USG Interiors, LLC.

Patent Trials and Appeals Board

Dec 1, 2021

2020004867 (P.T.A.B. Dec. 1, 2021)

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
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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withdrawn from consideration.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.)
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Application 15/071,765
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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.)
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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.)
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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
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“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).
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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
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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
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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
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(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.)
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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
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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.
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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.
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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