Ex Parte Colbert

Board of Patent Appeals and Interferences

Jun 22, 2011

10625624 (B.P.A.I. Jun. 22, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ELIZABETH A. COLBERT
____________________

Appeal 2010-001764
Application 10/625,624
Technology Center 1700
____________________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-19 and 32-39. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Claims 1 and 13 are illustrative of the claimed subject matter:

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1. A gypsum board precoated during manufacture with a coating, the
gypsum board comprising:
a gypsum core having a first side and a second side and a facing sheet
disposed on the first side; and
the coating disposed on an entirety of the facing sheet,
wherein at least a portion of the coating penetrates through at least a
portion of the facing sheet and into the gypsum core.
13. A gypsum board precoated during manufacture with a coating, the
gypsum board comprising:
a gypsum core having a first side and a second side and a facing sheet
disposed on the first side; and
the coating disposed on an entirety of the facing sheet such that the
facing sheet has a level 5 finish after manufacture and prior to applying the
gypsum board in an intended application.
The Examiner maintains, and Appellant appeals the rejection of all the
claims under 35 U.S.C. § 103(a) as unpatentable over the combined prior art
of Francis (US 4,287,103) and Zuber (US 6,105,325).
Appellant’s arguments mainly focus on independent claim 1.
Accordingly we will focus our discussion on independent claim 1. We will
will also discuss other claims to the extent Appellant separately addresses
them, that is, independent claims 13, 15, and 16 and dependent claims 33-35
(App. Br. 8-10).
MAIN ISSUE
Did the Examiner reversibly err in determining that the claimed
gypsum board would have been obvious over the applied combined prior
art?
We answer this question in the negative.
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PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). The analysis need not seek out precise
teachings directed to the specific subject matter of the claim, for it is proper
to take account of the inferences and creative steps that a person of ordinary
skill in the art would employ. Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
ANALYSIS
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
Appellant argues that 1) there is no teaching or suggestion of coating
the entirety of a paper facing with a coating, 2) Zuber’s joint-pointing
coating is not equivalent with the pigment layer therein and is not equivalent
to precoating the board, and 3) there is no teaching of a coating penetrating
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the gypsum core as required by claim 1 (App. Br. 4-7; Reply Br. generally).
We do not find any of these arguments persuasive for the following reasons.
Specifically, each independent claim contains a product-by-process
limitation, that is, that the gypsum board is “precoated during manufacture
with a coating”, for which we look to the product claimed, not the process
steps, for patentability. It is well established that a product claim is not
limited by the process by which it is made.1 In re Brown, 459 F.2d 531, 535
(CCPA 1972) (“[I]t is the patentability of the product claimed and not of the
recited process steps which must be established.”) The final product of the
combined prior art of Zuber and Francis and the subject matter of claim 1
are each “a gypsum board” with a coating disposed on the entirety of the
facing sheet.
Appellant admits in their Specification that coated gypsum board
made by applying a coating to a facing sheet before the gypsum is applied
was known in the prior art (Spec. [0005])2. Appellant’s Specification also
discusses the prior art of Zuber (which is used in the rejection by the

1 “Where a product-by-process claim is rejected over a prior art product that
appears to be identical, although produced by a different process, the burden
is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983).

2 See In re Reuning, 276 Fed. Appx. 983, 986 (Fed. Cir. April 25, 2008)
(unpublished) (having acknowledged that a claimed element is taught by the
prior art, an appellant cannot defeat an obviousness rejection by asserting
that the cited references fail to teach or suggest this element); see also
Constant Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
1988) (“A statement in a patent that something is in the prior art is binding
on the applicant and patentee for determinations of anticipation and
obviousness.”)
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Examiner) and states that Zuber “disclosed prefabricated elements, wherein
the structure and or external surface of the prefabricated element is
substantially homogeneous with the composition of a jointing material, e.g.,
a sealing coat, a joint coat and/or a joint pointing coat to obtain an overall
surface having one or more physical characteristics, including color or
shade, which are substantially homogenous in virtually the entire overall
surface” (Spec. [0006]; emphasis added). Appellant also admits that the
coating on the product of Zuber “imparts desirable aesthetic qualities
including surface coloration, reflectance, and absorb billeting absorbency.”
(Spec. [0008]). One of ordinary skill in the art would have appreciated that
a surface sealing coat is conventionally applied to the entire gypsum board
surface.
Appellant’s Specification also discusses the standard definition of a
level 5 finish, and this definition establishes that it was known to apply a
thin skim coat of joint compound over the entire surface of a board (Spec.
[0073] (”a thin skim coat of joint compound . . . is applied to the entire
surface”)).
Accordingly, Appellant’s arguments that there is no teaching or
suggestion to apply a coating over the entire surface of a board and that
Zuber’s joint-pointing coat is not equivalent with its pigment layer are
unavailing. It is the prior art as a whole which must be considered. As set
forth above, the product of Zuber has a coating that imparts desirable
aesthetic properties. Consequently, we agree with the Examiner that it
would have been obvious to have obtained a gypsum board as defined by
these claims. Furthermore, Appellant has not point out any error in the
Examiner’s position that the broadest reasonable interpretation of a coating
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encompasses the homogenous surface of the joint-point coating and pigment
coating layer of Zuber.3
Appellant’s argument that the Examiner has not shown that “at least a
portion of the coating penetrates through at least a portion of the facing sheet
and into the gypsum core” is unavailing. During examination, “claims . . .
are to be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). The claimed
invention does not define any specific degree of penetration; thus, the claim
encompasses the slightest penetration of the coating into the gypsum. In
light of these circumstances, we agree with the Examiner that it is reasonable
to expect that the coating material of the applied prior art would “penetrate
therethrough, as broadly claimed” (Ans. 7). Appellant has not directed us to
any persuasive rationale or credible evidence that the Examiner’s claim
interpretation regarding this limitation is unreasonable. Likewise, it would
have been obvious to apply a coating material with a moisture content
sufficient to expect that the coating material of the applied prior art will
penetrate to some extent into the gypsum core.
The preponderance of the evidence establishes that a gypsum board
with a standard level 4 or level 5 finish as required by independent claims 13
and 15 respectively would have been within the ordinary level of skill in the

3 Furthermore, the prefabricated board of Zuber has its entire surface coated
with a pigment layer covering its upper layer (i.e., the pigment layer per se
of Zuber reasonably can be viewed as a precoating). This also exemplifies
that a precoated gypsum board is within the level of ordinary skill in the art.
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art as explained by the Examiner (Ans. 5, 6 (“a facing sheet with a level 4 or
5 finish, would obviously have been present” in the prior art); see also e.g.,
Spec. [0072], [0073]). With respect to independent claim 16, Appellant
merely repeats one of the arguments applied to claim 1, i.e., that the applied
prior art does not teach a board precoated with a diluted form of joint
compound. This argument is not persuasive for the reasons set out above.
In sum, Appellant has not directed us to any persuasive rationale or
credible evidence that the article of the proposed combination of Francis and
Zuber is patentably distinct from the claimed invention.
With respect to dependent claims 33-35, Appellant’s argument that a
precoating applied before a drying oven is “structurally significant” (App.
Br. 10) are unavailing. Arguments and conclusions unsupported by factual
evidence carry no evidentiary weight. In re De Blauwe, 736 F.2d 699, 705
(Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). On this
record, Appellant has not directed us to any convincing rationale or evidence
that the penetration imparted by this process results in an unobvious
structure. Furthermore, claim 1 is the only independent claim that requires
any penetration to occur.
Accordingly, we sustain the Examiner’s § 103 rejection of all the
claims on appeal.
DECISION
The decision of the Examiner is affirmed.
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

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