Ex Parte Yeung et al

Patent Trials and Appeals Board

Mar 27, 2019

12107396 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/107,396 04/22/2008
45455 7590 03/29/2019
GREER, BURNS & CRAIN, LTD.
300 SOUTH WACKER DRIVE
SUITE 2500
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Lee K. Yeung
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.
4111/2033.79288 9654
EXAMINER
FREEMAN, JOHN D
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEEK. YEUNG, JEFFREY F. GRUSSING, and
CHRISTOPHER J. BOROVKA
Appeal2017-006773
Application 12/107,396
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
May 20, 2016 decision finally rejecting claims 11, 12, and 15-22, which are
all of the claims pending in the application ("Final Act."). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm the rejection under 35 U.S.C. §112, first paragraph, and
reverse the rejection under 35 U.S.C. § 103(a).
1 Appellants identify United States Gypsum Company as the real party in
interest (Appeal Br. 2).
Appeal2017-006773
Application 12/107,396
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to a coated interior panel which
comprises a building panel and a primer coating on "the panel surface
obtained by applying to the panel surface without taping or sanding a
coating" having a specific thickness and composition (Appeal Br. 6-7).
Independent claim 11 is representative of the claimed invention, and is
reproduced below from the Claims Appendix to the Appeal Brief ( emphasis
added):
11. A coated interior panel comprising:
a building panel comprising one of the group consisting
of gypsum panels, cement panels, panels having both gypsum
and cement and mixtures thereof; and
a primer coating on the panel surface obtained by
applying to the panel surface without taping or sanding a
coating having a thickness of about 5 to about 20 mil when said
coating is wet, said coating comprising:
10-40% by weight of a latex emulsion binder
having a molecular weight greater than 10,000 Daltons;
30-80% by weight calcium sulfate hemihydrate;
less than 8% by weight of a dual set inhibiting
agent, wherein the dual set inhibiting agent consists of a first set
inhibiting agent and a second set inhibiting agent, and wherein
the first set inhibiting agent is a compound
of 0.1 % or more by weight selected from the group consisting
of tetrasodiumpyrophosphate, tetrapotassiumpyrophosphate,
aminotri(methylene-phosphonic acid), diethylenetriamine penta
(methylene phosphonic acid) trisodium salt, hexamethylene
diamine tetra(methylene phosphonic acid) and mixtures thereof;
and
the second set inhibiting agent is a polymer
of 0.05% or more by weight andhaving a molecular weight
from 2, 000 Daltons to 6, 000 Daltons and selected from the
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Application 12/107,396
group consisting of a polymer made from monomers including
vinyl acrylates, vinyl acetates, vinyl chlorides, ethylenes,
styrenes, substituted styrenes and mixtures thereof; and
10-40% by weight water; and
wherein said coating does not comprise a set
accelerator.
Appeal Br. (Claims Appendix A-1 ).
REJECTIONS
I. Claims 11, 12, and 15-22 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
because of the use of the phrase "without taping or sanding."
II. Claims 11, 12, and 15-22 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Espinoza2 in view of Vijayendran3 or Sulser4 or
Barker, 5 and Patel 6 or Ayambem 7 and Colbert. 8
DISCUSSION
Rejection I. The Examiner finds (Final Act. 2) that the Specification
discloses that "[f]inishing a wall by applying a veneer plaster coating is
faster than taping, applying joint compound, and sanding" (Spec. 5,
emphasis added). The Examiner determines that this language is insufficient
to describe, within the meaning of§ 112, that the primer coating is applied
2 Espinoza et al., US 5,746,822, issued May 5, 1998.
3 Vijayendran et al., US 6,402,832 Bl, issued June 11, 2002.
4 Sulser et al., US 5,633,310, issued May 27, 1997.
5 Barker, US 4,472,540, issued September 18, 1984.
6 Patel, US 5,779,786, issued July 14, 1998.
7 Ayambem et al., US 6,645,291 B2, issued November 11, 2003.
8 Colbert et al., US 2005/0229519 Al, published October 20, 2005.
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Application 12/107,396
"without taping or sanding" ( emphasis added). We agree with the
Examiner. Appellants argue that the term "or" means "either or both" such
that "either or both (taping and sanding) can be avoided if a primer coating
as defined in claim 11 is used" (Appeal Br. 11-12). However, as admitted
by Appellants, if "or" means "either or both," then it is not supported by the
Specification, which clearly states that the advantage of the disclosed
method is that it is faster than "taping, applying joint compound, and
sanding" (Spec. 5). Accordingly, we agree with the Examiner that the
disputed claim language is not adequately described in the Specification as
filed. Should prosecution continue Appellants may wish to consider
amending the claim to recite "without taping and sanding."
Rejection II. The Examiner finds that Espinoza discloses a
cementitious composition which is stable in a ready-mixed state and "can be
used as a joint compound for finishing seams between gypsum drywall
panels" (Final Act. 3, citing Espinoza, 1:9+). The Examiner further finds
that:
The composition comprises 1-15% by weight of a latex
emulsion binder, 20-90% by weight of calcium sulfate
hemihydrate, 0.1-10% by weight of set retarder phosphate
compound, and an amount of water required to provide the
desired viscosity. The composition can be used as a drying
type joint compound that does not use an accelerator.
(Final Act. 3, internal citations omitted.). The Examiner relies on the
principle of overlapping ranges to determine that the claimed ranges for the
foregoing components would have been obvious (id.). The Examiner finds
that while Espinoza teaches that conventional latex binders may be used
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Application 12/107,396
with its composition, it is silent with regard to the molecular weight of that
binder (id.). The Examiner relies on Vijayendran or Sulser or Barker as
suggesting the use of binders with the claimed molecular weights (Final Act.
3--4).
The Examiner also finds that Espinoza does not disclose the use of set
retarder other than one falling within the scope of the first set inhibiting
agent, but that Patel and Ayambem each disclose the use of set retarders
which fall within the scope of the second set inhibiting agent, and further
determines that it would have been obvious to use such set retarders in
Espinoza's composition (Final Act. 4--5). Finally, the Examiner determines
that Colbert discloses the claimed primer layer thickness, and that it would
have been obvious to use Espinoza's composition at such a thickness (Final
Act. 5).
Appellants argue that ( 1) the combination of references "fails to
produce a coated interior panel as defined by pending claims 11, 12, and 15-
22," (2) a person of skill [in the art] would not have a reasonable expectation
of success that modifying a joint compound provided in Espinoza with the
rest of the cited references would result in a coated interior panel with
improved ability to bond plaster, as defined by the pending claims," and (3)
the Examiner has not established an adequate reason to combine all of the
references as required for the rejection (Appeal Br. 13).
With regards to argument (1 ), Appellants correctly state that claim 11
is directed to a coated interior panel comprising a panel and a primer coating
on the panel surface, where the coating does not comprise a set accelerator
(id.). Appellants contend that Espinosa does not disclose an interior panel
comprising a building panel and a primer coating on the panel surface
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Application 12/107,396
because Espinoza's compound is for finishing seams between drywall panels
(Appeal Br. 15). Appellants also argue that Espinoza teaches that if its
composition is used without an accelerator (the claimed panel uses a primer
coating without an accelerator) it would shrink sufficiently to require
sanding and, therefore, would be outside the scope of the claim (Appeal Br.
15-16). In addition, Appellant argues that because Espinoza's composition
sets very slowly in the absence of a set accelerator, a person of skill in the art
would not have been motivated to add a second set retarder, as recited in
claim 11 because this would delay the setting process even more (Appeal Br.
16-17).
In response, the Examiner determines that the term "panel surface" as
used in the claim "encompasses all surfaces of the panel, including edge and
side surfaces" such as would be covered if Espinoza's composition were
used in joints between panels (Ans. 7).
However, as explained by Appellants, Espinosa is explicit in stating
that its composition can only be used without an accelerator when it is used
as a drying type joint compound (i.e. not on what Appellants assert is the
"panel surface").
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
In this instance, we agree with Appellants that the term "panel
surface" means the visible surface created by the building panels. This
conclusion is supported by the distinction made the Specification between
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the joints and the panel surface (see, e.g. Spec. 1: 12-17). This conclusion is
buttressed by the disclosures in Espinoza (1 :9-21) and Patel (1: 10-20)
which seek to distinguish between the joints between the panels (i.e. the
edges of the panels) and the panel surfaces.
The claims do not require that the coated panels have a primer coating
on the entire panel surface, or even a substantial portion of the panel surface.
Instead, claim 11 simply recites "a primer coating on the panel surface."
Thus, even a small amount of primer on the panel surface would satisfy this
claim limitation. However, a drying joint compound, which is the only use
of Espinoza's composition which would not require the use of a set
accelerator as required by the present claims, is only used between the joints,
not on the surface of the panel. 9 Thus, the use of Espinoza's composition
without a set accelerator would not produce a panel with a primer on the
panel surface.
Thus, we agree with Appellants that the art does not teach or suggest
the use of a coating without a set accelerator on a panel surface. The
Examiner has the initial burden of establishing a prima facie case of
obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prim a f acie case of
unpatentability."). To establish a prima facie case of obviousness, the
9 For example, Espinoza describes that its composition can be used as "joint
compounds for finishing seams between gypsum drywall panels" and as
"spackling compounds" ( which would go on the surface of the panel) but
specifically states that only its use "a drying type joint compound" can be
done without an accelerator.
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Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the art of record does not teach or
suggest the use of the claimed primer composition - without a set
accelerator- on the panel surface. Accordingly, we reverse the§ 103(a)
rejection.
CONCLUSION
We AFFIRM the rejection of claims 11, 12, and 15-22 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement because of the use of the phrase "without taping or
sanding."
We REVERSE the rejection of claims 11, 12, and 15-22 under
35 U.S.C. § 103(a) as unpatentable over Espinoza in view ofVijayendran or
Sulser or Barker, and Patel or Ayambem and Colbert.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8