Ex Parte Baig et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11210585 (B.P.A.I. Jan. 31, 2012)

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.
11/210,585 08/24/2005 Mirza A. Baig DPC-38721 4974
116 7590 01/31/2012
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
EXAMINER
PAINTER, BRANON C
ART UNIT PAPER NUMBER
3635
MAIL DATE DELIVERY MODE
01/31/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte USG INTERIORS, INC.
__________

Appeal 2010-006041
Application 11/210,585
Technology Center 3600
___________

Before: JAMESON LEE, RICHARD TORCZON, and SALLY C.
MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
USG Interiors, Inc. (“USG”), the real party in interest, appeals under
35 U.S.C. § 134(a) from a final rejection of claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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THE INVENTION
USG discloses a ceiling tile for suspended ceilings. (Spec. ¶ 1). The
tile employs a paper facer in lieu of vinyl and foil facers. (Spec. ¶¶ 2-3). An
embodiment of the tile is illustrated by USG’s Figures 1 and 2, reproduced
below. Figure 1 shows a method of fabricating the tile. Figure 2 shows a
cross-section view of the tile.

Fabrication starts with a pre-formed board typically including
expanded perlite and hydrophilic fiber such as mineral fiber and cellulose
fiber. (Spec. ¶ 9). The board is machined to ensure a desirably “uniform
thickness” and “smooth finish.” (Id.). The machining process may include
any planing, grinding, sanding, or like process that removes excess
thickness. (Id.). If the board already has a uniform thickness and smooth
finish, machining is not necessary. (Id.). The specification does not state,
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however, what degree of uniformity and smoothness constitutes a
sufficiently uniform thickness and smooth finish.
After machining, the board is coated with a layer of clay 15. (Spec.
¶ 10). Once the clay layer 15 has dried, water soluble adhesive 17 is applied
to the clay layer 15. (Spec. ¶ 11). A paper facer 19 is then laminated onto
the clay layer 15 via the adhesive 17. (Id.). Latex paint 23 is then deposited
on the paper facer 19 (Spec. ¶ 12) to provide a scrub-resistant surface for
easier cleaning. (Spec. ¶¶ 12 and 16).
Claim 1 is representative of the above embodiment and reproduced
below with paragraphing added.
1. A composite ceiling tile comprising
a manufactured rigid board of a low density of about 18
to 22 lbs. per cubic foot formed from a process of drying a
homogenous medium of a binder of starch or latex, mineral
fiber, expanded perlite, and cellulose fiber in a water slurry or
water paste form,
a paper facer laminated on a machined smooth face of the
dried rigid board,
a water-based adhesive bonding the paper facer directly
to the board or to a coating formed in situ on the dried,
machined board, and
a water [scrubable] coating on an outer surface of the
paper facer formed in situ on such outer surface from a water-
based liquid coating applied to the outer surface and dried.

THE PRIOR ART
The Examiner relied upon the following prior art references:
Decker Patent 5,437,924 Aug. 1, 1995
Wiker Patent 6,443,257 B1 Sep. 3, 2002
Baig US 2002/0139611 Al Oct. 3, 2002
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Christie US 2003/0134556 Al Jul. 17, 2003
REJECTIONS ON APPEAL
Claims 1-3, 6-10, 12, 15, 17, and 18 were finally rejected by the
Examiner under 35 U.S.C. § 103(a) as obvious over Baig, Decker, and
Christie.
Claims 4, 5, 11, and 16 were finally rejected by the Examiner under
35 U.S.C. § 103(a) as obvious over Baig and Decker.
Baig
Baig discloses a multi-layered acoustic ceiling tile that combines the
benefits of two conventional single-layer tiles. (Baig ¶¶ 6-9). More
particularly, the ceiling tile includes a board with: a base layer having a
lower mineral fiber content for rigidity; and a surface layer having a higher
mineral fiber content for sound absorption. (Baig ¶¶ 12 and 18-21). During
fabrication, Baig forms and press rolls the base layer, coats the base layer
with the surface layer, and then press rolls the surface layer. (Baig ¶¶ 19 and
23).
Decker
Decker discloses a biodegradable foam core for a signage board.
(Decker 1:26-38). The board is formed by laminating paper facers onto the
opposing surfaces of the foam core. (Decker 1:13-16; 2:11-19). According
to Decker, the board has a high degree of rigidity. (Decker 2:14-18).
ANALYSIS
A. § 103(a) Rejection of Claims 1-3, 6-10, 12, 15, 17, and 18 as
obvious over Baig, Decker, and Christie
Claims 1-3, 6-10, 12, 15, 17, and 18 were rejected as obvious over
Baig, Decker, and Christie. Of these claims, claims 1 and 17 are the only
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independent claims. Claims 2, 3, 6-10, 12, 15, and 18 respectively depend
from claim 1 or claim 17. For each claim, USG argues that the applied prior
art does not teach or suggest a ceiling tile with a board having a “machined
smooth face” or a paper facer laminated thereon, as required by claims 1 and
17. (Brief 13:5-9). We address the arguments with reference to claim 1.
Claims 1-3, 6-10, 12, 15, 17, and 18 stand or fall with claim 1.
“Machined Smooth Face”
USG argues that the “machined smooth face” language requires the
recited board to be produced by “planing, grinding, sanding, or like
processes to obtain a uniform thickness and relatively smooth finish.”
(Brief 8:21-9:8). The Examiner interprets the “machined smooth face”
language as a product-by-process limitation, whereby the claimed board is
restricted to the structure that would be imparted by machining its face
smooth. (Ans. 12:8-11). According to the Examiner, Baig’s board is
imparted this same structure via press rolling. (Ans. 12:6-8).
We agree with the Examiner. The “machined smooth face” language
is a product-by-process limitation and, accordingly, only requires the
claimed board to have the properties which would result from machining its
face smooth. If Baig’s ceiling tile has such structural characteristics, it does
not matter what process was employed to impart those characteristics. See,
e.g., In re Thorpe, 777 F.2d 695, 697-98 (Fed. Cir. 1985); In re Marosi,
710 F.2d 799, 803 (Fed. Cir. 1983). Although Thorpe and Marosi actually
pertain to product-by-process claims rather than individual claim elements
recited in product-by-process form, we see no reason why the same rule of
law would not apply to individual claim components.
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USG’s specification states that its “machined smooth” step imparts a
uniform thickness and a relatively smooth finish to a processed board.
(Spec. ¶ 9). The Examiner reasonably determined that Baig’s use of press
rollers imparts a uniform thickness and a relatively smooth finish to Baig’s
processed board. (Baig ¶¶ 19 and 23). Thus, the burden shifted to the
Appellant to come forward with evidence to demonstrate a meaningful
distinction between the structure of a press-rolled board and the structure of
a board which is “machined smooth.” “[W]here the Patent Office has reason
to believe that a functional limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210, 213
(CCPA 1971). USG has made no such showing.
Furthermore, USG has not even shown that “machined smooth” refers
to a specific type of machining step, such that a particular degree of
uniformity or smoothness can be inferred. USG merely states that
“machined” means “operations such as ‘planing, grinding, sanding, or like
processes to obtain a uniform thickness and relatively smooth finish’.”
(Brief 8:20-9:4 (emphasis added; citing Spec. ¶ 4)). The scope of the
description is so broad that all that matters is that a uniformly smooth finish
is achieved. Appellant does not dispute that press rolling can achieve a
uniformly smooth finish on a board. In any event, the general reference to
“like processes” itself reasonably even includes press rolling, in which case
press rolling is itself a “machined smooth” step.
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Thus, in the alternative, we conclude that in the context of Appellant’s
disclosure, press rolling is itself a “machined smooth” step and can provide
no distinction from the “machined smooth” limitation.
“Paper Facer”
Claim 1 also recites “a paper facer laminated on a machined smooth
face of the dried rigid board.” The Examiner found that Baig fails to teach a
paper facer. (Ans. 4:20-24; 7:10-20). The Examiner found, however, that
Decker teaches a paper facer adhered to a foam board. (Ans. 5:1-3).
According to the Examiner, it would have been obvious to adhere a paper
facer to Baig’s board, just as in Decker’s board, because adhering a paper
facer to Baig’s board would have been recognized as likewise strengthening
Baig’s board. (Ans. 5:1-18).
USG does not dispute that the proposed addition of a paper facer
would have been recognized as increasing the strength of Baig’s board.
Rather, USG argues that such a paper facer would cover the fiber-rich
surface layer of Baig’s board and accordingly reduce the board’s noise
absorption. (Reply 6:9-13).
The argument is misplaced. Baig itself teaches a desire for sufficient
structural strength in ceiling tiles (Baig ¶ 9). The addition of a paper facer to
Baig’s board, as Decker indicates, would increase the strength of a porous
board and would have been obvious to a person of ordinary skill in the art.
The associated deterioration in the board’s ability to absorb sound does not
undermine the merits of the rejection. It merely represents a tradeoff
between two desirable characteristics. Baig confirms as much in stating that
less porous boards have been used to achieve greater strength at the expense
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of sound absorption. (Baig ¶¶ 8-10). Baig even contemplates coating its
board with paint at the expense of sound absorption. (Baig ¶ 24).
Thus, Baig clearly manifests a tolerance for modifications that
enhance the strength of the board at the expense of sound absorption
characteristics. It is simply incorrect to contend that no modification can be
made if the change adversely affects sound absorption. Decker provides
simply another alternative to one with ordinary skill in the art to increase the
strength of Baig’s ceiling tiles. More or less sound absorption are both
within the choice of desirable selection by one with ordinary skill in the art.
Also, claim 1 does not include any required level of sound absorption. One
with ordinary skill could have combined prior art teachings to arrive at a
light-weight but stronger board within the scope of claim 1 without
particular regard to the resulting acoustic characteristics of the board.
In any event, a prior art reference must be considered for all its
teachings by way of technology and is not limited to the invention it is trying
to protect. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985). Thus, when applying Baig as a prior art reference, it is not
necessary to preserve the particular invention it is attempting to protect, e.g.,
exactly how much sound absorption is desired.
Conclusion
We sustain the rejection of claims 1-3, 6-10, 12, 15, 17, and 18 as
obvious over Baig, Decker, and Christie.
B. Claims 4-5, 11, and 16 as obvious over Baig and Decker
Claims 4 and 5
USG presents arguments for independent claim 4, but the arguments
are substantively the same as that presented with regard to the “paper facer”
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limitation of claims 1 and 17. (Brief 13:17-14:26). For the reasons already
provided above, the arguments are without merit.
We are not persuaded of error in the rejection of claim 4.
Claim 5 depends from claim 4 and is not separately addressed by
USG. We are not persuaded of error in the rejection of claim 5.
Claim 11
USG presents certain arguments for independent claim 11, which are
substantively the same as those presented with regard to the “paper facer”
limitation of claims 1 and 17. (Brief 15:1-25). For reasons already
explained above, the arguments are without merit.
Claim 11 additionally recites the following limitation:
the board and paper each made in a respective process that
aligns its structure with a direction corresponding to a machine
direction through which they are conveyed when being
manufactured, the paper facer being laminated on the board
with its machine direction perpendicular to the machine
direction of the board.

Thus, according to the claim, both the board and the paper facer has a
structure that is in alignment with the machine direction existent in the
manufacturing process and the board and the paper facer are arranged with
their respective structural alignment perpendicular to each other.
USG argues (1) that neither Baig nor Decker teaches a board or paper
facer that has its structure aligned in the direction of the machine direction
through which the board or paper facer was conveyed when manufactured,
and (ii) that neither Baig nor Decker teaches a board and paper facer
laminated thereon whose machine directions are perpendicular to each other.
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The Examiner found that the direction of USG’s machining step –
which encompasses planing, grinding, sanding, or a like process – has little
if any effect on the overall product. (Ans. 6:12-16). In that regard, it is
noted that Appellant’s specification does not describe that the machining
step imparts a notable directional structure, e.g., a directional grain pattern
to either the board or the paper facer. Nevertheless, a directional pattern on
the structure of the board and the paper facer is what Appellant has claimed.
USG asserts that there can be no genuine doubt that the directional
alignment features of the board and paper facer are structural. We agree.
That structural limitation cannot be ignored when rejecting claim 11
over the prior art. Whether Appellant has written description for the claimed
feature and whether Appellant has provided an enabling disclosure for the
feature are both separate questions not involved in this appeal. If the
Examiner is of the position that one with ordinary skill in the art would not
have known what is meant by “machine direction” or aligned structure with
a direction corresponding to the machine direction, in light of Appellant’s
specification, then an indefiniteness rejection would have been appropriate.
No such rejection was made and thus again the limitation cannot be ignored.
Because the Examiner failed to identify in the combined prior art the
directional alignment on the surface of the board and the paper facer, the
Examiner has not shown that the prior art satisfies the above-quoted feature
of Appellant’s claimed invention. The Examiner bears the initial burden of
presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). That burden has not been met in this case.
The rejection of claim 11 as obvious over Baig and Decker cannot be
sustained.
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Claim 16
Claim 16 recites in pertinent part “a clay coating on the machined
surface, a water-based adhesive bonding a paper facer to the clay coating.”
USG argues that neither Baig nor Decker teaches or suggests a clay coating
on the machine surface or a water-based adhesive bonding a paper facer to
the clay coating. (Brief 16:15-18). According to USG (Brief 16:23-26):
Baig at [0021] discloses clay as a constituent of his tile, but it is
an ingredient with other ingredients used to make a part of the
body of the tile. It is not a coating on the tile, it is a filler in the
tile.
The Examiner responds (Ans. 16:19-22):
Baig’s disclosure states that the “surface layer consists
essentially of ... clay filler” ([0021]). This clearly states that the
Baig tile has a surface layer including clay. The tile of Baig
meets the limitation “clay coating” as its coating layer includes
clay.
Contrary to the Examiner’s finding, Baig’s surface layer does not
consist essentially of clay filler. Rather, the fiber-rich surface layer consists
essentially of mineral wool fibers, gypsum, clay filler, latex binder, starch
binder and flocculant (Baig ¶ 21) and, at most, only up to 12% clay filler by
weight (Baig ¶ 21 (table)). We reject the Examiner’s interpretation that any
surface layer including some portion of clay constitutes a clay coating. We
also do not regard a surface layer having no more than 12% by weight of
clay filler with the rest consisting of five non-clay components as a clay
coating.
Appellant’s specification includes no statement or example indicating
that “clay coating” has such a broad meaning that it includes a layer having
no more than 12% by weight of clay filler. Although “finish coat” 23 can
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include some parts of clay filler, the specification does not refer to “finish
coat” 23 as a clay coating. (Spec. ¶ 12). Rather, the specification refers to
clay coating 15 as a thin layer of clay. (Spec. ¶ 10).
The rejection of claim 16 as obvious over Baig and Decker cannot be
sustained.
DECISION
The rejections of claims 1-3, 6-10, 12, 15, 17, and 18 under 35 U.S.C.
§ 103(a) as obvious over Baig, Decker, and Christie are affirmed.
The rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as obvious
over Baig and Decker is affirmed.
The rejection of claims 11 and 16 under 35 U.S.C. § 103(a) as obvious
over Baig and Decker is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)
AFFIRMED-IN-PART

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