UNITED STATES GYPSUM COMPANY

Patent Trials and Appeals Board

Dec 31, 2020

2020003440 (P.T.A.B. Dec. 31, 2020)

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.
15/434,980 02/16/2017 Guy Rosenthal 32590/50750 9076
138704 7590 12/31/2020
Marshall, Gerstein & Borun, LLP (USG)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
FONSECA, JESSIE T
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
12/31/2020 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 2020-003440
Application 15/434,980
Technology Center 3600
Before CHARLES GREENHUT, JEREMY PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies United States Gypsum Company as the
real party in interest. Appeal Br. 3.
2 Claims 11–18 are withdrawn. Final Act. 1.
Appeal 2020-003440
Application 15/434,980
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CLAIMED SUBJECT MATTER
The claims are directed to a trim strip assembly for use on drywall
corners.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A trim strip assembly for use on a corner of at least two
sheets of drywall, the trim strip assembly comprising:
a rigid trim strip body extending along a body axis and
being formed entirely from an adhesive material providing at
least one integral adhesive inside surface and at least one
opposite, integral outside surface; and
a backing paper secured to an entirety of the at least one
integral outside surface of the trim strip body;
the adhesive material having a softening point temperature
range such that when the adhesive material is heated to a
temperature within the softening point temperature range, the
adhesive inside surface bonds to at least one of the at least two
sheets of drywall to secure the trim strip body to the at least one
of the at least two sheets of drywall around the corner.
Appeal Br. 10 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Overbay T887,014 June 1, 1971
Schold US 5,604,001 Feb. 18, 1997

REJECTIONS
I. Claims 1, 2, and 8 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Overbay.
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II. Claims 3 and 4 are rejected under 35 U.S.C. § 103 as
unpatentable over Overbay.
III. Claims 5 and 6 are rejected under 35 U.S.C. § 103 as
unpatentable over Overbay and Schold.

OPINION
Rejection I (Anticipation by Overbay)
Finding that Overbay discloses all of the elements recited in claim 1,
the Examiner determines the recitation that the “trim strip assembly [is] for
use on a corner of . . . two sheets of drywall,” along with the functional
language in the last paragraph of claim 1, are merely recitations of intended
use, which Overbay’s trim strip is capable of performing. Final Act. 2–3. In
this regard, the Examiner finds “the adhesive of Overbay, particularly when
softened, can be manipulated to extend around the corner.” Id. at 3.
Appellant argues Overbay’s tape applies a maximum amount of
adhesive along its centerline, and “a person of skill in the art would certainly
recognize the discreet uses of a corner trim strip assembly and a seam tape
and would further conclude that the seam tape of Overbay is entirely
unsuitable for the subject matter of claim 1.” Appeal Br. 7. Appellant
states, “[t]he fact that the adhesive of the seam tape can be softened and
forced over a corner does not make it suitable for a corner trim strip, nor
does Overbay provide any motivation for such an action.” Id. at 8.
In response, the Examiner reiterates that the recitations in claim 1
relating to a corner are merely statements of intended use. Ans. 3–4; see
also In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997) (Statements of
intended use in apparatus claims may fail to distinguish prior art apparatuses
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even if those prior art apparatuses were not intended to be put to that use).
The Examiner contends, “Appellant has not stated what claimed structure
results in a structural difference between claim 1 and the reference of
Overbay.” Id. at 4. Further, the Examiner finds Appellant admits that “the
hot melt adhesive of Overbay can be softened and forced (i.e. bent) around a
corner.” Id. (citing Appeal Br. 8).
In reply, Appellant argues that a person of ordinary skill in the art
would understand
the seam tape of Overbay is not “capable of performing the
intended use” as suggested in the Examiner’s Answer. Simply
being able to be softened and bent does not cause an object that
isn’t a corner trim strip assembly suddenly become one suitable
of a result expected of a person of ordinary skill in the art of a
corner trim strip assembly. This is supported by the fact that
Overbay provides no disclosure or suggestion to a person of
ordinary skill that the seam tape is suitable for or should be used
for such an application.
Reply Br. 2. Accordingly, Appellant takes the position that Overbay’s trim
tape is not capable of performing the functional limitations recited at the end
of claim 1.
Appellant’s argument on this point does not identify Examiner error.
Overbay discloses a seam sealing tape with a hot melt adhesive disposed on
one side of the tape in a continuous layer. See Overbay, Abstract. As
pointed out by Appellant (see Appeal Br. 7), Overbay describes an
embodiment of its tape in which adhesive is thicker in the middle of the tape
than at the edges. However, Appellant provides no explanation as to why
such a structure would render Overbay’s tape incapable of being used on the
corner of drywall. Further, we find nothing in Overbay indicating how thick
its adhesive is, much less that the thickness of its adhesive would prevent
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placement of its tape on a corner. Rather, as the Examiner finds, Overbay’s
adhesive softens when heated. “[T]he adhesive of Overbay, particularly
when softened, can be manipulated.” Final Act. 5; see also Overbay,
Abstract. Appellant does not dispute this finding, and, instead, admits that
Overbay’s tape may be heated and forced over a corner. See Appeal Br. 8.
This softening capability of Overbay’s tape is substantially similar to
Appellant’s description of the claimed tape. See Spec. ¶ 75, Figs. 10A–10B.
Thus, we disagree with Appellant’s contention that Overbay’s tape is
incapable of the intended use recited in claim 1.
Appellant next argues “[m]odifying the seam tape of Overbay to
arrive at the subject matter of claim 1 would render the seam tape
unsatisfactory for its intended purpose.” Appeal Br. 8 (emphasis omitted).
This argument does not address the rejection of claim 1, which is based on
anticipation, not a proposed modification of Overbay’s tape. See Final Act.
2. Thus, Appellant’s contention on this point is unavailing.
We have considered all of Appellant’s arguments regarding claim 1,
but are not apprised of Examiner error. Appellant does not make separate
arguments for the patentability of claims 2 and 8, which depend from claim
1. See Appeal Br. 8. Accordingly, we sustain the Examiner’s rejection of
claims 1, 2, and 8 as anticipated by Overbay.
Rejections II and III (Unpatentability over Overbay and over Overbay
and Schold)
The Examiner rejects claims 3 and 4 as unpatentable over Overbay
alone and rejects claims 5 and 6 as unpatentable over a combination of the
teachings of Overbay and Schold. Final Act. 3–5.
Appellant asserts “the § 103 rejections of claims 3–6 based on the
combination of Overbay and Schold is in error” because “altering the pattern
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of adhesive taught by Overbay to obtain a trim strip for use on a corner
would render the seam tape unsatisfactory for filling voids between abutting
sections or cracks in wall board or similar materials.” Appeal Br. 8
(emphasis added).
Claims 3 and 4
The rejection of claims 3 and 4 indicates, without reliance on the
teachings of Schold, that the temperature ranges of softening points and
melting points recited in these claims would have been obvious. See Final
Act. 3–4. In rejecting claims 3 and 4, the Examiner does not propose to alter
any pattern of adhesive, much less doing so based on the teachings of
Schold. See id. Thus, Appellant’s argument against a proposed combination
of the teachings of Overbay and Schold does not address the Examiner’s
rejection. We sustain the rejection of claims 3 and 4 as unpatentable over
Overbay.
Claims 5 and 6
In the Examiner’s rejection of claims 5 and 6, “Schold is relied on
solely to teach that it is known in the art to have a trim strip assembly
comprising a first side wall and second side wall forming V-shaped cross
section for engaging a corner as shown in [F]igure 3 and is not relied on to
teach a plastic bead or the adhesive.”3 Ans. 5; see also Final Act. 5 (“Schold
is relied on solely to teach trim strip with adhesive having V-shaped cross-
section.”). Thus, Appellant’s argument against altering the pattern of
adhesive taught by Overbay attacks a straw man rather than the Examiner’s

3 The Examiner’s reasoning for the modification of Overbay’s sealing tape
to meet the requirements of claims 5 and 6 is “to provide a preconfigured
shape for engaging a corner of a wall for ease of alignment and/or
installation.” See Final Act. 4.
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proposed modification to Overbay, and, therefore, is not indicative of
Examiner error. We sustain the Examiner’s rejection of claim 5 as
unpatentable over Overbay and Schold.
With respect to the rejection of claim 6, Appellant states, “the bent
configuration of the tape in Fig. 3 [of Schold] does not disclose or suggest a
rigid body formed entirely of adhesive that has a V-shaped cross-section as
called for in claim 6.” Appeal Br. 9. Appellant argues, “[t]he only
disclosure of a V-shape does not correspond to a rigid trim strip body and, as
such, no combination will result in a rigid trim strip body having a V-shaped
cross-section” and “[c]ombining the teachings of Schold when the tape is
applied to the corner to the seam tape of Overbay does not result in a rigid
trim strip body having a V-shaped cross-section.” Id.
In response, the Examiner finds “Overbay discloses a trim strip body
that is a hot melt adhesive, which is the same material as appellant’s trim
strip body, where the body is rigid under a normalized temperature range
and soft when reaching a softening point temperature range.” Ans. 5. The
Examiner further finds that the tape of Overbay, modified as proposed,
“becomes rigid again when the temperature is normalized.” Id.
In reply, Appellant contends:
the only disclosure of a V-shape in Schold is a teaching regarding
bending the tape at the midline corresponding to the thin portion
of the plastic bead. The tape of Schold is not a rigid body. As
such, the proposed combination of Overbay and Schold (1)
cannot result in a rigid body having a V-shaped cross-section and
(2) will not result a body having a V-shaped cross-section that is
formed entirely from an adhesive material.
Reply Br. 3 (emphasis added). Appellant further contends,
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Schold discloses neither a rigid member having a V-shaped
cross-section or a member that is formed entirely of adhesive. As
such, no combination with Schold could result in the trim strip
assembly of claim 6 because there is no teaching or suggestion
to arrive at a rigid body formed entirely from adhesive having a
V-shaped cross-section. A person of skill in the art would not
abstractly pull a shape out of Schold without considering the
configurations and teachings thereof.
Id. at 4 (emphasis added). Thus, Appellant takes the position that the
Examiner’s proposed modification selects a shape (the corner or V-shape)
disclosed by Schold without considering Schold’s teachings as a whole
(including the lack of a teaching of a rigid body).
Appellant’s argument is unavailing because it does not contest any of
the Examiner’s findings of fact, and with respect to the Examiner’s
reasoning, merely concludes that because Schold does not disclose even
more of Appellant’s invention than the portion the Examiner relies on it to
teach, the Examiner’s rejection “abstractly pull[s] a shape out of Schold.”
We agree with the Examiner that Overbay’s sealing tape includes a rigid
body, both before heating its hot melt adhesive and in a cooled state after
heating. See Ans. 5; Overbay, Abstract. Overbay discloses applying this
tape to dry wall, albeit only to a flat surface, not to a corner of a drywall.
See Overbay, Abstract, Figs. 6–8. Thus, Overbay discloses applying flat
rigid tape to a flat portion of dry wall. Schold discloses applying tape to a
corner of dry wall using hot melt adhesive. Schold, Fig. 3. The Examiner
proposes modifying Overbay’s flat, rigid tape to have a shape that fits a
corner as disclosed by Schold, meeting all the requirements of claim 6. See
Final Act. 4–5. The Examiner finds that, under the proposed modification,
Overbay’s tape would still include its rigidity characteristics. Ans. 5.
Appellant does not contest this finding. See Reply Br generally.
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Appellant’s argument that Schold fails to disclose a V-shaped member that
is also a rigid body amounts to an attack on Schold individually, rather than
how Schold’s teachings are implemented in the Examiner’s proposed
combination with Overbay. The Examiner’s only proposed modification to
Overbay is a change in the shape of its sealing tape. See Final Act. 4–5;
Ans. 5. The Examiner’s reasoning to change the shape of Overbay’s sealing
tape to include the corner-shape disclosed by Schold to provide a
“preconfigured shape” for application to a corner (Final Act. 4) is supported
by Schold’s disclosure of using its tape on a corner as shown in Figure 3 and
the fact that when Overbay discloses applying its rigid tape to a flat surface,
the tape is also flat. In other words, Overbay discloses providing tape in the
shape of the surface to which it is to be applied, and Schold discloses
applying tape to a corner, so providing Overbay’s tape in the shape of a
corner would have been an obvious extension of what Overbay already
teaches. Accordingly, we sustain the Examiner’s rejection of claim 6 as
unpatentable over Overbay and Schold.

CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 8 102(a)(1) Overbay 1, 2, 8
3, 4 103 Overbay 3, 4
5, 6 103 Overbay, Schold 5, 6
Overall
Outcome
1–6, 8
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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