Ex Parte Francis

Patent Trial and Appeal Board

Dec 20, 2018

14004064 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/004,064 06/10/2014
109963 7590 12/25/2018
GP-Eversheds Sutherland (US) LLP
999 Peachtree Street, NE
Suite 2300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Hubert C. Francis
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.
20920-USA 9274
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
patentdocket@eversheds-sutherland.com
gplawpatents@gapac.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUBERT C. FRANCIS 1
Appeal2018-002299
Application 14/004,064
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and
DONNA M. PRAISS, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner's
final rejections under 35 U.S.C. § 103(a) of independent claims 1 and 8 as
unpatentable over Stav (US 2012/0214887 Al, pub. Aug. 23, 2012) in view
of Kirk (US 2,856,304, issued Oct. 14, 1958) and of remaining dependent
claims 2-7 and 9-15 as unpatentable over these references alone or in
combination with additional prior art. We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.
1 Georgia-Pacific Gypsum LLC is identified as the real party in interest
(App. Br. 2).
Appeal2018-002299
Application 14/004,064
Appellant claims a gypsum slurry suitable for producing a lightweight
gypsum board comprising calcined gypsum and pre-gelatinized starch in an
amount of more than 4% by weight of the calcined gypsum (independent
claim 1 ). Appellant also claims a lightweight gypsum wallboard made using
such a slurry (remaining independent claim 8).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A gypsum slurry suitable for producing a lightweight
gypsum board comprising an aqueous mixture of calcined
gypsum, a pre-gelatinized starch in an amount of more than 4 %
by weight of the calcined gypsum, and a lignosulfonate
dispersant in an amount of at least 0.3 % by weight of the
calcined gypsum, wherein no naphthalenesulfonate is present in
the gypsum slurry.
In rejecting the independent claims, the Examiner finds Stav teaches
that the cohesiveness of gypsum slurry is desirably increased by addition of
thickening agents such as pre-gelled starch but that use of pre-gelled starch
in this manner results in undesirable defoaming of the slurry (Final Action 3
(citing Stav ,r 9)). The Examiner concludes that it would have been obvious
"to determine an appropriate amount of the pre-gelled starch through routine
experimentation [i.e., optimization of a result effective variable] in order to
achieve the desired slurry cohesiveness while avoiding a large degree of
defoaming" (id. at 4). The Examiner also concludes that it would have been
obvious to provide Stav's slurry with a dispersant of lignosulfonate
specifically in view of Kirk (id. at 5).
Appellant states that the highest amounts of pre-gelatinized starch
disclosed by Stav are considerably lower than the claimed amounts (App.
Br. 7-9 ( citing Stav ,r 3 6)) and argues that "it is unclear how the Examiner
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Appeal2018-002299
Application 14/004,064
alleges one would optimize Stav's teachings to obtain the claimed amount of
pre-gelatinized starch" (id. at 9).
In response, the Examiner does not contest Appellant's statement but
rather emphasizes that the pre-gelled starch amounts disclosed by Stav relate
to using pre-gelled starch as a secondary thickening agent (Ans. 14) and that
"[t]he portions of Stav relied upon by the Examiner ... do not require the
pre-gelled starch to be a secondary thickening agent" (id. ( citing Stav ,r 9) ).
This response clarifies that the rejection proposes (1) using pre-gelled
starch as a primary thickener despite its defoaming disadvantage (see Stav
,r 9) rather than the primary thickeners (i.e., cellulose ether and certain
copolymers) used by Stav which have no such disadvantage (see, e.g., id. at
Abst.) and (2) optimizing the pre-gelled starch amount "in order to achieve
the desired slurry cohesiveness while avoiding a large degree of defoaming"
thereby resulting in the claimed amount (Final Action 4). However, the
rejection contains no articulated reasoning with rational underpinning for the
proposition that (1) one with ordinary skill in this art would have used a pre-
gelled starch as a primary thickener rather than the primary thickeners used
by Stav and (2) optimizing the amount of pre-gelled starch to achieve
"cohesiveness while avoiding a large degree of defoaming" (id.) would
result in an amount of more than 4 % by weight as claimed.
"[R ]ejections 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." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int 'l Co. v. Teleflex Inc. 550 U.S. 398, 418 (2007).
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Appeal2018-002299
Application 14/004,064
For the reasons given above, the Examiner's obviousness
determination concerning the independent claim feature of pre-gelatinized
starch in an amount of more than 4 % by weight is based on mere conclusory
statements rather than articulated reasoning with rational underpinning.
Therefore, we do not sustain the§ 103 rejections of the independent claims
or the claims depending therefrom.
The decision of the Examiner is reversed.
REVERSED
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