2020002990 (P.T.A.B. May. 4, 2021)

UNITED STATES GYPSUM COMPANY

Patent Trials and Appeals BoardMay 4, 2021

2020002990 (P.T.A.B. May. 4, 2021)

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. 15/376,176 12/12/2016 Guy Rosenthal 32590/50456 4572 138704 7590 05/04/2021 Marshall, Gerstein & Borun, LLP (USG) 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606-6357 EXAMINER TSCHEN, FRANCISCO W ART UNIT PAPER NUMBER 1712 NOTIFICATION DATE DELIVERY MODE 05/04/2021 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUY ROSENTHAL and SALVATORE IMMORDINO Appeal 2020-002990 Application 15/376,176 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and SHELDON M. McGEE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 12–15 and 21–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM AND DENOMINATE AS NEW GROUNDS OF REJECTION. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as United States Gypsum Company (Appeal Br. 3). Appeal 2020-002990 Application 15/376,176 2 CLAIMED SUBJECT MATTER The claims are directed to a formable corner finishing and trim strip. Claim 12, reproduced below, is illustrative of the claimed subject matter: 12. A method of forming a formable trim strip for use in connection with drywall applications, the method comprising: heating a polymer material to a temperature within its melting point range; advancing a pre-formed backing paper positioned proximal to the polymer material, the backing paper constructed from at least one of a paper material or a woven fiber material; upon the polymer material being heated to the temperature within its melting point range, depositing the polymer material directly onto at least a portion of the pre- formed backing paper to form a trim strip body having a top surface and a bottom surface, the bottom surface being in direct contact with the backing paper; allowing the trim strip body to cool to a temperature below the melting point range such that the portion of the backing paper bonds to the bottom surface of the trim strip body, wherein upon the trim strip body cooling, the polymer material that forms the trim strip body becomes rigid to protect the corner of the drywall assembly. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Spiro US 4,198,455 Apr. 15, 1980 Smythe US 2002/0116884 A1 Aug. 29, 2002 Steffes US 8,726,591 B1 May 20, 2014 Conboy US 2014/0260019 A1 Sept. 18, 2014 Appeal 2020-002990 Application 15/376,176 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 12–15, 21–23 112(a) Written Description 12–14, 21–23 103 Smythe, Steffes, Spiro 15 103 Smythe, Steffes, Spiro, Conboy OPINION Rejections under 35 U.S.C. § 103 The Appellant argues the claims as a group (Appeal Br. 7–12). We therefore limit our discussion to one claim, i.e., claim 12, which is the sole independent claim. The dependent claims stand or fall with claim 12. See 37 C.F.R. § 41.37(c)(1)(iv) (2013). Smythe discloses a drywall corner trim strip comprising a semi-rigid member (203) which preferably is high impact polystyrene (which corresponds to the Appellant’s polymer material), covered with a fibrous finishing material (200) which preferably is cup stock paper suitable for directly receiving paint or other texture (which corresponds to the Appellant’s backing paper) (¶¶ 16, 32; Fig. 3). Smythe discloses that the semi-rigid member (203) “is continuously extruded with the outer layer of fibrous material” (¶ 29), “the semi-rigid member 203 and an outer fibrous layer 200 are continuously extruded together” (¶ 32), and the semi-rigid member and the outer finishing material layer are continuously extruded “as a laminated, preformed piece” (¶ 34) (all of which correspond to the Appeal 2020-002990 Application 15/376,176 4 Appellant’s advancing of a preformed backing paper positioned proximal to melted polymer material).2 The Appellant argues, regarding Smythe: A person having ordinary skill in the art would understand the phrase “continuously extruded together” means that both material layers are extruded at the same time via an extrusion process where material is urged through a die to form a desired shape, which in the Smythe reference, can include ridges and/or grooves. This continuous extrusion of two materials together is not equivalent to depositing one material onto a pre-formed second material. [(Appeal Br. 8)] . . . [T]he Smythe reference repeatedly explicitly states this fibrous layer (which is preferably a cup stock material), is continuously extruded with the semi-rigid member (see Smythe at Abstract, paras. [0019], [0029], [0032], and [0034]). In fact, paragraph [0029] explicitly states “[t]hese embodiments . . . are laminate with only two layers tightly bonded during extrusion”, and paragraph [0034] states “[t]he normal and preferred method or process of producing the present invention consists of continuously extruding the semi-rigid member, the inner material layer (if it is present), and the outer finishing material layer as a laminated, preformed piece”. The only alternative manufacturing process described in the Smythe reference (paragraph [0034]) involves spraying the fibrous outer layer during the preforming process. According to MPEP § 2141.02.VI, the prior art references must be viewed in their entirety, including disclosures that teach away from the present claims. Simply put, there is no teaching or suggestion in the Smythe reference that the outer fibrous layer is pre-formed prior to co-extrusion. [(Reply Br. 2).] The Appellant does not explain, and it is not apparent, how cup stock paper can be made during coextrusion with a polymer. Thus, the Appellant appears to be unreasonably interpreting Smythe’s disclosures of a semi-rigid 2 A discussion of Steffes, Spiro, and Conboy is not necessary to our decision. Appeal 2020-002990 Application 15/376,176 5 member (203) “continuously extruded with the outer layer of fibrous material” (¶ 29), a semi-rigid member 203 and an outer fibrous layer 200 “continuously extruded together” (¶ 32), and a semi-rigid member and outer finishing material layer continuously extruded “as a laminated, preformed piece” (¶ 34). The more reasonable interpretations are that “extruded with” means “extruded onto,” “extruded together” means “joined together by extrusion,” and extruded “as a laminated, preformed piece” means “joined as a laminated, preformed piece by extrusion.” Smythe, therefore, would have indicated to one of ordinary skill in the art that the fibrous material such as cup stock paper is preformed prior to Smythe’s joining of the semi-rigid member (203) to it by continuous extrusion. The Appellant argues that Smythe “does not disclose heating a polymer material to a temperature within a melting point range” (Appeal Br. 11). The Appellant does not explain, and it is not apparent, how Smythe’s high impact polystyrene can be extruded without being in the form of a melt (¶ 32). For the above reasons, we are unpersuaded that the applied references would not have rendered the Appellant’s claimed method prima facie obvious to one of ordinary skill in the art. Accordingly, we affirm the rejections under 35 U.S.C. § 103. Because our rationale differs substantially from that of the Examiner, we denominate the affirmance as involving a new ground of rejection under 37 C.F.R. § 41.50(b). Appeal 2020-002990 Application 15/376,176 6 Rejection under 35 U.S.C. § 112(a) The Appellant does not challenge the rejection under the 35 U.S.C. § 112(a) written description requirement (Appeal Br. 7–12; Reply Br. 2). Accordingly, we summarily affirm that rejection. CONCLUSION The Examiner’s decision to reject claims 12–15 and 21–23 is AFFIRMED; 37 C.F.R. § 41.50(b). DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Grounds 12–15, 21–23 112(a) Written Description 12–15, 21–23 12–14, 21–23 103 Smythe, Steffes, Spiro 12–14, 21–23 12–14, 21–23 15 103 Smythe, Steffes, Spiro, Conboy 15 15 Overall Outcome 12–15, 21–23 12–15, 21–23 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2020-002990 Application 15/376,176 7 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. AFFIRMED; 37 C.F.R. § 41.50(b)