USG Interiors, LLC.Download PDFPatent Trials and Appeals BoardDec 1, 20212020004867 (P.T.A.B. Dec. 1, 2021) Copy Citation 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. 15/071,765 03/16/2016 Donghong Li 4601/4939.118687 8524 45455 7590 12/01/2021 GREER, BURNS & CRAIN, LTD. 300 SOUTH WACKER DRIVE SUITE 2500 CHICAGO, IL 60606 EXAMINER HUANG, CHENG YUAN ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 12/01/2021 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 ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONGHONG LI Appeal 2020-004867 Application 15/071,765 Technology Center 1700 Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and DONNA M. PRAISS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5, and 9. Claims 10–14 have been withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as United States Gypsum Company. (Appeal Br. 5.) Appeal 2020-004867 Application 15/071,765 2 CLAIMED SUBJECT MATTER The claims are directed to an interior acoustical ceiling tile coated with an acoustically transparent coating which creates pores on the surface of the tile. (Spec. 2.). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A ceiling tile with an estimated noise reduction coefficient (eNRC) of at least 0.85, the ceiling tile being coated on at least one surface with an acoustically transparent coating which creates pores at the ceiling tile surface, and wherein the coating comprises at the time of application to the ceiling tile a high Tg polymeric binder, titanium dioxide, and void latex particles comprising a water-filled or air-filled core surrounded by a shell which comprises a thermoplastic polymer, the void latex particles having a diameter from 100 nm to 500 nm, wherein the ratio of the high Tg binder to the void latex particles in the coating is in the range from about 1:3 to about 3:1, respectively; and wherein the void latex particles create the pores at the ceiling tile surface after the coating has been applied to the ceiling tile. The following rejections are presented for our review: I. Claims 1–3, 5, and 9 stand rejected by the Examiner under 35 U.S.C. § 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. (Final Act. 2–3.) II. Claims 1–3, 5, and 9 stand rejected under 35 U.S.C. §112 (b) or 35 U.S.C. §112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter. (Final Act. 3.) Appeal 2020-004867 Application 15/071,765 3 III. Claims 1–3, 5, and 9 stand 35 U.S.C. §103 over Caldwell (US 6,103,360, iss. Aug. 15, 2000) in view of Dow (Ropaque™ Ultra Opaque Polymer, Technical Data Sheet Form No. CM10N015, Rev.0(1−14)(2010)) and evidenced by McCarthy (US 5,229,247, iss. July 20, 1993). (Final Act. 4–7.) IV. Claims 1–3, 5, and 9 stand 35 U.S.C. §103 over Hasegawa (US 2006/0135709 A1, pub. June 22, 2006) in view of Adamson (Polymeric Hiding Technologies That Make TiO2 Work Smarter, Painting & Coatings Industry (1−5)(2011)). (Final Act. 7–10.) OPINION Written Description Requirement Claims 1–3, 5, and 9 stand rejected by the Examiner under 35 U.S.C. § 112(a) or 35 U.S.C. §112 (pre-AIA), first paragraph as failing to comply with the written description requirement. We sustain. The Examiner determines independent claim 1’s recitation, a shell which comprises “a thermoplastic polymer,” is not supported by the original Specification. (Final Act. 2–3.) The Examiner determines the Specification provides support for a shell comprising polystyrene, acrylic latex, or a mixture of polystyrene with acrylic latex or a thermoplastic polymer with Tg in the range from 60°C to about 110°C. (Final Act. 2–3; Spec. 5, ll. 8–12.) The Examiner determines the original Specification as filed fails to recite or suggest thermoplastic polymers that do not have Tg in the range from 60°C to about 110°C. (Final Act. 3.) Appeal 2020-004867 Application 15/071,765 4 Appellant argues the Specification provides support for “void latex particles comprising water-filled or air-filled core surrounded by a shell which comprises a thermoplastic polymer, as recited in the present claims.” (Appeal Br. 9–11; citing Spec. 5, l. 3 to 6, l.11.) Appellant argues the Specification provides examples of void latex particles which are commercially available to person of skill. (Appeal Br. 11.) The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562−63 (Fed. Cir. 1991) (citation omitted)). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Id. (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. [Ariad] “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. We have fully considered Appellant’s evidence and argument and the Examiner’s findings regarding this matter. We find that the preponderance of the evidence favors the Examiner’s finding that the claim lacks written descriptive support by its recitation that a shell comprises a thermoplastic polymer. While the Specification reasonably conveys support for a shell which comprises a thermoplastic polymer that does have Tg in the range from 60°C to about 110°C, the addition to the claim that specifies Appeal 2020-004867 Application 15/071,765 5 “thermoplastic polymer” (that does not have Tg in the range from 60°C to about 110°C) introduces a new concept to the written description. Appellant has not directed us to evidence that establishes the commercially available void latex particles of the Specification examples have a Tg that is outside of the range from 60°C to about 110°C. For the foregoing reasons and those the Examiner presents, we sustain the rejection of claims 1–3, 5, and 9 under 35 U.S.C. § 112(a) or 35 U.S.C. §112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Indefiniteness Claims 1–3, 5, and 9 stand rejected by the Examiner under 35 U.S.C. § 112 (b) or 35 U.S.C. §112 (pre-AIA), second paragraph as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. We reverse. The Examiner determines: Claim 1 recites a coating that comprises “at the time of application to the ceiling tile . . .”, “void latex particles comprising a water-filled or air-filled core”, and “wherein the void latex particles create the pores at the ceiling tile surface after the coating has been applied to the ceiling tile” which is confusing given that it is not clear what is being claimed. It is not clear what is the final structure of the claimed ceiling tile, in particular, the void latex particles in the coating. Namely, it is not clear whether the void latex particles still comprise a water-filled or air-filled core in the final structure. (Ans. 4.) In determining whether a claim is unpatentable as indefinite, we look to whether those skilled in the art would have understood what is claimed when the claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Appeal 2020-004867 Application 15/071,765 6 The Specification discloses “after the acoustically transparent coating is applied over a ceiling tile, water from the void latex particle core evaporates. This results in a coating with air-filled voids.” (Spec. 6, ll. 7– 11.) Consequently, in light of the Specification, we find that a person of ordinary skill in the art would have understood the void latex particles in the coating of the final structure of the claimed ceiling tile have an air-filled core in independent claim 1. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph. Prior Art Rejections Claims 1–3, 5, and 9 stand rejected under 35 U.S.C. § 103 over Caldwell in view of Dow and evidenced by McCarthy. (Final Act. 4–7.) We sustain. We review the appealed rejection for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)) After having considered the evidence presented in this Appeal and each of Appellant’s contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner’s § 103 rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. The Examiner finds Caldwell teaches a ceiling tile coated on at least one surface with an acoustically transparent coating comprising a polymeric binder and titanium dioxide (Final Act. 4; Caldwell col. 3, ll. 18−47). The Appeal 2020-004867 Application 15/071,765 7 Examiner finds Caldwell teaches high Tg acrylic latex (Hycar 26256) as evidenced by McCarthy. (Final Act. 4.) The Examiner finds Caldwell fails to teach void latex particles. (Final Act. 4.) The Examiner finds Dow discloses the use of Ropaque™ Ultra Opaque Polymer which are void latex particles having a diameter of 400 nm. (Final Act. 5; Dow 1.) Dow discloses the void latex particles are utilized in paint formulations to reduce the level of TiO2. (Dow 1–2.) The Examiner finds Dow’s Ropaque™ Ultra Opaque Polymer is identical to the void latex particles used in the present invention. (Final Act. 5.) The Examiner determines that it would have been obvious to one of ordinary skill in the art to include void latex particles in coating compositions such as described by Caldwell to reduce the amount of TiO2 and provide significant cost savings with equal properties. (Final Act. 5.) The Examiner determined that the composition resulting from the combination of Caldwell and Dow would meet the noise reduction requirements of the claimed invention. (Final Act. 6.) Appellant argues neither Caldwell nor Dow disclose or suggest an acoustical property for any of the paints or coatings or what modifications are necessary to improve an acoustical property of a coating. (Appeal Br. 14–15.) Appellant argues that because both Caldwell and Dow are concerned only with light scattering properties, a person of skill cannot reasonably expect that a combination of a high Tg polymeric binder, titanium dioxide, and the void latex particles as recited in the present claims would produce an acoustically transparent coating. (Appeal Br. 16.) Appellant’s arguments are not persuasive of reversible error. Appellant has not refuted the Examiner’s reasons for combining the teachings of Caldwell and Dow—to reduce the amount of TiO2 and provide significant cost savings with equal properties. (Final Act. 5). The apparent Appeal 2020-004867 Application 15/071,765 8 reason for combining the teachings of the applied prior art need not be identical to the reason contemplated by Applicants to establish obviousness. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“As long as some [reason,] motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.”); KSR Int’l Co., 550 U.S. 398, 420) (“[U]nder 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.”) On this record, Appellant has not shown that utilization of void latex particles in place of TiO2 for the reasons provided in Dow alters or destroys the performance of Caldwell’s ceiling tile coating compositions. Moreover, there is no absolute requirement that each claim limitation be disclosed in a prior art reference. See, e.g., Takeda Chem. Indus. v. Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007) (“We have held that structural similarity between claimed and prior art subject matter, proved by combining references or otherwise, where the prior art gives reason or motivation to make the claimed compositions, creates a prima facie case of obviousness.”); Tegal Corp. v. Tokyo Electron Am., Inc., 257 F.3d 1331, 1349 (Fed. Cir. 2001) (acknowledging that a claim could be obvious over a single prior art reference that does not disclose one of the limitations in the claim). Rather, in all cases, the touchstone of the analysis is whether the “differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” 35 U.S.C. § 103; KSR Int’l Co. v. Teleflex Inc., 550 US at 418; see also Takeda, 492 F.3d at 1357 Appeal 2020-004867 Application 15/071,765 9 (explaining that “in cases involving new chemical compounds” to show a prima facie case of obviousness one must “identify some reason that would have led a chemist to modify a known compound in a particular manner”). Thus, a given claim limitation may be obvious over the prior art even if no single reference had specifically disclosed that limitation. Appellant argues the product of the claimed invention is prepared utilizing a composition having a specific ratio of the high Tg binder to the void latex particles that is not described or suggested by the cited prior art. (Appeal Br. 16.) The invention of independent claim 1 is directed to a ceiling tile having an estimated noise reduction coefficient (eNRC) of at least 0.85 wherein an acoustical composition is on one surface. Independent claim 1 is drafted in product by process format. The Examiner’s burden under § 103 is satisfied if the prior art reasonably appears to disclose a product that is identical or slightly different from the claimed product. See In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Fessman, 489 F.2d 742, 744 (CCPA 1974). Once the Examiner meets this burden of proof, the burden shifts to Appellant to show that the claimed product materially differs from the product of the prior art. It is the product that must be gauged in light of the prior art, not the process limitations. See In re Wertheim, 541 F.2d 257, 271 (CCPA 1976); Fessman,489 F.2d at 744. Appellant has not directed us to evidence that a ceiling tile having an estimated noise reduction coefficient (eNRC) of at least 0.85 must be formed by a process that requires the coating composition have a ratio of the high Tg binder to the void latex particles in the coating in the range from about 1:3 to about 3:1. Appellant argues Table 1 of the Specification (Spec. 6) exhibits the unexpected reduction of the noise level of the ceiling tile. (Appeal Br. 18.) Appeal 2020-004867 Application 15/071,765 10 This argument is not convincing because Appellant has not provided a comparison of the claimed invention to the closest prior art. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must also be shown to be unexpected compared with the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). Additionally, the relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of [the CCPA] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, “it is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification do not suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). The evidence presented in Table 1 is limited to a ceiling tile coated with a coating composition comprising void latex particles in the ratio of 1:3. Appellant has not explained why this limited showing is evidence of unexpected results for the entire range from about 1:3 to about 3:1. The Appeal 2020-004867 Application 15/071,765 11 evidence relied upon establishes that the exemplified ratio does not necessarily achieve a product with an eNRC of at least 0.85. (See second example of Table 1.) This evidence indicates other considerations such as the weight of the coating and the number of coats applied has an effect on the eNRC. After consideration of the positions presented by the Examiner and Appellant, including the relied upon objective evidence of non-obviousness, we determine the preponderance of evidence supports the Examiner’s conclusion that the claimed subject matter would have been obvious to a person of ordinary skill in the art. Claims 1–3, 5, and 9 stand rejected under 35 U.S.C. § 103 over Hasegawa and Adamson. We reverse. The dispositive issue for this rejection is: Did the Examiner provide an adequate basis for combining the teachings of Hasegawa and Adamson? We answer the question in the affirmative. We limit our discussion to independent claim 1.2 The Examiner find Hasegawa teaches a composition that can be used as a tile adhesive and provide noise reduction comprising a coating that includes calcined clay and a high Tg polymeric binder that differs from the claimed invention by failing to teach void latex particles. (Final Act. 7.) Addressing this difference, the Examiner relies on Adamson for describing 2 Dependent claim 9 is rejected over the combination of Hasegawa, Adamson further in view of Caldwell. The reasons the Examiner cited the Caldwell reference do not address our reasons for not sustaining the rejections over the combination of Hasegawa and Adamson. Appeal 2020-004867 Application 15/071,765 12 the use of Ropaque™ Ultra Opaque Polymer are void latex particles. (Final Act. 7–8.) The Examiner determines that it would have been obvious to substitute the calcined clay of Hasegawa with the void latex particles in order to increase scattering. (Final Act. 8.) The Examiner further states: Given that Hasegawa et al. in view of Adamson et al. teaches an acoustically transparent coating comprising structure and materials identical to those presently claimed, it is clear that the acoustically transparent coating would intrinsically have an estimated noise reduction coefficient (eNRC) and create pores at the tile surface as presently claimed, absent evidence to the contrary. (Final Act. 8.) The Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s motivation for combining Hasegawa and Adamson is not supported by the evidence of record. Rather, the Examiner appears to have relied on impermissible hindsight reasoning in determining it would have been obvious to substitute the calcined clay of Hasegawa with the void latex particles in order to increase scattering. Adamson is concerned with the high cost of TiO2 and proposes modifications to coating compositions such as the replacement of TiO2 particles with scattering pigments. (Adamson, 1, first paragraph.) The Examiner has not identified where Hasegawa is concerned with light scattering or contains TiO2 particles. Thus, the Examiner has not provided a factual basis sufficient to support a conclusion of obviousness of the claimed invention. Accordingly, we reverse the rejection of claims 1–3, 5, and 9. Appeal 2020-004867 Application 15/071,765 13 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5, 9 112 Written Description 1–3, 5, 9 1–3, 5, 9 112 Indefiniteness 1–3, 5, 9 1–3, 5, 9 103 Caldwell, Dow, McCarthy 1–3, 5, 9 1–3, 5 103 Hasegawa, Adamson 1–3, 5 9 103 Hasegawa, Adamson, Caldwell 9 Overall Outcome 1–3, 5, 9 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation