounds
containing calcium sulfate hemihydrate may be prepared as ready-mixed, pre-
wetted product instead of a powder, provided that a set preventer is included in the
product to interrupt the chemical conversion of calcium sulfate hemihydrate to
calcium sulfate dihydrate. Id. at 3:6-9. The chemical conversion/setting reaction,
is resumed by addition of a set initiator/accelerator. Id. at 3:18-19.
At the time of the invention, a known chemical set accelerator for calcium
sulfate hemihydrate systems was alum. 3 Id. at 3:25-26. Alum, however, rarely was
used because of excessive foam generation in the presence of calcium carbonate,
resulting in loss of strength and surface cratering. Id. at 3:27-28, 4: 1-2. The
inventors are said to have discovered a ready-mixed, setting-type joint compound
base to which a set preventer has been added that enables the use of alum as a set
initiator without producing excessive foaming. Id. at 4:24--26. "The [inventive]
3 The Specification defines "alum" as "any aluminum sulfate, including aluminum
disulfate, a double sulfate of potassium and aluminum and a double sulfate of
aluminum and ammonia." Id. at 11 :8-10.
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Application 12/621,835
joint compound system utilizes a combination of a calcium-free phosphate set
preventer, alum as a set initiator and a limited amount of calcium carbonate in the
joint compound base." Id. at 4:26-5:2.
Claim 1, reproduced below, is representative of the claims on appeal.
1. A joint compound system comprising:
alum;
a calcium-free phosphate set-preventing agent;
water; and
a setting type joint compound base comprising calcium sulfate
hemihydrate, wherein said joint compound base has no added calcium
carbonate, said calcium sulfate hemihydrate having less than about
2% by weight contaminant calcium carbonate;
wherein said alum is in the amount from 0.5% to 2% by weight
of the joint compound base; and wherein said alum is mixed with the
joint compound base; and
wherein the joint compound system has a viscosity in the range
from 200 to 400 Brabender units.
Appeal Br. A-1. Claim 21, the only other independent claim on appeal, differs
from claim 1 in that it specifies that the alum is "a double sulfate selected from the
group consisting of a double sulfate of potassium and aluminum, a double sulfate
of aluminum and ammonia, and a combination thereof." Id. at A-4.
The claims stand rejected under 35 U.S.C. § I03(a) as follows:
1. claims 1-14, 17, 21, and 22 over Halm (US 6,740,395 B2, issued May
25, 2004) in view of Miller (WO 2005/072948 Al, published Aug. 11, 2005) and
Patel (US 5,653,797, issued Aug. 5, 1997);
2. claims 16 and 23 over Halm in view of Miller, Patel, and Williams
(US 4,454,267, issued June 12, 1984);
3. claims 14, 15, and 22 over Halm in view of Miller, Patel, and
Espinoza (US 5,746,822, issued May 5, 1998); and
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Application 12/621,835
4. claims 1-17, 21, and 23 over Patel in view of Miller and Halm.
The Applied Prior Art
Halm discloses a process for preparing a smooth-surfaced, gypsum (i.e.,
calcium sulfate dihydrate )-coated substrate from a rough-surfaced substrate, such
as fiberboard. Halm 2:38--40, 67. Halm's process involves applying a calcium
sulfate hemihydrate-containing coating composition to a fiberboard surface where
the calcium sulfate hemihydrate hydrates to form gypsum. Id. at 2:47--49, 64---67.
The coating composition contains a set preventer, e.g., a non-calcium bearing
phosphate compound, to inhibit setting until after deposition on the surface of the
fiberboard. Id. at 2:51-53, 4:2--4. A set initiator must be present, either in or on the
surface of the fiberboard, or introduced into the coating as it is applied. Id. at 3:1-
3. Halm discloses that aluminum sulfate is a preferred set initiator because it has
the advantage of rapidly hydrating the calcium sulfate hemihydrate. Id. at 3:7-8,
13-14; see also id. at 4:61---62. According to Halm, "[w]hen set initiators are used
with ready-mixed setting-type joint compounds, it is typical that they are mixed
thoroughly with the ready-mixed joint setting-type compound just prior to use."
Id. at 5: 12-15. Halm teaches that in the disclosed invention, "the ready-mixed
coating composition could be mixed with a set initiator as it is applied, but
preferably, the set initiator is included in the gypsum formulation used in making
the fiberboard or is applied to the top of the fiberboard as it is curing." Id. at 5: 17-
21. Halm explains that "aluminum sulfate is sufficiently active so that its presence
on the surface of the fiberboard is sufficient to begin the setting process, which
then proceeds throughout the coating layer." Id. at 5:21-25. According to Halm,
"[t]he amount of the set initiator will depend on the amount required to overcome
the set preventing effect of the non-calcium bearing phosphates[,] ... [g]enerally,
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Application 12/621,835
about 0.01 to 0.03 wt.% of the set initiator, based on the weight of the premixed
first part of the coating compound, will be used." Id. at 4: 61---66.
Patel discloses "[a] process for the production of a ready-mixed setting-type
joint compound [that] includes the use of calcium sulfate hemihydrate, water, and a
set-retarding agent." Patel, [57]. Patel discloses that a promoter or accelerator is
added to the ready-mix compound just prior to use. Id. at 7: 18-19. "The amount of
accelerator is based generally upon the amount of calcium sulfate hemihydrate and
retarder in the formulation." Id. at 7:19-21. "[A]ccelerators are preferably added in
an amount in the range of about 0.1 to about 5.0 weight percent, and more
preferably about 0.1 to about 2.0 weight percent, based on the weight of the
calcium sulfate hemihydrate in the joint compound composition." Id. at 7:22-26.
Patel discloses that particularly useful accelerators include aluminum sulfate and
aluminum potassium sulfate. Id. at 7:39-40, 45.
Miller discloses an improved process for producing a gypsum/fiber board.
Miller, [54]. The process begins with "mixing of uncalcined gypsum, cellulosic
particles and water to form a dilute aqueous slurry." Id. at 6:24--26. Miller
discloses that the gypsum should have a relatively high purity, preferably at least
about 92-96%. Id. at 6:27-29. The slurry is heated under conditions that cause the
calcium sulfate dihydrate molecules to dissolve and convert to calcium sulfate
hemihydrate molecules. Id. at 7:27-29. "As the conversion of the gypsum to
calcium sulfate hemihydrate proceeds, saturation of the solution is reached, and the
hemihydrate begins to nucleate and form crystals at a nucleation site." Id. at 7:31-
3 3. After conversion, "the slurry is dewatered to remove as much uncombined
water as possible before rehydrating the calcium sulfate hemihydrate back to
gypsum." Id. at 8:8-9. According to Miller, "impurities from various sources in the
gypsum/fiber slurry can cause the calcination process to produce short blocky
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Application 12/621,835
crystals that lack [sic] produce products that are relatively low in strength." Id. at
10: 1-3. "The aspect ratio of [the] crystals is preferably controlled by addition of a
small amount of alum ... to the gypsum/fiber slurry prior to calcination." Id. at
11:7-10. Miller warns that "alum can produce some unwanted effects in the
calcination step and the board-forming process. For example, the alum reacts with
the carbonates that are present in some of the gypsum raw materials and the
reaction forms foam that is difficult to handle in the board-forming process." Id. at
11:15-18.
Rejection of claims 1-14, 17, 21, and 22 over Halm in view of Miller and Patel
The Examiner finds Halm discloses a composition comprising alum, a non-
calcium bearing phosphate, water, and calcium sulfate hemihydrate. Final 2. The
Examiner finds Halm does not disclose that the composition includes calcium
carbonate. Id. The Examiner finds Halm discloses the composition has a viscosity
of 150-500 Brabender units (BU) and includes a specific example of a
composition having a viscosity of 250 BU. Id. at 4. The Examiner finds Miller
discloses a composition comprising alum and high purity gypsum, and that Miller
teaches calcium carbonate negatively reacts with alum causing the composition to
foam, resulting in a material that is difficult to handle. Id. at 3. The Examiner finds
that, based on Miller's teaching, one of ordinary skill in the art would have used a
gypsum in Halm's composition that was substantially free of calcium carbonate in
order to avoid foaming which renders the material difficult to handle. Id. The
Examiner finds Halm and Miller do not specify the amount of alum in the
composition. Id. The Examiner finds Patel discloses a setting-type joint compound
comprising aluminum sulfate as an accelerator in an amount ranging from 0.01-2
wt%. Id. The Examiner finds Patel's range includes the disclosed range of Halm,
and that the ordinary artisan would have recognized that Patel discloses a workable
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Application 12/621,835
range of aluminum sulfate that would be suitable for use in Halm's system and
method. Id. at 3--4.
The Examiner makes similar findings with respect to independent claim 21.
See id. at 5-6. As to claim 21 's requirement of "a double sulfate selected from the
group consisting of a double sulfate of potassium and aluminum, a double sulfate
of aluminum and ammonia, and a combination thereof' (Appeal Br. A-4), the
Examiner finds one of ordinary skill in the art would have substituted aluminum
potassium sulfate for the aluminum sulfate in Halm based on Patel's teaching that
both materials function as accelerators in setting-type joint compounds. Final 6.
Appellants contend the Examiner reversibly erred in rejecting claims 1 and
21 for the following reasons: ( 1) "Halm fails to teach or suggest limiting the
amount of calcium carbonate contaminant in the calcium sulfate hemihydrate and
the total amount of calcium carbonate in the coating" (Appeal Br. 15); (2) Halm
does not mix, and teaches away from mixing, aluminum sulfate with a coating (id.
at 15-17); (3) Halm uses aluminum sulfate in an amount of from 0.01 to 0.03 wt%,
which differs significantly from the claimed amount of 0.5 to 2.0 wt% (id. at 15);
(4) Halm's disclosure of 150-500 BU viscosity compositions relates to
compositions that do not include alum (id. at 17); (5) Miller relates to a different
product (fiber boards) and a different method (calcining gypsum) than claimed
and, therefore, the ordinary artisan would not have looked to Miller (id. at 17-18);
( 6) Miller teaches that a suitable amount of alum is O .1 % ( no more than O .4 % ) and
adding a larger quantity is not practical (id. at 18); and (7) Patel discloses the
addition of0.01-2 wt% aluminum sulfate to a lightweight joint composition
comprising calcium carbonate in an amount of 10 to 50 wt%, and does not disclose
the use of a calcium-free phosphate set-preventing agent (id. at 18-19).
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Application 12/621,835
We have considered each of these arguments, but do not find them
persuasive for the reasons discussed below. Any arguments made by Appellants,
but not discussed explicitly in this decision, have been considered but found
unpersuasive for the reasons explained in the Final Office Action and/or the
Answer.
A reference qualifies as prior art for an obviousness analysis only when it is
analogous to the claimed invention. Innovention Toys, LLC v. MGA Entm 't, Inc.,
637 F.3d 1314, 1321 (Fed. Cir. 2011) (citing In re Clay, 966 F.2d 656,658 (Fed.
Cir. 1992)). We are not persuaded that Miller is non-analogous art (Appeal Br. 17-
28) because Appellants have not explained why the Examiner's finding that Miller
is in the same field of the inventor's endeavor, i.e., gypsum chemistry, is erroneous
or unreasonable. See Ans. 15; Appeal Br. 18 ("Because Miller is not directed to
joint compounds, it is unlikely that a person of skill would consider Miller.");
Reply Br. 10; In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) ("Two separate
tests define the scope of analogous prior art: (1) whether the art is from the same
field of endeavor, regardless of the problem addressed and, (2) if the reference is
not within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)));see also
Bigio, 381 F.3d at 1326 (explaining that field of the invention must be assessed
with reference to the function and structure of the invention relative to the prior
art).
Appellants' arguments that Halm fails to teach or suggest limiting the
amount of calcium carbonate and that Halm uses a much smaller amount of
aluminum sulfate (Appeal Br. 15) are not persuasive because Appellants fail to
identify error in the Examiner's findings and reasoning. Specifically, Appellants
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Application 12/621,835
have not explained why the Examiner erred in finding that the ordinary artisan
would have limited the amount of calcium carbonate in Halm's system and method
based on Miller's teaching that calcium carbonate negatively reacts with alum
causing the composition to foam, resulting in a material that is difficult to handle.
See Final 3.
Nor have Appellants persuasively explained why the Examiner erred in
finding that the ordinary artisan would have understood that the higher amounts of
aluminum sulfate used by Patel (i.e., preferably 0.1 to about 2.0 weight percent
(Patel 7:22-24)) also could be employed in Halm's system and method. Both Halm
and Patel disclose that the amount of accelerator needed to promote or accelerate
the setting of the ready-mix joint compound is based on the amount of calcium
sulfate hemihydrate and retarder in the composition. Halm 3: 8-12; Patel 7: 17-21.
In other words, alum is a variable that achieves a recognized result. See In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in
the prior art that a property is affected by the variable is sufficient to find the
variable result-effective."). "[D]iscovery of an optimum value of a result effective
variable ... is ordinarily within the skill of the art." In re Boesch, 617 F.2d 272,
276 (CCPA 1980) (citations omitted). Further, as found by the Examiner, Patel's
range overlaps with the claimed range. Final 3. "[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his invention
would not have been obvious." In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir.
2003).
We are not persuaded by Appellants' argument that Miller teaches away
from adding more than 0.4% alum to Halm's system and method. See Appeal Br.
18. Miller discloses that "[t]ypically, about 0.10% of alum is used for rehydration
of the hemihydrate to the dihydrate in the formed composite," and that "[fJor use as
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Application 12/621,835
a crystal modifier ... about 0.4% solids based on the total slurry[] is sufficient to
overcome problems caused by impurities." Miller 12:8-13. We agree with the
Examiner that this disclosure would not have discouraged the ordinary artisan from
using higher amounts of alum in Halm in light of Patel's teaching that higher
amounts are suitable where alum is used as an accelerator. See Ans. 16-17.
We also are not persuaded that the ordinary artisan would not have used the
amount of aluminum sulfate disclosed in Patel in Halm's composition because
Patel discloses the "accelerator is used in combination with calcium carbonate."
Appeal Br. 18-19. Rather, we agree with the Examiner that calcium carbonate is
an optional component in Patel's composition. Ans. 16; Patel 3:43--45 ("In addition
to the calcium sulfate hemihydrate filler, calcium carbonate may also be present as
a filler.").
Appellants contend the disclosure in Halm relied upon by the Examiner does
not support the Examiner's finding that Halm teaches mixing alum with the
coating composition, and, in fact, Halm teaches away from mixing alum with the
coating composition. Appeal Br. 15 ( quoting Halm 3: 12-15); Reply Br. 4--5
(quoting Halm 2:62-3:17). Appellants rely on the Declaration of Richard B.
Stevens, dated Aug. 6, 2014 (Deel.), to support this argument. Appeal Br. 16-17;
see also Reply Br. 6. Mr. Stevens is the named inventor in the present application
and a co-inventor in Halm. Appeal Br. 13; Deel. ,r,r 1, 3. Mr. Stevens testified that
"[a]fter reading Halm, [he] would not mix aluminum sulfate with a coating
composition because Halm recommends that aluminum sulfate should be applied
into or on the surface of a fiberboard . . . and teaches away from mixing aluminum
sulfate with the coating composition." Deel. ,r 7. Mr. Stevens testified that the
inventors "did not intend to mix aluminum sulfate with a ready mixed setting type
coating composition based on calcium sulfate hemihydrates." Id. ,r 8. Mr. Stevens
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Application 12/621,835
testified that "as ... explain[ ed] in the Hahn patent, any inclusion of the alum into
the coating would immediately initiate the setting action ... thus making it not
suitable in a continuous coating process using a reverse roll coating equipment."
Id.
As explained below, we determine the claim language "wherein said alum
[( claim 1 )/double sulfate ( claim 21 )] is mixed with the joint compound base" is an
intended use of the components in the claimed 'joint compound system" ( claims 1,
21 ). Therefore, this language cannot be relied upon to distinguish over the prior art
joint compound systems. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974)
("[T]erms [that] merely set forth the intended use for ... an otherwise old
composition ... do not differentiate the claimed composition from those known in
the prior art.").
The Specification discloses that
[a] joint compound system for a setting-type joint compound has been
developed having excellent shelf life in a ready-mixed state and fast
setting times after an activating agent has been added. This system
includes a set-inhibited, pre-wetted, setting-type joint compound and a
separate portion of alum that is added at the time the joint compound
system is to be used.
Spec. 5 :21-26 ( emphasis added); see also id. at 4: 11-17 ("a joint compound
system that includes a set-inhibited, pre-wetted, setting-type joint compound
formulated with additives to allow delivery to the customer as a ready-mix joint
compound, and a separate set initiator" ( emphasis added)). Though not recited
explicitly, the viscosity limitation in the final wherein clause in each of claims 1
and 21 implies that the calcium-free phosphate set-preventing agent, water, and
setting type joint compound base are pre-mixed in the joint compound system. See,
e.g., Spec. 10:17-20, 13:5-11. Once the alum is mixed with the remaining
components in the joint compound system, it forms a composition that is "capable
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Application 12/621,835
functioning as a setting type joint compound," "producing a hard set article in a
matter of minutes or hours." Spec. 11: 14--21. In other words, it would be
unreasonable to interpret the claim language as requiring that the alum is mixed
with the joint compound base and remaining recited components in the claimed
'joint compound system."
In any event, even if the claims were interpreted as requiring that the alum is
mixed with the joint compound base, Appellants have not identified reversible
error in the Examiner's conclusion of obviousness as to claims 1 and 21. We agree
with the Examiner that Mr. Stevens' s testimony is not persuasive evidence of
patentability. Ans. 13. As explained by the Examiner, the subjective intent of the
inventors is not the measure of what their patent disclosure would have conveyed
to the ordinary artisan at the time of the invention. Id.; cf Wyers v. Master Lock
Co., 616 F.3d 1231, 1242 (Fed. Cir. 2010) (explaining that whatever the inventor
did or did not personally realize at the time based on his actual knowledge is
irrelevant-the relevant inquiry is what a hypothetical ordinarily skilled artisan
would have gleaned from a cited references at the time that the patent application
was filed). Moreover, Mr. Stevens's testimony is unpersuasive because he fails to
identify supporting evidence. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1368 (Fed. Cir. 2004) (explaining that the Board is entitled to weigh
declarations expressing opinions as to fact and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the declarations); cf
In re Bulina, 362 F.2d 555,559 (CCPA 1966) ("[A]n affidavit by an applicant or
co-applicant as to the advantages of his invention is less persuasive than one made
by a disinterested person.").
We have reviewed the cited disclosure in Halm and concur in the
Examiner's reading of Halm as disclosing that alum may be either mixed with the
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coating composition and then applied to the fiberboard, or present on the surface of
the fiberboard prior to applying the coating composition. See Ans. 13; Halm 3: 13-
17 ("Using a very active set initiator such as aluminum sulfate has the advantage of
rapidly hydrating the calcium sulfate hemihydrate so that it does not need to be
mixed with the coating composition, but may be merely on the surface of the
fiberboard." ( emphasis added)); see also Halm 4:66-5:3, 5:11-23. Halm, at most,
expresses a preference for applying the alum to the surface of the fiberboard to
avoid a step of mixing the alum with the coating composition. See Syntex (US.A.)
LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) ("A statement that a
particular combination is not a preferred embodiment does not teach away absent
clear discouragement of that combination.").
In addressing the Stevens Declaration, the Examiner disagrees with Dr.
Stevens's opinion that Halm does not disclose a joint compound as claimed, but
relates to coating compositions applied over fiberboards (Deel. ,r 5). Ans. 13. In the
Reply Brief, Appellants argue that joint compounds and coating compositions "are
different products with different chemical compositions and they differ in various
properties, including viscosity, setting time, shrinkage, workability, working time,
and application." Reply Br. 8. Appellants do not provide persuasive evidence to
support these assertions, however. Moreover, Halm explicitly refers to the 'joint
compounds of the invention" (Halm 4:45--46) and uses the term "coating
composition" interchangeably with the term 'joint compound" (id. at 4:37--42).
See Ans. 14.
Finally, as to Appellants' argument that the compositions in Halm having a
viscosity of 150-500 BUs do not comprise alum (Appeal Br. 17), we find the
Examiner has provided sufficient evidence to support a finding that the
combination of Halm, Miller, and Patel would have resulted in a composition as
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claimed and, therefore, reasonably would have been expected to exhibit the same
viscosity as the claimed composition. See Ans. 14--15.
Appellants also rely on secondary considerations of non-obviousness.
Specifically, Appellants argue the "an inventive joint compound as recited by the
pending claims provides significant advantages over joint compounds
conventionally known in the art." Appeal Br. 19. Appellants contend the examples
in Specification Table II demonstrate that "if alum is added to a joint compound
with calcium carbonate, a person of skill obtains a defective product with inferior
properties" as compared to a product produced using the claimed joint compound
system. Id. Specification Table II (Spec. 14) provides a comparison of performance
data for a conventional joint compound ("control") containing 16.82 wt% of added
calcium carbonate with the inventive joint compound containing no added calcium
carbonate, but containing 16.82 wt% talc (see id. at 12, Table I). 0.60 g, 0.80g, and
1. 7 5 g of alum were added to separate, 100 gram samples of the control and
inventive joint compounds to form six samples. See id. at 14, Table II. Set times
and mixing properties of the three control samples and the three inventive samples
were compared. Id. According to the Specification, faster set times were obtained
with the inventive joint compound and, in contrast to the control compound, no
foam was generated and the product did not expand. Id. at 14: 1--4, 7-8.
Appellants' comparative testing is not persuasive evidence of
nonobviousness because it is not commensurate in scope with the claims. See In re
Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). The claims specify that the joint
compound base comprise "calcium sulfate hemihydrate having less than about 2%
by weight contaminant calcium carbonate" and "no added calcium carbonate."
Appeal Br. A-1, A-4 (claims 1 and 21). Appellants' control joint compound
contained 16.82 wt% added calcium carbonate. Spec. 12, Table 1. There is no
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comparison, however, of the inventive joint compound with a compound
containing a much smaller amount of added calcium carbonate, e.g., 1.0 wt% or
less. Nor have Appellants demonstrated that a compound within the scope of the
claims, but containing different additives, would be expected to exhibit the same
type of improved properties as compared to a control compound containing
calcium carbonate. Further, Appellants have not shown criticality in the claimed
range of alum ( claim 1 )/ double sulfate ( claim 21 ). In other words, Appellants have
not tested joint compounds containing alum in amounts just outside the claimed
range. See In re Inland Steel Co., 265 F.3d 1354, 1366 (Fed. Cir. 2001).
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, we determine a preponderance of the evidence, taking into account
Appellants' evidence of unexpected results, weighs in favor of the Examiner's
conclusion of obviousness. The rejection of claims 1-14, 17, 21, and 22 over Halm
in view of Miller and Patel is sustained.
Rejection of claims 16 and 23 over Halm
in view of Miller, Patel, and Williams
Appellants argue Williams fails to cure the deficiencies in the combination
of Halm, Miller, and Patel. Appeal Br. 20. As discussed above, we are not
persuaded of error in the Examiner's rejection of claims 1 and 21 from which
claims 16 and 23 depend, respectively. The rejection of claims 16 and 23 over
Halm in view of Miller, Patel, and Williams is sustained.
Rejection of claims 14, 15, and 22 over Halm
in view of Miller, Patel, and Espinoza
Claims 14 and 22 recite that the joint compound system of claims 1 and 21,
respectively, further comprises a pH control additive for maintaining pH within a
range of about 7 to 8. Appeal Br. A-3-A-4. Claim 15 depends from claim 1 and
recites that the joint compound system further comprises a wetting agent "in an
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amount from about 0.05% to about 1.0% weight of said base composition
excluding water." Id. at A-3.
The Examiner finds "Halm teaches that citric acid may be used in an amount
from 0.1---0.25 wt%, but ... is silent to its use as a pH agent." Final 8. The
Examiner finds Espinoza discloses the desirability of a pH range of 7-8 for ready
mix joint compounds and that such pH can be achieved by using O .1-1 wt% citric
acid in the joint compound. Id. The Examiner finds Halm discloses that wetting
agents may be used in the composition but fails to disclose the amount in which
they can be added. Id. The Examiner finds one of ordinary skill in the art would
have added the wetting agent in an amount of 0.05 to about 1.0 wt% based on
Espinoza's teaching that a wetting agent may be used in a joint compound in minor
amounts ranging from about 0.05 to about 1 wt% prior to adding water. Id.
Appellants argue Espinoza fails to cure the deficiencies in the combination
of Halm, Miller, and Patel, and that Espinoza discourages the use of aluminum
sulfate in combination with calcium carbonate. Appeal Br. 21. Appellants'
arguments are not persuasive of error in the Examiner's conclusion of obviousness.
As discussed above, we are not persuaded of error in the Examiner's
rejection of claims 1 and 21 from which claims 14 and 15, and claim 22 depend,
respectively. Appellants' assertion that Espinoza discourages the use of aluminum
sulfate in combination with calcium carbonate fails to identify error in the
Examiner's reliance on Espinoza for a teaching of adjusting pH using citric acid
and including a wetting agent in the claimed amount. The rejection of claims 14,
15, and 22 over Halm in view of Miller, Patel, and Espinoza is sustained.
Rejection of claims 1-17, 21, and 23 over Patel in view of Miller and Halm
The Examiner finds Patel discloses a composition comprising alum in an
amount of 0.1-2 wt%, water, and calcium sulfate hemihydrate that does not
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include additional calcium carbonate. Final 9. The Examiner finds Patel fails to
disclose the use of a calcium-free phosphate agent and a calcium sulfate that has
less than about 2 wt% contaminant calcium carbonate. Id. The Examiner finds one
of ordinary skill in the art would have included a non-calcium bearing phosphate
retarder in Patel's composition to grant enhanced, set-preventing characteristics, as
taught by Halm. Id. The Examiner finds that, based on Miller's teaching, one of
ordinary skill in the art would have used a gypsum in Halm's composition that was
substantially free of calcium carbonate in order to avoid foaming which renders the
material difficult to handle. Id. at 9-10. The Examiner makes similar findings as to
claim 21, noting that Patel expressly discloses the use of a double sulfate of
potassium and aluminum. See id. at 11-12.
Appellants contend the Examiner reversibly erred in rejecting claims 1 and
21 for the following reasons: (1) Patel discloses the use of calcium carbonate as a
filler and, therefore, does not disclose a joint compound base having no added
calcium carbonate/less than about 2% by weight of contaminant calcium carbonate
(Appeal Br. 22); and (2) Miller teaches that a suitable amount of alum is 0.1 % (no
more than 0.4%) and adding a larger quantity is not practical (id. at 23). Appellants
also argue the claimed composition and method exhibit unexpected results as
compared to the prior art compositions. Appeal Br. 23 ("As shown [in] the
Examples, an inventive joint compound according to the pending claims performs
significantly better in a number of tests in comparison to the control conventional
compound.").
Appellants made the same arguments in traversing the rejection of claims 1-
14, 17, 21, and 22 over Halm in view of Miller and Patel. These arguments were
fully addressed above and are likewise unpersuasive of error in the Examiner's
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rejection of claim 1-1 7, 21, and 23 over Patel in view of Miller and Halm. The
rejection is sustained.
ORDER
We AFFIRM the Examiner's decision to reject claims 1-17 and 21-23.
No time period for taking any subsequent action in connection with this
appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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