Ex Parte Tinianov

Patent Trial and Appeal Board

Jun 7, 2018

13783165 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/783, 165 03/01/2013
113671 7590 06/11/2018
Sheppard Mullin Richter & Hampton LLP
333 S. Hope Street
Forty-Third Floor
Los Angeles, CA 90071
FIRST NAMED INVENTOR
Brandon D. Tinianov
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.
0104147.106USC1 4822
EXAMINER
ADAMOS, THEODORE V
ART UNIT PAPER NUMBER
3635
NOTIFICATION DATE DELIVERY MODE
06/11/2018 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):
laipdocketing@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRANDON D. TINIANOV 1
Appeal2016-003995 2
Application 13/783,165
Technology Center 3600
Before: JENNIFER D. BAHR, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE3
Appellant appeals under 35 U.S.C. § 134 from the Examiner's final
decision rejecting claims 42-63. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Pacific Coast Building Products, Inc., which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 1.
2 This Appeal is related to Appeal Number 2016-003 810 (serial number
13/783, 179), which includes similar claims, rejections, and briefing.
3 An oral hearing was conducted on May 22, 2018.
Appeal2016-003995
Application 13/783,165
CLAIMED SUBJECT MATTER
The claims are directed to an acoustical sound proofing material with
improved fracture characteristics. Claim 42, reproduced below, is
illustrative of the claimed subject matter:
42. A laminated building structure, comprising:
a first gypsum board having two surfaces, said two
surfaces including a first outer clad surface and a first inner
unclad surface, wherein the entire inner surface of the first
gypsum board is unclad;
a first layer of viscoelastic glue placed directly on the first
inner unclad surface; and
a second gypsum board located proximate to said first
layer of viscoelastic glue, said second gypsum board having two
surfaces, said two surfaces including a second outer clad surface
and a second inner unclad surface, wherein the entire inner
surface of the second gypsum board is unclad.
Appeal Br. 14 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Petersen
Tabata
Fowler
Luongo
Heseltine
Tinianov '691
Tinianov '005
Tinianov '410
Tinianov '763
Tinianov '251
RE 29,157
us 4,663,224
us 5,601,888
US 6,391,958 Bl
US 2005/0263925 Al
US Ser. No. 11/697,691 4
US 7,745,005 B2
US 7,799,410 B
US 7,883,763 B2
US 8,424,251 B2
4 Issued as US 9,388,568 on July 12, 2016.
2
Mar. 22, 1977
May 5, 1987
Feb. 11, 1997
May 21, 2002
Dec. 1, 2005
Dec. 9, 2008
June 29, 2010
Sept. 21, 2010
Feb. 8, 2011
Apr. 23, 2013
Appeal2016-003995
Application 13/783,165
REJECTIONS
(I) Claims 42--47, 50, 51, 58---60 are rejected under 35 U.S.C. §
103(a) as unpatentable over Tabata and Fowler.
(II) Claims 48 and 49 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tabata, Fowler, and Luongo.
(III) Claims 52-55 and 57 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tabata and Heseltine.
(IV) Claim 56 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tabata, Heseltine, and Luongo.
(V) Claims 61and63 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tabata, Fowler, and Petersen.
(VI) Claim 62 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tabata, Heseltine, and Petersen.
(VII) Claims 42--46, 48-52, 56-59 and 61---63 are provisionally
rejected on the ground of nonstatutory double-patenting over claims 1, 3, 5,
7, 9-12, 55, 58, and 59 ofTinianov '691.
(VIII) Claims 42-52, 54, and 56---63 are rejected on the ground of
nonstatutory double-patenting over claims 1 and 9 of Tinianov '410 and
Tinianov '691.
(IX) Claims 42--46, 48-52, 56-59, and 61---63 are rejected on the
ground of nonstatutory double-patenting over any of claim 1 of Tinianov
'005, claim 1 of Tinianov '251, or claims 1, 13, 15, or 24 of Tinianov '763
in view of Tinianov '691.
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OPINION
Rejection (I)
The Examiner finds that Tabata discloses most of the elements
required by claim 42, including first and second gypsum boards and a first
layer of viscoelastic glue on an inner surface of the first gypsum board.
Final Act. 3--4. However, the Examiner finds that Tabata does not
specifically teach that "the outer surfaces of the gypsum boards are clad or
the first inner surface of each board is unclad." Id. at 4. The Examiner
relies on Fowler to remedy this deficiency, stating, "Fowler further discloses
in col. 4 [] lines 43-56 that in instances where fire resistan[ce] is necessary,
facing material is not required to be placed on the gypsum board, but are
optionally employed if the particular application so dictates." Id. The
Examiner determines that it would have been obvious to have constructed
the first and second gypsum boards of Tabata with the inner faces unclad
and the outer faces clad and to also provide paper fibers within the core of
the boards. Id. The Examiner's rationales for making these modifications
are "to increase the fire resistance of the gypsum board yet provide certain
moisture barrier characteristics to the outside of the panel" and "to also
provide a better attachment surface between the boards and the glue." Id.
As a third rationale, the Examiner reasons that the proposed modification
would have been merely the selection of a "known material on the basis of
its suitability for the intended use as a matter of obvious design choice." Id.
at 4--5 (citing In re Leshin, 277 F .2d 197 (CCP A 1960).
Appellant contends that the Examiner's reasoning, based on providing
fire resistance to the wallboard of Tabata, is not supported by rational
underpinning inasmuch as the unclad surface, in the Examiner's proposed
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Application 13/783,165
modification to the structure disclosed by Tabata, is provided between the
two wallboards (the inside of the composite board). Appeal Br. 7-8.
Appellant contends that the benefit of providing fire resistance comes from
omitting cladding on the outside of the board in taught by Fowler. Id.
In response, the Examiner finds that omitting paper cladding on the
surfaces between the two boards in the composite board would provide
beneficial fire resistance in the event that heat transferred "through a
mechanical fastener that extends through the laminated board and a building
support" was sufficient to cause ignition. Ans. 20-21.
We agree with Appellant's argument on this point. The Examiner's
finding that a person of ordinary skill in the art would have been motivated
to omit cladding on the surfaces of the first and second boards of Tabata,
which are ultimately bonded to each other via adhesive, in order to provide
fire resistance, is not supported by a preponderance of the evidence. "The
presence or absence of a motivation to combine references in an obviousness
determination is a pure question of fact." Par Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (citations omitted). The
Examiner does not explain adequately how an internal portion of the
composite board disclosed by Tabata, which is separated from the
atmosphere by the first and second boards, would be less susceptible to
ignition when modified as proposed.
Appellant also contends that Tabata discloses wallboard, Fowler
relates to fiberboard, and the teachings in Fowler regarding providing only
one clad surface (or no clad surfaces) on a board are not applicable to the
wallboard of Tabata because wallboard, without cladding on both surfaces,
is much weaker than fiberboard. See Appeal Br. 3-7. Appellant refers to
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the process of bisecting, along the thickness, gypsum wallboard as disclosed
in US 7 ,908,818 and states, "This process is one way to create the unclad
panels used for the methods in the present invention, and would not be
necessary if it was easy to create unclad panels during the regular
manufacturing process." Id. at 4. Appellant further contends that "Fowler
makes clear [that] regular gypsum wallboard requires the cladding to have
flexural strength." Id. at 7; see also Fowler, 4:44--46, 6: 19-25. Appellant
asserts that the result of the Examiner's proposed modification, i.e.,
fiberboard in place of Tabata's wallboard, "is more difficult to score and
snap than gypsum wallboard due to its increased flexural strength resulting
from the embedded paper fiber." Id.
In response, the Examiner finds that rather than supporting
Appellant's argument regarding the structural weakness of unclad wallboard,
the teachings of US 7,908,818 indicate that gypsum wallboard does not
break under its own weight when made without paper cladding. Ans. 19.
The Examiner also notes that the proposed modification to the wallboard of
Tabata includes adding fiber within the board, which provides strength and
thus, makes cladding optional. See id. at 18-20. Further, the Examiner
determines that there are only a finite number of options regarding cladding,
i.e., both surfaces, only one surface, or no surfaces of the board may be clad,
and selecting the arrangement set forth in claim 42 would have been obvious
as a choice from a number of finite, predictable solutions with a reasonable
expectation of success. Id. at 19-20 (citing KSR Int 'l. Co. v. Teleflex, Inc.,
550 U.S. 398 (2007)). Additionally, the Examiner determines that omitting
paper cladding on one surface of the wallboard would reduce the cost of
manufacture. Id. at 20.
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In reply, Appellant reiterates that wallboard and fiberboard, as taught
by Tabata and Fowler, respectively, are different products with different
physical characteristics, and the teachings from one product would not apply
to the other as presented in the context of the rejection of claim 42. Reply
Br. 2-5.
A preponderance of the evidence does not support the Examiner's
additional rationales for modifying Tabata. The Examiner's finding that
omitting paper cladding would "provide a better attachment surface between
the boards and glue" (see Final Act. 4) is provided without citation to any
evidence, and relies on paper being less amenable to gluing than gypsum
material is, a conclusion that itself lacks support. The Examiner's reliance
on In re Leshin is also unavailing because the proposed modification to
Tabata requires omission of a structural element, not merely the choice of a
material when this material is known to be used in similar structures. See
Leshin, 277 F.2d at 199 (stating, "[the reference] shows a similar container
of molded plastic and applicant concedes that the plastics he uses are well
known ... Mere selection of known plastics to make a container-dispenser
of a type made of plastics prior to the invention ... would be entirely
obvious."). The Examiner's new rationale, provided in the Answer (see
Ans. 20), regarding a reduction of manufacturing cost, likewise lacks
evidentiary support. As for the Examiner's reliance on KSR and
determination that the proposed modification would be merely a choice from
among a finite number of predictable solutions (Ans. 20), the Examiner has
not adequately explained how the proposed modification provides a solution
to a problem. See KSR, 398 U.S. at 421 (stating, "When there is a design
need or market pressure to solve a problem and there are a finite number of
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Application 13/783,165
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp."). Although
we agree with the Examiner's finding that there are only three options for
cladding an individual board, specifically, one, two, or zero board surfaces
with cladding, the Examiner has not explained how these three arrangements
are "solutions" inasmuch as the benefits (fire suppression, better adhesion,
and lower manufacturing cost) of these particular arrangements, when
incorporated in the composite structure of Tabata as proposed, are merely
speculative, as discussed above. Accordingly, we do not sustain the
Examiner's rejection of independent claim 42 and claims 43--47, 50, and 51
depending therefrom as unpatentable over Tabata and Fowler. Independent
claim 58 recites substantially similar features to those discussed above
regarding independent claim 42 (see Appeal Br. 14, 17 (Claims App.)).
Accordingly, for the same reasons, we do not sustain the rejection of claim
58 and claims 59 and 60 depending therefrom as unpatentable over Tabata
and Fowler.
Rejections (II) and (V); Tabata, Fowler, Luongo, and Petersen
Rejections (II) and (V) suffer from the same deficiency as Rejection
(I). See Final Act. 8-10, 16. Accordingly, for the same reasons discussed
regarding Rejection (I), we do not sustain these rejections.
Rejection (111); Tabata and Heseltine
Independent claim 52 recites, in part, "a first gypsum board having
two surfaces, said two surfaces including a first outer clad surface and a first
inner low-tensile clad surface." Appeal Br. 15-16 (Claims App.). Claim 52
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also requires a layer of viscoelastic glue on the first inner low-tensile clad
surface and "a second gypsum board located proximate said first layer of
viscoelastic glue, said second gypsum board having two surfaces, said two
surfaces including a second outer clad surface and a second inner low-tensile
clad surface." Id. at 16.
The Examiner finds that Tabata discloses most of the elements recited
in claim 52, but does not disclose the outer surfaces of its gypsum boards as
having cladding. Final Act. 10-11. To remedy this deficiency, the
Examiner turns to Heseltine, finding this reference teaches that "it is highly
well known in the art to clad outer and inner surfaces of a gypsum board
with materials such as paper or a nonwoven fiberglass cladding." Id. at 11.
The Examiner also finds "the paper cladding or nonwoven fiberglass
cladding provided on the inner surfaces of the two gypsum boards of
[Tabata] in view of [Heseltine] can be considered low-tensile with respect to
a metal cladding." Id. The Examiner reasons that it would have been
obvious to add cladding to the gypsum boards taught by Tabata in order to
increase the boards' strength. Id.
Appellant argues, "In Heseltine, the nonwoven cladding is used on the
exterior of the panels in order to be fire-resistant. Heseltine is silent as to
any feature other than fire-proofing that a nonwoven fiber mat could
provide." Appeal Br. 10.
Appellant's argument on this point is unavailing because the
Examiner finds that Heseltine teaches that both paper and nonwoven
fiberglass cladding are used on the first and second surfaces of gypsum
board (see Final Act. 11 ), and this finding is supported by a preponderance
of the evidence (see Heseltine i-fi-130, 38). As Appellant concedes, paper
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cladding enhances the strength of gypsum board. See, e.g., Appeal Br. 4
(citing Fowler, 6: 19-25). Thus, the Examiner's reasoning for modifying the
wallboard of Tabata is supported by rational underpinnings. Further,
Appellant does not contest that paper cladding may provide both "a first
outer clad surface" as well as "a first inner low-tensile clad surface" as found
by the Examiner. See id. at 10. Accordingly, we sustain the Examiner's
rejection of claim 52 as unpatentable over Tabata and Heseltine. Appellant
makes no additional arguments for claims 53-55 and 57, which depend from
claim 52. See id. Accordingly, these claims fall with claim 52.
Rejections (IV) and (VI); Tabata, Heseltine, Luongo, and Petersen
Appellant relies on the arguments discussed above regarding
Rejection (III) in support of the patentability of claims 56 and 62. See
Appeal Br. 11-12. Accordingly, we sustain Rejections (IV) and (VI).
Rejection (VII)
Appellant does not contest this rejection. See Appeal Br. 2-13.
However, as this rejection was provisional at the time of the present appeal,
we leave it to the Examiner to determine whether this rejection should be
maintained.
Rejections (VIII) and (IX)
Appellant does not contest these rejections. See Appeal Br. 2-13.
Accordingly, we summarily sustain Rejections (VIII) and (IX).
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DECISION
(I) We reverse the rejection of claims 42--47, 50, 51, 58-60 as
unpatentable over Tabata and Fowler.
(II) We reverse the rejection of claims 48 and 49 as unpatentable
over Tabata, Fowler, and Luongo.
(III) We affirm the rejection of claims 52-55 and 57 as unpatentable
over Tabata and Heseltine.
(IV) We affirm the rejection of claim 56 as unpatentable over
Tabata, Heseltine, and Luongo.
(V) We reverse the rejection of claims 61 and 63 as unpatentable
over Tabata, Fowler, and Petersen.
(VI) We affirm the rejection of claim 62 as unpatentable over
Tabata, Heseltine, and Petersen.
(VII) We do not reach the provisional rejection of claims 42--46, 48-
52, 56-59 and 61-63 on the ground of nonstatutory double-patenting over
claims 1, 3, 5, 7, 9-12, 55, 58, and 59 of Tinianov '691.
(VIII) We affirm the rejection of claims 42-52, 54, and 56-63 on the
ground of nonstatutory double-patenting over claims 1 and 9 of Tinianov
'410 and Tinianov '691.
(IX) We affirm the rejection of claims 42--46, 48-52, 56-59, and
61---63 on the ground of nonstatutory double-patenting over any of claim 1 of
Tinianov '005, claim 1 of Tinianov '251, or claims 1, 13, 15, or 24 of
Tinianov '763 in view of Tinianov '691.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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AFFIRMED
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