Ex Parte O et al

Patent Trial and Appeal Board

Jun 2, 2017

12090692 (P.T.A.B. Jun. 2, 2017)

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.
12/090,692 09/11/2008 Sam O'Keefe CC0014.001US 5800
39689 7590 06/06/2017
Phinnersinn T aw Omim P P
EXAMINER
2 Green Village Road, Suite 301
Madison, NJ 07940
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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):
RCC@CHIPPERSONLAW.COM
rchipperson @ optonline. net
ava @ chippersonlaw group. onmicrosoft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAM O’KEEFE and PARNIKA SAHAY
Appeal 2016-006788
Application 12/090,692
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—12 and 17—382. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants’ claimed invention is generally directed to a method of
reducing the quantity of water required to create gypsum plasterboard while
retaining the strength of the gypsum plasterboard. App. Br. 3. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1 Appellants identify the real party in interest as BPB, Ltd. Appeal Brief
filed November 25, 2104 (“App. Br.”), 2.
2 Claims 13—16 stand withdrawn from consideration. Final Office Action
entered March 27, 2014 (“Final Act”), 2.
Appeal 2016-006788
Application 12/090,692
1. A method of reducing a quantity of water required to
create gypsum plasterboard while retaining a strength of the
gypsum plasterboard comprising the steps of:
mixing water and calcium sulphate hemihydrate to
produce a slurry;
adding an accelerator to the slurry; and
applying ultrasonic energy to the slurry.
App. Br. 15 (Claims Appendix).
Appellants request review of the following rejections set forth in the
Final Office Action, which the Examiner maintains in the Answer entered
March 23,2015 (“Ans.”):
I. Claims 1—12 and 17—38 under 35 U.S.C. § 112, second
paragraph as indefinite for failing to particularly point out and distinctly
claim the subject matter that the applicants regard as the invention;
II. Claims 1—11 and 17—38 under 35 U.S.C. § 103(a) as
unpatentable over Ikeda et al. (US 2005/0077655 Al, published April 14,
2005) in view of Knapsack (FR 2225257, English translation) and Lane (US
3,666,581, issued May 30, 1972); and
III. Claim 12 under 35 U.S.C. § 103(a) as unpatentable over Ikeda
in view of Knapsack, Lane, and Pohlman et al. (US 3,304,449, issued
February 14, 1967).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 1—12 and 17—38 under 35 U.S.C. § 112, second paragraph and
rejections of claims 1—12 and 17—38 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action and the Answer.
We add the following.
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Application 12/090,692
Rejection I
As set forth above, claim 1 recites a method of reducing a quantity of
water required to create gypsum plasterboard while retaining a strength of
the gypsum plasterboard. The Examiner finds that the terms “reducing” and
“retaining” require a comparison to be made between the process of claim 1
and some other unspecified process of making gypsum plasterboard. Final
Act. 2—3. The Examiner finds that because claim 1 does not specify the
process to be compared with the claimed process, one of ordinary skill in the
art would not know if a particular amount of water used in the process of
claim 1 is reduced, and would not know if a strength of gypsum plasterboard
produced by the claimed process is retained, and would thus not know the
scope of claim 1. Final Act. 3.
Appellants argue that that one of ordinary skill in the art would
understand that “the claimed method is intended to be applied to any
compatible pre-existing method of creating gypsum plasterboard in order to
reduce the quantity of water required by the method while maintaining the
strength of the gypsum plasterboard.” App. Br. 7. Appellants further argue
that “the Specification is replete with charts that show how application of the
claimed steps to a process without the claimed steps affects the ingredients
input into the process and the resultant density (both with and without the
claimed steps).” Id. Appellants contend that the Specification therefore
provides a standard for determining the degree of water quantity reduced and
the degree of strength retained. Id.
However, where claims recite terms of degree requiring some
measurement from, or comparison to, a baseline, the baseline must be
sufficiently defined to render the claim definite. Interval Licensing LLC v.
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Application 12/090,692
AOL, Inc., 766 F.3d 1364, 1370-71 (Fed. Cir. 2014) (terms of degree require
some measure from a baseline.); see also Seattle Box Co. v. Indust. Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984).
We find no disclosure in the portions of the Specification cited by
Appellants3 of a standard or definition by which one of ordinary skill in the
art could determine whether the quantity of water that is required to create
gypsum plasterboard while retaining a strength of the gypsum plasterboard
is reduced by producing gypsum plasterboard according to the method of
claim 1 as compared with the required quantity of water for producing
gypsum plasterboard of the same strength by a standard method. Appellants
offer no explanation as to how the disclosures in the relied-upon portions of
the Specification provide such a standard. App. Br. 7. Accordingly,
contrary to Appellants’ arguments, one of ordinary skill in the art would be
unable to determine the metes and bounds of claim 1. See, e.g., Amgen, Inc.
v Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is
considered indefinite under 35 U.S.C. § 112, second paragraph, if it does not
reasonably apprise those skilled in the art of its scope.)
We accordingly sustain the Examiner’s rejection of claims 1—12 and
17—38 under 35 U.S.C. § 112, second paragraph.
Rejection II
Claims 1—10, 17—19, 21—23, and 29—37
Appellants argue claims 1—10, 17—19, 21—23, and 29—37 as a group.
App. Br. 9-11. Therefore, we select claim 1 as representative, and decide
3 Spec. Table 1, pages 6—7; Table 2, page 8; Table 3, page 9; Compressive
Stress Data for Ultrasonic Cove Line Trial Chart, page 17.
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Appeal 2016-006788
Application 12/090,692
the appeal as to Rejection II based on claim 1 alone. 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Consistent with the Examiner’s findings, Ikeda discloses a process for
making gypsum board that involves mixing water, calcium sulphate
hemihydrate, and an accelerator in a mixer to make a slurry, depositing the
slurry through a supply pipe that extends from the mixer onto a lower paper
or board, and covering the slurry with an upper paper. Final Act. 4; Ikeda
4—6, 37. Ikeda discloses providing ultrasonic vibration to the gypsum slurry
supply pipe by attaching an ultrasonic oscillator to the pipe. Ikeda 43, 46;
Fig. 1.
The Examiner finds that Ikeda does not explicitly teach application of
ultrasonic energy directly to the slurry in the mixer, as recited in claim 9,
and the Examiner relies on Knapsack for suggesting this feature. Final Act.
4—5. The Examiner finds that Knapsack discloses a process for forming
gypsum plasterboard that involves exposing calcium sulphate hemihydrate
and water in a mixer 1 to ultrasonic energy using a probe 4 that extends into
the mixer 1 during formation of a slurry. Final Act. 4—5; Knapsack 1—2; Fig.
2. The Examiner finds that Knapsack discloses that application of ultrasonic
energy to the mixer in this manner enhances homogenization of the slurry,
accelerates processing (while maintaining quality), and prevents the
equipment from becoming clogged. Final Act. 4—5; Knapsack 2—3.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellants’ invention to apply
ultrasonic energy during Ikeda’s process directly to the gypsum slurry in
Ikeda’s mixer as recited in claim 9 to improve homogenization, accelerate
processing, and prevent equipment clogging, while maintaining the quality
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Application 12/090,692
of the resulting gypsum plasterboard produced, as disclosed by Knapsack.
Final Act. 5.
In addressing the rejection of claim 1, Appellants present arguments
directed to the Examiner’s proposed combination of Ikeda and Knapsack.
App. Br. 9-11. Specifically, Appellants argue that one of ordinary skill in
the art would not have combined Ikeda’s process with Knapsack’s
embodiment shown in Figure 2, which involves application of ultrasonic
energy directly to gypsum in a mixer, as proposed by the Examiner. Id.
Appellants contend that instead, one of ordinary skill in the art would have
combined Ikeda’s process with Knapsack’s embodiment shown in Figure 3,
which involves application of ultrasonic energy to a gypsum jet exiting a
mixer. Appellants contend that Knapsack teaches that the embodiment of
Figure 3 is preferred for continuous operation, and Ikeda’s process is
continuous. App. Br. 10. Appellants further argue that their proposed
combination would avoid addition of a second ultrasonic energy device to
Ikeda’s system that extends into Ikeda’s mixer. Id.
The Examiner relies on Knapsack’s disclosures in rejecting claim 9,
which depends from claim 1, through claim 2. Final Act. 4—5. Appellants’
arguments directed to the combination of Ikeda and Knapsack do not
otherwise address the rejection of claim 1. Claim 1 is not limited to
applying ultrasonic energy to the slurry in a mixer, and the subject matter of
claim 1 is taught or suggested by Ikeda alone, as determined by the
Examiner. Ans. 2.
Nevertheless, with respect to claim 9 and claim 1, the entirety of
Knapsack’s disclosures must be evaluated for what they would have fairly
suggested to one of ordinary skill in the art at the time of Appellants’
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invention. In re Boe, 355 F.2d 961, 965 (CCPA 1966) (All of the
disclosures in a prior art reference “must be evaluated for what they fairly
teach one of ordinary skill in the art.”). Knapsack would have suggested
application of ultrasonic energy during preparation of gypsum plasterboard
according to any of the embodiments described in the reference, including
the embodiment of Figure 2 involving application of ultrasonic energy
directly in a mixture. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the ’813 patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious. This is especially true because the claimed composition is used for
the identical purpose...”). Accordingly, one of ordinary skill in the art
reasonably would have been led to apply ultrasonic energy directly in
Ikeda’s mixer to enhance homogenization of the slurry as taught by
Knapsack. The weight of the evidence therefore supports the Examiner’s
finding that the combined disclosures of the applied prior art would have
suggested the method of claim 9 (and the method of claim 1). Appellants’
arguments are therefore unpersuasive of reversible error.
We therefore sustain the Examiner’s rejection of claims 1—10, 17—19,
21-23, and 29-37 under 35 U.S.C. § 103(a).
Claims 11,20, and 2A-284
4 Each of claims 11, 20, and 24—28 recite that the ultrasonic energy is applied
for a time of less than 10 seconds, and as the Examiner points out (Ans. 8),
claims 21—23 also recite that the ultrasonic energy is applied for a time of
less than 10 seconds. However, because Appellants do not argue claims 21—
23 together with claims 11, 20, and 24—28, we include claims 21—23 in the
first group of claims addressed in this Decision (claims 1—10, 17—19, 21—23,
29—37, discussed above). App. Br. 11.
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Application 12/090,692
Although Appellants argue “claims 11, 20, and 24-48” together in
their Appeal Brief (App. Br. 11), claims 39-48 are not pending in the instant
application. The Examiner addresses claims 11, 20, and 24—28 together in
the Final Action (Final Act. 7), and Appellants refer to the Examiner’s
assertions regarding these claims in their arguments for “claims 11, 20, and
24-48.” App. Br. 11. We therefore consider claims 11, 20, and 24—28 as a
group, and select claim 11 as representative, which depends from claim 1
and recites that the ultrasonic energy is applied for a time of less than 10
seconds.
The Examiner finds that Ikeda discloses that the process of producing
gypsum board described in the reference is conducted continuously, and the
Examiner determines that Ikeda’s rate of deposition of slurry onto
paperboard would therefore affect the throughput of the process, establishing
that the rate of slurry deposition is a result-effective variable. Final Act. 7;
Ikeda | 64. The Examiner finds that the greater the rate of slurry deposition,
the shorter the duration of application of ultrasonic energy to slurry in the
supply pipe. Final Act. 7. The Examiner concludes that one of ordinary
skill in the art would have optimized the rate of Ikeda’s process in order to
produce more gypsum board in a given amount of time, and in so doing,
would have arrived at a suitable period of time for application of ultrasonic
energy to slurry, such as a time of less than 10 seconds, as recited in claim
11. Id.
Appellants argue that Ikeda does not disclose application of ultrasonic
energy to the slurry during the mixing process, and “therefore does not teach
application of such energy ‘for less than ten seconds’ as required by the
pending claims.” App. Br. 11. However, claim 11, which depends from
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Application 12/090,692
claim 1, does not require application of ultrasonic energy to the slurry during
the mixing process. Accordingly, Appellants’ arguments lack persuasive
merit because they are directed to unclaimed subject matter. In re Self, 671
F.2d 1344, 1348 (CCPA 1982) (“[Ajppellant’s arguments fail from the
outset because . . . they are not based on limitations appearing in the
claims.”).
Appellants further argue that Ikeda teaches continuous application of
ultrasound to the gypsum slurry for the purpose of preventing adhesion of
the slurry to equipment it contacts. App. Br. 12. Appellants contend that, to
avoid adhesion of gypsum to the equipment, one of ordinary skill in the art
would not have reduced the amount of time that ultrasonic energy is applied
to the slurry. Id.
However, one of ordinary skill in the art would have had sufficient
skill to determine the appropriate length of time to apply ultrasonic energy to
a slurry supply pipe as disclosed in Ikeda during a process for making
gypsum board in order to prevent adhesion of gypsum to the pipe.
Appellants’ arguments do not establish that application of ultrasonic energy
for less than 10 seconds as recited in claim 11 would not prevent adhesion of
gypsum slurry to a gypsum supply pipe as disclosed in Ikeda. Moreover,
Appellants offer no showing establishing the criticality of applying
ultrasonic energy for a time of less than 10 seconds during the process of
claim 11. In fact, Appellants’ Specification exemplifies application of
ultrasonic energy for 15 and 20 seconds. Spec. 48, 66. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the
difference between the claimed invention and the prior art is some range or
other variable within the claims, the applicant must show that the particular
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Application 12/090,692
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.). Appellants’ arguments
are therefore unpersuasive of reversible error.
Appellants further argue that Knapsack discloses that the duration of
ultrasonic treatment is preferably between about 15 seconds and 25 minutes,
and Appellants contend that the Examiner fails to provide evidence or
technical reasoning establishing that routine optimization of Knapsack’s
ultrasonic treatment duration would have led to application of ultrasonic
energy for less than 10 seconds as recited in claim 11. App. Br. 11—12.
However, as set forth by the Examiner, in light of Ikeda’s disclosure
of a continuous process for producing gypsum board, one of ordinary skill in
the art would have optimized the rate of Ikeda’s process in order to produce
more gypsum board in a given amount of time, and in so doing, would have
arrived at a suitable period of time for applying ultrasonic energy to slurry in
the supply pipe, such as a time of less than 10 seconds, as recited in claim
11. Final Act. 5; Ikeda 1 64. As discussed above, Appellants do not
establish the criticality of the recited range. Woodruff, 919 F.2d at 1578.
In addition, as also set forth by the Examiner, Knapsack’s disclosure
of a preferred ultrasonic treatment duration of between about 15 seconds
and 25 minutes would not have discouraged one of ordinary skill in the art
from applying ultrasonic energy for a time outside this range, such as less
than 10 seconds as recited in claim 11. Ans. 8; Knapsack 2, paragraph 1.
We find no disclosure in Knapsack indicating that the preferred range of
about 15 second to 25 minutes defines the outer limits of suitable treatment
times, nor do we find any disclosure in Knapsack criticizing application of
ultrasonic energy for less than 10 seconds. Appellants’ arguments are
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therefore unpersuasive of reversible error.
Claim 38
Claim 38 depends from claim 1 and recites that a source of the
ultrasonic energy has a power output greater than or equal to 1 kW.
The Examiner finds that Knapsack discloses that the ultrasonic energy
applied to the gypsum slurry during the process for preparing gypsum
plasterboard can vary, but “is preferably greater than 0.01 watts per gram to
ensure a short duration of the ultrasonic action.” Final Act. 8; Knapsack 2,
paragraph 9. The Examiner finds that Knapsack thus discloses that the
amount of ultrasonic energy applied “scales” with the mass of gypsum slurry
treated, “and is a result effective variable affecting the processing rate, with
increased energies being more advantageous due to the ability to treat more
material in the same amount of time (higher throughput).” Id. Based on
Knapsacks’ disclosure that the ultrasonic energy level is a result-effective
variable, the Examiner concludes in essence that it would have been obvious
to one of ordinary skill in the art at the time of Appellants’ invention to
optimize the amount of ultrasonic energy applied during Ikeda’s process for
preparing gypsum plasterboard, and in so doing, one of ordinary skill would
have arrived at the optimal ultrasonic energy level, such as the amount
recited in claim 38, through nothing more than routine experimentation. Id.
In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[DJiscovery of an optimum
value of a result effective variable.. .is ordinarily within the skill of the art.”)
Appellants argue that Knapsack “teaches an inverse relationship”
between the gypsum mass and the ultrasonic energy applied based on certain
of Knapsack’s experimental examples. App. Br. 13. Appellants contend
that Knapsack therefore teaches away from an ultrasonic energy level of
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greater than or equal to 1 kW as recited in claim 3 8 because to achieve this
energy level, “the gypsum mass would have to be incredibly low,” and
Appellants argue that “[t]here is no reason to believe that such a mass is
intended or utilized in Ikeda.” App. Br. 12—14.
However, Appellants’ arguments directed to select experimental
examples in Knapsack do not take into consideration Knapsack’s explicit
disclosure that the applied ultrasonic energy is preferably greater than 0.01
watts per gram, which indicates a direct—rather than inverse— relationship
between the level of ultrasonic energy applied and the mass of gypsum
treated. In re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (explaining
that a prior art reference’s disclosure is not limited to its examples); In re
Boe, 355 F.2d 961, 965 (CCPA 1966) (“All of the disclosures in a [prior art]
reference must be evaluated for what they fairly teach one of ordinary skill
in the art.”).
In addition, Appellants do not direct us to any disclosure in Knapsack
that criticizes, discredits, or otherwise would have discouraged one of
ordinary skill in the art from treating a particular mass of gypsum with
greater than or equal to 1 kW of ultrasonic energy. Accordingly, contrary to
Appellants’ arguments, Knapsack does not teach away from the ultrasonic
energy level recited in claim 38. See, e.g., DyStar Textilfarben Gmbh & Co.
Deutschland KG v. C.H. Patrick Col., 464 F.3d 1356, 1364 (Fed. Cir. 2006)
(“We will not read into a reference a teaching away from a process where no
such language exists.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“[t]he prior art’s mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
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claimed”); In re Gurley, 27 F.3d 551, 552—53 (Fed. Cir. 1994).
Appellants’ arguments are therefore unpersuasive of reversible error,
and we accordingly sustain the Examiner’s rejection of claim 38 under
35 U.S.C. § 103(a).
Rejection III
Appellants do not directly address this rejection, and argue only that
claim 12 is patentable over the applied prior art for the same reasons they
provide for claim 1. App. Br. 14. Because we are unpersuaded of reversible
error in the Examiner’s rejection of claim 1 as discussed above, Appellants’
position as to this ground of rejection is also without merit. Accordingly, we
sustain the rejection of claim 12 under 35 U.S.C. § 103(a).
DECISION
In view of the reasons set forth above and in the Final Office Action
and the Answer, we affirm the Examiner’s decision to reject claims 1—12
and 17—38 under 35 U.S.C. § 112, second paragraph and to reject claims 1—
12 and 17-38 under 35 U.S.C. § 103(a).
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
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