Ex Parte Bush et alDownload PDFBoard of Patent Appeals and InterferencesMay 13, 200910891485 (B.P.A.I. May. 13, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte PHILIP BUSH, ROBERT H. BLANPIED, FREDDIE LEE MURPHY, JIMMY ROGERS DUBOSE, and JOSEPH M. KONIECZKA ________________ Appeal 2009-2784 Application 10/891,485 Technology Center 1700 ________________ Decided:1 May 13, 2009 ________________ 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). Appeal 2009-2784 Application 10/891,485 2 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’ Appeal 2009-2784 Application 10/891,485 3 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). Appeal 2009-2784 Application 10/891,485 4 (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). Appeal 2009-2784 Application 10/891,485 5 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). Appeal 2009-2784 Application 10/891,485 6 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 Appeal 2009-2784 Application 10/891,485 7 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 Appeal 2009-2784 Application 10/891,485 8 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD 11TH FLOOR ARLINGTON, VA 22203 Copy with citationCopy as parenthetical citation