Ex Parte Wada et al

Patent Trial and Appeal Board

Oct 5, 2016

12663302 (P.T.A.B. Oct. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/663,302 12/07/2009
77464 7590 10/07/2016
IPUSA, PLLC
1054 31ST STREET, N.W.
Suite 400
Washington, DC 20007
FIRST NAMED INVENTOR
Masahiro Wada
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.
09YS-001 2893
EXAMINER
STACHEL, KENNETH J
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
10/07/2016 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):
IPUSA@IPUSAPAT.COM
ips@itohpat.co.jp
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAHIRO WADA, TO MOY A HASEGAWA,
SHIZUO TAIRA, and TSUNEO TSURUZAWA1
Appeal2015-002603
Application 12/663,302
Technology Center 1700
Before CHUNG K. PAK, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 6, 9, 13, and 14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a gypsum board having mold
resistance. E.g., Spec. 1: 5-11; Claim 6. Claim 6 is reproduced below from
page 14 (Claims Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is YOSHINO
GYPSUM CO., LTD. App. Br. 3.
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Application 12/663,302
6. A gypsum board having mold resistance, comprising:
a gypsum core containing first and second anti-mold agents and
a waterproofing agent, the first and second anti-mold agents each
having a water solubility of 200 ppm or less; and
gypsum board paper covering two surfaces of the gypsum core,
wherein a mixture consisting of the first and second anti-mold
agents each having a water solubility of 200 ppm or less and
starch is applied on a surface of the gypsum board paper, said
surface being out of contact with the gypsum core, and
the first anti-mold agent is 2-( 4-thiazolyl)-benzimidazole (TBZ)
or 2-benzimidazol carbamic acid methyl ester (BCM), and the
second anti-mold agent is 3-iodo-2-propyl butyl carbamate
(IPBC).
REJECTIONS ON APPEAL
1. Claims 6, 9 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Wang et al. (US 2007 /0022913 A 1,
published Feb. 1, 2007), Tinetti et al. (US 2010/0256204 Al, published Oct.
7, 2010), Veeramasuneni et al. (US 2004/0005484 Al, published Jan. 8,
2004), Marks et al. (US 2006/0169431 Al, published Aug. 3, 2006), and
Nakanoya (JP 2002-256240, published Sept. 11, 2002),2 further in view of
the definition of "thiabendazole" in Hawley's Chemical Dictionary (14th ed.
2002).
2. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Wang, Tinetti, V eeramasuneni, Marks, and
Nakanoya, further in view of the definition of "thiabendazole" in Hawley's
2 The Appellants and the Examiner rely on the machine translation of record.
We do the same.
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Chemical Dictionary, and further in view of Carlson et al. (US
2006/0040122 Al, published Feb. 23, 2006).
ANALYSIS
The Appellants state that the claims stand or fall together and that
claim 6 is representative of the claims on appeal. See App. Br. 7. Therefore,
we limit our discussion to claim 6, reproduced above.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner's
rejections. Accordingly, we affirm the rejections for reasons set forth below,
in the Final Action, and in the Examiner's Answer. See generally Final Act.
2-12; Ans. 2-9.
The claim limitation in dispute is "wherein a mixture consisting of the
first and second anti-mold agents each having a water solubility of 200 ppm
or less and starch is applied on a surface of the gypsum board paper, said
surface being out of contact with the gypsum core" (emphasis added).
The Examiner finds that Wang teaches the use of biocides in gypsum
board covering (i.e., board paper) and core, and that Wang teaches that
starch can "increase paper bond and strengthen product." Final Act. 3;
Wang i-fi-138-39. The Examiner finds that "Wang does not disclose that the
starch is present in the paper or facing of the gypsum board." Final Act. 4.
The Examiner finds that V eeramasuneni teaches a gypsum board comprising
biocides and starch. Id. at 4--5. The Examiner finds that Veeramasuneni
further teaches that, when the gypsum board is dried, water evaporates at the
surface, drawing "by capillary action from the interior of the panel to replace
the surface water," which "assists migration of the starch and the [biocide]
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into the paper of the gypsum board." Id. at 5; Veeramasuneni iii! 28, 36.
The Examiner finds that the result is a starch/biocide mixture on the paper,
facing away from the gypsum core. Final Act. 5.
The Examiner finds that Wang as modified by Veeramasuneni "does
not expressly disclose the mixture of biocides of TBZ or BCM and IPBC in
the core and at the surface of the paper facing away from the gypsum
board." Id. at 5. However, the Examiner finds that Tinetti teaches the
inclusion of mixtures of biocides, including TBZ and IPBC, both "in or on
the facing paper" and in the core. Id.; Tinetti iii! 18, 31, 34.
The Examiner finds that Wang as modified by V eeramasuneni and
Tinetti does not expressly disclose applying a mixture of biocides and starch
on a surface of the paper facing away from the gypsum core. Final Act. 6-9.
The Examiner determines, however, that the "wherein a mixture" limitation
of claim 6 includes product-by-process limitations that are non-limiting, and
the Examiner finds that Marks teaches (1) the addition ofbiocides (including
TBZ and IPBC) and starch to a pulp slurry during the manufacture of paper
and paperboard, and (2) that the finished paper may be secondarily treated,
including by surface treatment or coating, with a biocide to provide
additional resistance to microbial growth. Id. at 6-8; Marks iii! 23, 36, 40,
44.
The Examiner finds that Nakanoya teaches a starch paste including
biocides that is applied to the surface of wallpaper for an anti-mildewing
effect. Final Act. 8-9; Nakanoya if 13. The Examiner finds that Nakanoya
would have motivated a person of ordinary skill in the art to add a starch to
the secondary biocide "surface treatment" of Marks, and that, when a surface
treatment mixture of biocide/starch is applied to the biocide/starch/pulp
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paper of Marks, the resulting product meets or renders obvious the
limitations of claim 6, notwithstanding the fact that the mixture that is
applied to the surface may only include a single biocide. See Ans. 4--6.
The Appellants argue that the Examiner erroneously interpreted the
"wherein a mixture consisting of ... is applied on" limitation to include
product-by-process elements, and that the mixture of Marks cannot meet that
limitation because it includes paper pulp in addition to biocides and starch.
See App. Br. 8-9.
Those arguments do not persuade us of reversible error. Claim 6
recites a product (gypsum board), not a process. The "wherein a mixture
consisting of [biocides and starch] is applied on a surface of the gypsum
board paper" limitation is a process-like limitation to the extent that it
specifies how the gypsum board is made, i.e., by applying a particular
mixture to a surface. However, as the Appellants argue, see App. Br. 8, the
process-like limitation imparts certain structure to the product because, when
the biocide/starch mixture is applied to a surface of the gypsum board
(process), the surface of the gypsum board now comprises the surface paper,
biocides, and starch (product).
Notwithstanding the "mixture consisting of' language of claim 6,
however, an important issue is what product results from the process step of
applying that mixture to the surface of the paper. The Examiner finds that,
when the mixture is applied to the paper, as recited by claim 6, the resulting
product comprises the biocides/starch mixture and the paper to which it is
added. See Ans. 4. More specifically, the Examiner finds that, because
Marks teaches a paper of a biocide, starch, and pulp, if a second biocide is
added to the surface of the paper as suggested by Marks i-f 44, the end result
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is a paper surface that consists of two biocides, starch, and paper (pulp). Id.
at 4--5; see also Veeramasuneni i-f 3 6 (discussing "migration of the starch and
[biocide]" due to "capillary action" during drying of gypsum board). The
Examiner finds that product to be structurally the same as the product of
claim 6; i.e., a gypsum board paper surface that has biocides and starch on it.
Id.
The Appellants point out that the paper slurry of Marks "includes pulp
in addition to the biocides and starch," and therefore "fails to meet the
limitation of 'a mixture consisting of the first and second anti-mold agents
... and starch.'" See App. Br. 9 (emphasis in original). That argument is
not persuasive because it does not meaningfully address the Examiner's
rationale. There is no dispute that the slurry of Marks includes paper pulp.
As explained above, however, the Appellants claim is not directed to a
specific mixture of biocides/ starch or to a method of making gypsum board;
the Appellants claim the gypsum board that results from applying the
mixture to a paper surface of the gypsum board. The Examiner finds that,
when the biocide surface treatment of Marks, which the Appellants do not
meaningfully discuss, is applied to the biocide/starch/pulp paper of Marks,
the resulting gypsum board product meets the structural limitations of claim
6. The Appellants' argument that the slurry of Marks includes pulp does not
persuasively refute the Examiner's findings or otherwise identify error in the
Examiner's rationale. Accordingly, the Appellants fail to show reversible
error in the rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("it has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections").
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That Nakanoya's starch paste includes ingredients other than biocides
and starch, and therefore does not "consist[] of' solely biocides and starch,
as recited by claim 6, see App. Br. 9-11, does not establish reversible error
in the Examiner's rejection. Nakanoya simply discloses an alternative anti-
microbial starch/biocide paste for application to paper. Cf In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's mere disclosure of more
than one alternative does not constitute a teaching away from any of the[]
[disclosed] alternatives because such disclosure does not criticize, discredit,
or otherwise discourage the solution claimed .... "). The Appellants have
not persuasively argued that Nakanoya would have suggested to a person of
ordinary skill in the art that Nakanoya's additional ingredients are required
elements of an effective surface treatment. See Ans. 7-9. Moreover, and as
set forth in more detail below, Marks alone would have suggested the
addition of starch to its surface treatment because it teaches that starch
"synergistically improves" the efficacy of the fungicide, at least in part
because it improves adhesion to the paper fibers. Marks Abstract, i-f 23; cf
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) ("[T]he
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.").
Even if we were to agree with the Appellants that the Examiner's
product-by-process interpretation of claim 6 is incorrect, the merit of the
Examiner's rejection does not hinge on the disputed interpretation of
claim 6. As the Examiner finds, the use of TBZ, IPBC, and starch in
gypsum board was well known in the art. Wang, Veeramasuneni, Tinetti,
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Marks, and Nakanoya each teach biocide/starch mixtures. E.g., Wang iii! 38,
39; Veeramasuneni iii! 9, 28; Tinetti iii! 18, 21, 34; Marks iii! 36, 40;
Nakanoya iii! 13, 20. Multiple references teach that biocides can be added to
either the gypsum core or covering (i.e., paper). E.g., Wang if 38; Tinetti iii!
11, 34; Marks iii! 40, 44; Nakanoya if 13. Tinetti teaches mixtures of two or
more biocides, including TBZ and IPBC, in combination with starch. Tinetti
iii! 21, 34. Marks teaches the combination of a fungicide such as TBZ or
IPBC with starch to be mixed with a paper slurry during a paper or
paperboard manufacturing process. Marks iii! 36, 40. Marks teaches that the
starch "synergistically improves" the efficacy of the fungicide, at least in
part because it improves adhesion to the paper fibers. Id. at Abstract, if 23.
Marks teaches that, after the paper has been manufactured, "additional
resistance to microbial growth" may be achieved by "second[ ary]
treat[ment] .... such as ... surface treatment or coating." Id. if 44.
While Marks does not expressly teach that the secondary treatment
includes two biocides and starch, it would have been obvious to do so. As
explained above, the use of a mixture of two biocides and starch is taught or
suggested by the prior art. Marks itself expressly teaches both TBZ and
IPBC, and it teaches that starch "synergistically improves" the efficacy of
the biocide. Tinetti establishes that mixtures of biocides, including TBZ and
IPBC, are known for use "in or on the facing paper," Tinetti if 21, and Marks
teaches or suggests that the efficacy of such a mixture could be improved by
mixing with starch, Marks if 23. Thus, the use of a "surface treatment," as
taught by Marks if 44, consisting of TBZ, IPBC, and starch, would have
simply been the use of known elements according to their established
functions with predictable results. Cf KSR, 550 U.S. at 416 ("The
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combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.").
On the record before us, the Appellants have not identified reversible
error in the Examiner's obviousness rejection of claim 6.
CONCLUSION
We AFFIRM the Examiner's rejection of claims 6, 9, 13, and 14.
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
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