Ex Parte Randall et al

Board of Patent Appeals and Interferences

Jan 30, 2004

09837226 (B.P.A.I. Jan. 30, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BRIAN G. RANDALL AND GARY A. RICARDS
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Appeal No. 2003-1885
Application No. 09/837,226
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HEARD: January 8, 2004
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Before WARREN, WALTZ, and DELMENDO, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 28, which are the only claims
pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellants, the invention is directed to a gypsum
board having improved moisture-tolerance, where the gypsum board
has a core of set gypsum faced with at least one coated fibrous
mat, and the coating of this mat comprises a dried aqueous mixture
of a combination of a mineral pigment, an inorganic adhesive binder
Appeal No. 2003-1885
Application No. 09/837,226
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and a polymer latex binder (Brief, page 2). Representative
independent claim 1 is reproduced below:
1. A moisture-tolerant structural panel comprising
(1) a gypsum core; and
(2) a coated mat comprising fibers adhered to at least one
surface of said gypsum core;
the coated mat having a coating comprising a combination
of (i) a mineral pigment, (ii) an inorganic adhesive binder and
(iii) a polymer latex adhesive binder.
The examiner has relied upon the following references as
evidence of obviousness:
Ramig, Jr. et al. (Ramig) 3,945,965 Mar. 23, 1976
Gay et al. (Gay) 5,112,678 May 12, 1992
Randall 5,342,680 Aug. 30, 1994
Green et al. (Green) 5,397,631 Mar. 14, 1995
Jaffee 5,772,846 Jun. 30, 1998
Claims 1, 2, 4-11, 13-15, 17, 18 and 21-27 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Green in view of Gay
(Answer, page 3). Claims 3 and 12 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Green in view of Gay and Jafee
(Answer, page 5). Claim 16 stands rejected under 35 U.S.C.
§ 103(a) as unpatentable over Green in view of Gay and Randall
(id.). Claims 19, 20 and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Green in view of Gay and Ramig
(Answer, page 6).
Appeal No. 2003-1885
Application No. 09/837,226
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We reverse all of the rejections on appeal essentially for the
reasons stated in the Brief, Reply Brief, and those reasons set
forth below.
OPINION
The examiner finds that Green discloses a fibrous mat faced
gypsum board coated with a water resistant coating, where the
fibrous mat may be glass fibers applied to one or both surfaces of
the gypsum core (Answer, page 3). The examiner finds that Green
does not teach the water resistant coating as recited in the claims
on appeal (Answer, page 4). However, the examiner applies Gay for
the teaching of a water resistant coating utilized to impregnate
fiber mat-faced gypsum boards, where the coating comprises a
polymer latex binder, a second binder, and a mineral pigment (id.,
citing the abstract of Gay). The examiner further finds that the
coating of Gay is taught to be water resistant, dimensionally
stable, and economically practical, as well as useful as an
underlayment of facer material (id.). From these findings, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art “to utilize the water resistant coating
taught in Gay on the mat-faced gypsum board taught in Green because
said coating is water resistant, dimensionally stable, economical
Appeal No. 2003-1885
Application No. 09/837,226
1The Ramig, Randall and Jaffee references, cited by the
examiner to show various features of several dependent claims
(Answer, pages 5-6), do not remedy the deficiencies discussed
below with respect to the combination of Green and Gay.
4
and can be used as an underlayment or facer material.” Answer,
page 4; see also page 8.
When combining the teaching of two or more references, the
burden is on the examiner to establish a motivation, reason, or
suggestion for combining the teachings of the references. See In
re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454 (Fed. Cir.
1997). The examiner may establish this motivation, reason, or
suggestion by showing that the combination is suggested by the
teachings of the prior art references themselves, the knowledge
of one of ordinary skill in the art, or, in some cases, from the
nature of the problem to be solved. See Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996). In this appeal we determine that the
examiner has failed to establish a convincing motivation, reason
or suggestion for combining Green and Gay as proposed in the
rejections on appeal.1
As correctly argued by appellants (Brief, page 10; Reply
Brief, pages 1-2), the examiner’s finding that the abstract of Gay
teaches a water resistant coating utilized to impregnate fiber mat-
Appeal No. 2003-1885
Application No. 09/837,226
2The “dimensionally stable” advantage cited by the examiner
(Answer, pages 4 and 8) is merely the result of using glass mats
(see Gay, col. 1, ll. 49-51). Since the preferred fibrous mat of
Green is a fiber glass mat (col. 6, ll. 35-37), the product of
Green would also have been “dimensionally stable.”
5
faced gypsum board is in error, as apparently admitted by the
examiner (Answer, page 9). “Where the legal conclusion [of
obviousness] is not supported by facts it cannot stand.” In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Appellants also correctly argue that the examiner has not
established motivation for the proposed combination of Green
and Gay (Brief, pages 9-11; Reply Brief, page 6). Although
the examiner is correct that the gypsum board of Green can be
characterized as a facer or support surface for building
construction, which is the same general use as taught by Gay
(Answer, page 8; see Green, col. 11, ll. 19-35), we determine that
the examiner has not established the requisite motivation or
suggestion for the proposed combination of references. Gay teaches
the advantage of his non-porous mat in that it is “an economical
and weather resistant coating composition” (col. 2, ll. 61-63).2
However, Green also teaches water resistant properties as well as
“significant economic ... advantages” over products currently
available (col. 5, ll. 44-48). Accordingly, the examiner has not
Appeal No. 2003-1885
Application No. 09/837,226
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established why one of ordinary skill in this art would have
desired the water resistant coating of Gay in place of the water
resistant coating of Green. See In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
Additionally, Green teaches that there are numerous
commercially available resins which are claimed to be effective in
forming water resistant coatings but there are significant
differences in water-resistant characteristics depending on the
particular resin (col. 9, ll. 3-20; see the comparison at col. 13,
l. 61-col. 14, l. 21 and Table 1). Therefore it appears that the
substitution of one water resistant coating for another would not
be predictable in this art, especially where, as here, the
ingredients of the coating composition are not the same or similar.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not established a
prima facie case of obviousness. Therefore we reverse all of the
rejections on appeal.
Appeal No. 2003-1885
Application No. 09/837,226
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The decision of the examiner is reversed.
REVERSED
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2003-1885
Application No. 09/837,226
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