Ex Parte Bush et al

Board of Patent Appeals and Interferences

May 13, 2009

10891485 (B.P.A.I. May. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PHILIP BUSH, ROBERT H. BLANPIED,
FREDDIE LEE MURPHY, JIMMY ROGERS DUBOSE,
and JOSEPH M. KONIECZKA
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Appeal 2009-2784
Application 10/891,485
Technology Center 1700
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Decided:1 May 13, 2009
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 48-72, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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The Invention
The Appellants claim a method for forming a coated glass mat. The
Appellants state that such mats are useful in the construction industry as, for
example, gypsum board fiberglass facers and thermosetting polyiso foam
insulation board facers (Spec. 1:10-12). Claim 48 is illustrative:
48. A method of forming a coated glass mat comprising:
conveying a glass mat substrate having non-woven glass fibers into
contact with an applicator roll;
applying a coating comprising latex binder and inorganic pigment to
the glass mat substrate having non-woven glass fibers with a non-smooth
surface of the applicator roll to form the coated glass mat;
said coating being only partially permeated into said substrate while
also imparting a tensile strength to the coated glass mat which on average in
a machine direction is at least 1.33 times greater than the tensile strength of
the glass mat substrate without the coating,
said coated glass mat having a porosity in a range of from 1.3 CFM to
5.0 CFM per square foot.

The References
Leech 2,273,967 Feb. 24, 1942
Randall 2002/0155282 A1 Oct. 24, 2002
Kühn (WO ‘534) WO 94/26534 Nov. 24, 1994

The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 48-56, 59-69, and 72 over Randall in view of the Appellants’
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admitted prior art and Leech, and claims 57, 58, 70, and 71 over Randall in
view of the Appellants’ admitted prior art, Leech and WO ‘534.
OPINION
We reverse the Examiner’s rejections.
We need to address only the independent claims, i.e., claims 48
and 60.2
Issue
Have the Appellants shown reversible error in the Examiner’s
determination that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, forming a coated glass mat
having a tensile strength which, on average in a machine direction, is at least
1.33 times greater than the tensile strength of the glass mat without the
coating?
Findings of Fact
Randall discloses a glass fiber mat-faced gypsum board that is
resistant to a high humidity or high moisture environment during installation
or use (¶¶ 0001-0002). The glass fiber mat can be coated with a
composition which the Appellants disclose is useful for coating their glass
fiber mat, i.e., the composition disclosed in U.S. 5,112,678 (Randall ¶ 0050;
Appellants’ Spec. 15:18-19; 17:18). “[F]or most applications, the amount of
coating will fall within the range of about 50 to about 120 lbs per 1000 sq. ft.
of mat (dry basis)” (¶ 0051) (which encompasses the dry basis coating
amounts of 61.0, 70.5 and 74.2 lbs/MSF exemplified by the Appellants

2 The Examiner does not rely upon WO ‘534, which is applied only to
dependent claims 57, 58, 70, and 71, for any disclosure that remedies the
deficiency in the prior art applied to the independent claims (Ans. 8-9).
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(Spec. 17:26; 18:23-24; 20:22). “The amount of coating applied to the
surface of the fibrous mat should be sufficient to embed the mat completely
in the coating, to the extent that substantially no fibers protrude through the
coating” (¶ 0051). The coating can be applied by any suitable means,
preferably roller coating (¶ 0053).
Leech discloses rollers having surface recesses for retaining coating
material such as melted thermoplastic or liquid adhesive (p. 1, left col., ll. 4-
6 and right col. ll. 25-26). The rollers “transfer and deposit measured
quantities of the coating material on the surface to be coated” (p. 1, left col.,
ll. 20-24).
The Appellants’ admitted prior art relied upon by the Examiner
(Ans. 5) is Example 1 wherein the Appellants apply the U.S. 5,112,678
coating to a glass mat in a solids amount of 70.9 lbs/MSF using the Figure 1
prior art apparatus, resulting in a coating material penetration of about 10%
to about 25%3 and a tensile strength, on average, less than 1.10 times greater
in the machine direction than the tensile strength of the glass mat prior to
coating (Spec. ¶¶ 0007-0008, 0067-0068; Fig. 1).
Analysis
The Appellants argue that Randall does not teach or suggest the
Appellants’ tensile strength requirement, and that Leech’s disclosure of
applying coating material to a surface is not a disclosure or suggestion of

3 The Appellants state that their “penetration of the coating into the glass mat
substrate preferably extends to a depth of from twenty five percent of the
thickness of the coated glass mat to seventy five percent of the thickness of
the coated glass mat” (Spec. 5:27-29).
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providing a coating that partially penetrates the substrate to increase the
tensile strength of the mat (Br. 15, 17, 19).
The Examiner argues that one of ordinary skill in the art would have
been led by Leech to provide Randall’s roller with grooves in order to apply
a controlled amount of coating material, and that doing so inherently would
cause further penetration of the coating material into the glass mat, thereby
increasing its tensile strength (Ans. 6-7, 9-11).
It is undisputed between the Appellants and the Examiner that the
coating material must penetrate into the glass fiber mat to increase the mat’s
tensile strength. The Examiner has not established that even if Leech would
have led one of ordinary skill in the art put grooves in Randall’s roller such
that more coating material is applied to the mat, the coating material would
penetrate into the mat rather than form a thicker coating on the mat’s
surface. The Appellants disclose (Spec. 10:27-30):
The degree of exposure or availability of the coating 116 is a different
phenomena than the actual amount of acquisition by glass mat
substrate 110 of the coating mixture. Indeed, using the new exposure
enhancing technique, no more coating is actually applied for
penetration into the glass mat substrate. Rather, there is more
opportunity for uniform acquisition of the coating 116 by the glass
mat substrate 110.4

The Appellants’ disclosed techniques for obtaining the enhanced penetration
are selecting a proper scraper blade wrap angle and a proper wrap arc on the
applicator roll, adjusting the coating line speed, the coating material

4 Thus, the Examiner’s argument that because Randall applies the same
coating material in the same amount as the Appellants, Randall’s coating is
capable of imparting a tensile strength 1.33 times the tensile strength of the
glass mat without the coating is not persuasive (Ans. 4).
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viscosity and the applicator roll’s surface material, diameter, rotational speed
and rotational direction, and controlling the glass mat web’s thickness and
porosity (Spec. 9:25-10:2; 11:13-21). The Examiner has not established that
Randall’s process, modified as proposed by the Examiner, necessarily would
have a combination of such techniques or any other techniques that would
cause the coating material to penetrate into the glass fiber mat such that the
tensile strength of the coated glass mat in a machine direction is at least 1.33
times greater than the tensile strength of the glass mat without the coating.
An inherent characteristic must be inevitable, and not merely a possibility or
probability. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981). The
Examiner has not provided evidence or technical reasoning which shows
that the Appellants’ recited tensile strength would be inevitable in Randall’s
process modified as proposed by the Examiner.
The Examiner argues that one of ordinary skill in the art would have
optimized the penetration of Randall’s coating material into the glass fiber
mat based upon the admitted prior art penetration amounts, thereby
inherently improving the mat’s tensile strength (Ans. 7).
The Appellants’ prior art penetrations were obtained in an experiment
by the Appellants using the prior art apparatus in the Appellants’ Figure 1
(Spec. 15:8-23). The Examiner has not established that the Appellants’
admitted prior art indicates that penetration was a known result effective
variable with respect to tensile strength such that one of ordinary skill in the
art would have optimized with respect to penetration. If one of ordinary
skill in the art optimized Randall’s penetration, it appears that what would
have been optimized is the characteristic of importance to Randall, i.e.,
resistance to a high humidity and high moisture environment (¶ 0002). The
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Examiner has not established that optimization with respect to resistance to a
high humidity and high moisture environment necessarily would have
resulted in a coated glass fiber mat tensile strength at least 1.33 times greater
than the tensile strength of the mat without the coating.
As stated in KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007),
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner has
not provided the required articulated reasoning with rational underpinning.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 48-56, 59-69, and 72
over Randall in view of the Appellants’ admitted prior art and Leech, and
claims 57, 58, 70, and 71 over Randall in view of the Appellants’ admitted
prior art, Leech and WO ‘534 are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

PLInitial:
sld

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Application 10/891,485

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