XU, Yufeng et al.

Patent Trials and Appeals Board

Jan 21, 2020

13335396 - (D) (P.T.A.B. Jan. 21, 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.
13/335,396 12/22/2011 Yufeng XU 4340A US GYP (707980) 9506
74538 7590 01/21/2020
USG Corporation
Attn: Pete Sahu
700 North Highway 45
Libertyville, IL 60048-1296
EXAMINER
KHAN, TAHSEEN
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
01/21/2020 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 PATENT TRIAL AND APPEAL BOARD
____________
Ex parte YUFENG XU and RENEE WEINBERGER
____________
Appeal 2019-003052
Application 13/335,396
Technology Center 1700
____________

Before KAREN M. HASTINGS, GEORGE C. BEST, and JANE E.
INGLESE, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
rejection under 35 U.S.C. § 103(a) of claims 1, 4–16, and 21–42 as
unpatentable over Tonyan (US 6,620,487 B1, issued Sept. 16, 2003).2

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies United States Gypsum Company as
the real party in interest (Appeal Br. 2).

2 The Examiner designated the rejection as a new ground in the Answer
(Ans. 3). However, Appellant admits that they “cannot discern any material
difference between the new grounds of rejection and the previous rejection”
(Reply Br. 3).
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Application 13/335,396

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We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 1 is representative and reproduced below:
1. A board comprising:
a multi-layer core comprising (a) a first
cementitious layer having a
first density and a first thickness, and (b) a second
cementitious layer having a second density and a second
thickness; wherein the first density is higher than the
second density, wherein the first cementitious layer is
from about 1/8 inch to about 1/4 inch thick, and wherein
the ratio of the first thickness to the second thickness is
from about 1:1 to about 1:3.

Claim 26 is directed to a composite board comprising a gypsum core
between two sheets of facer material with the core having the structure as set
out in claim 1 (Appeal Br. Claims Appendix 26, 27).
OPINION
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejection (e.g., generally Ans.). In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant to identify the alleged error in the Examiner’s rejection).
We sustain the rejection for the reasons expressed by the Examiner in the
Final Office Action and the Answer.
We add the following primarily for emphasis.
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Claims 1, 4–6, 9–11, 13–15, 21, and 22
It is well established that when claimed ranges overlap, or lie inside
ranges of the prior art, a prima facie case of obviousness is established. In re
Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving
overlapping ranges, we and our predecessor court have consistently held that
even a slight overlap in range establishes a prima facie case of
obviousness.”).
There is no dispute that Tonyan teaches a multi-layer cementitious or
gypsum core having at least one layer with a first density higher than a
second density of another layer. Appellant’s only argument is that “Tonyan
does not disclose the specific thicknesses and ratios in combination” (Appeal
Br. 15). However, Appellant has not adequately disputed that the claimed
range of first layer thickness and the claimed range of thickness ratio of the
first layer to the second layer of “about 1.1 to about 1:3” reasonably
encompasses the applied prior art of Tonyan for reasons set forth by the
Examiner (generally Ans.; Appeal Br.; Reply Br.).
Moreover, it is well settled that it would have been obvious for an
artisan with ordinary skill to develop workable or even optimum ranges for
result-effective parameters. In re Woodruff, 919 F.2d 1575, 1577, (Fed. Cir.
1990); In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d
454, 456 (CCPA 1955).
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). As the Examiner
pointed out, Tonyan discloses that thickness can have a direct impact on
shear strength (col. 1, ll. 28–31; see also col. 1, ll. 54–60). Accordingly,
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Application 13/335,396

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substantial evidence supports the Examiner’s obviousness determination of
the claimed thickness range and thickness ratio range of the recited layers. It
is also noted that the claims are open-ended and do not preclude additional
layers.
Appellant does not rely upon any evidence of unexpected results due
to the claimed ratio range.
Accordingly, a preponderance of the evidence supports the
Examiner’s obviousness determination of the claimed subject matter.
We thus affirm the rejection.
Claims 26, 31–36, and 38–42
Appellant relies on the same argument for claim 26 as for claim 1
(Appeal Br. 14, 15). This is not persuasive of error in the Examiner’s
rejection for the reasons set out above.
Claims 7, 8, 29, and 30
Appellant argues that Tonyan does not disclose the second density of
from about 25 to about 40 lbs/ft3 as recited in these claims, pointing out that
some examples of Tonyan disclose densities above 63 lbs/ft3 (Appeal Br. 16,
17). However, it is well established that a reference is not limited to its
examples or preferred embodiments.
Furthermore as pointed out by the Examiner, Tonyan is directed to
making a second layer less dense than a first layer to improve nailability and
cuttability, similar reasons to those of Appellant (Tonyan, e.g., col. 3, l. 65–
col. 4, l. 8; Spec. ¶¶ 14, 16). Tonyan thus exemplifies that density is a result
effective variable as found by the Examiner (Ans. 8). Accordingly,
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substantial evidence supports the Examiner’s obviousness determination of
the claimed densities of the various layers.
Claim 12
Appellant argues Tonyan does not disclose facer materials (Appeal
Br. 17). Appellant however has not shown error in the Examiner’s
determination that it would have been obvious to provide facer material to
the gypsum panel of Tonyan given the disclosures that the panel should be
capable of being fastened to framing with nails or screws and that it should
provide a bondable surface for exterior finishing systems (Tonyan, col. 2, ll.
12, 13, 23, 24; Ans. 9). There is no doubt that one of ordinary skill is well
aware that gypsum layers are normally placed between facer materials to
form drywall panels.
Claim 27
Appellant argues that Tonyan does not disclose a skim coat and facer
material as recited in claim 27 (Appeal Br. 18). This argument is not
persuasive for similar reasons as above for claim 12, and because Appellant
has not shown reversible error in the Examiner’s position that skim coats are
well known, and/or that one of the multiple cementitious layers of Tonyan
may be viewed as a skim coat (Ans. 9).
Claims 16 and 37
Appellant argues that Tonyan does not explicitly disclose the “weight
of 1500 lb/msf or less” and ½ inch thickness of claims 16 and 37, because
such a weight and thickness would result in a density of 36 lbs/ft3 (Appeal
Br. 19, 20). As pointed out by the Examiner, Tonyan teaches a typical ½
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Application 13/335,396

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inch thick board may weigh 99 lbs or less (col. 10, ll. 54–58; Ans. 9).
Furthermore, since Appellant has not shown reversible error in the
Examiner’s position that thickness and density are known result effective
variables, weight would have likewise been a related known result effective
variable. As previously discussed, it is well settled that it would have been
obvious for an artisan with ordinary skill to develop workable ranges for
result-effective parameters. In re Woodruff, 919 F.2d at 1577; In re Boesch,
617 F.2d at 276; In re Aller, 220 F.2d at 456. Thus, absent any evidence of
criticality of the claimed parameters, the Examiner’s obviousness
determination is reasonable.
In light of these circumstances, we affirm the Examiner’s rejection of
all the claims on appeal.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–16,
21–42
103 Tonyan 1, 4–16,
21–42

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED