Ex Parte Lu et al

Patent Trial and Appeal Board

Nov 20, 2017

12970011 (P.T.A.B. Nov. 20, 2017)

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.
12/970,011 12/16/2010 Lida Lu 1014-00-US-01-ABP 5296
112 7590 11/22/2017
Armsitrnna WnrlH TnHnsitriesi Tno
EXAMINER
2500 Columbia Avenue
Lancaster, PA 17603
HUANG, CHENG YUAN
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
ABP_patents @ armstrongceilings.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIDA LU and KENNETH G. C AID WELL1
Appeal 2017-002214
Application 12/970,011
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
AVELYN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 5—9, 12—15, 18, and 21—24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify the real party in interest as Armstrong World
Industries, Inc., the assignee of the above-captioned application. Appeal Br.
2.
2 In our Decision we refer to the Specification filed December 16, 2010
(“Spec.”), the Final Office Action appealed from dated February 10, 2016
(“Final Act.”), the Appeal Brief filed July 5, 2016 (“Appeal Br.”), the
Examiner’s Answer dated October 5, 2016 (“Ans.”) and the Reply Brief
filed November 28, 2016 (“Reply Br.”).
Appeal 2017-002214
Application 12/970,011
STATEMENT OF THE CASE
The subject matter on appeal relates to coated panels, in particular,
sag resistant, formaldehyde-free coated fibrous substrates, useful for many
purposes including suspended ceiling tile systems. Spec. 1 and 2.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A coated fibrous substrate comprising:
a fibrous substrate that absorbs moisture and may sag with
increases in humidity; and
a formaldehyde-free coating applied to a major surface of
the fibrous substrate, the formaldehyde-free coating comprising
a binder system comprising
a polycarboxy polymer,
a polyol crosslinker selected from the group
consisting of glycerol, dextrose, fructose, sucrose, and
sorbitol, and
a filler,
wherein the formaldehyde-free coating has a pH of from
about 6 or greater and is capable of hygroscopic expansion and
wherein the formaldehyde-free coating is neutralized with a
neutralizing agent consisting of a volatile base and wherein the
coated fibrous substrate is a ceiling tile.
Appeal Br. 13 (Claims App’x).
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Appeal 2017-002214
Application 12/970,011
REJECTIONS
The Examiner maintains the following rejections:
A. Claims 1,3, 5—9, 12—15, and 21—24 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Morita3 in view
of Helbing,4 Hindi,5 and Adamo.6 Final Act. 2.
B. Claim 18 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Morita in view of Helbing, Hindi, and
Adamo. Id. at 8.
Appellants seek our review of Rejections A and B. Appeal Br. 4.
Appellants rely on the same arguments for all claims on appeal. Id.
Because the basis for our reversal—i.e., the lack of a coating comprising a
binder system where the coating has a pH of from about 6 or greater—is
common for all claims, we focus our discussion below on claim 1 to resolve
the dispositive issues on appeal.
OPINION
The Examiner finds that Morita teaches a formaldehyde-free coated
fibrous substrate where the coating comprises a binder system and where the
coating has a pH greater than 8. Final Act. 2—3. The Examiner
acknowledges that Morita fails to suggest the claimed binder system but
additionally finds that Hindi teaches a binder comprising a polycarboxy
3 Ken-ichi Morita, US 6,403,052 Bl, issued June 11, 2002 (“Morita”).
4 Clarence H. Helbing, US 2005/0202224 Al, published September 15, 2005
(“Helbing”).
5 Hindi et al., US 2004/0069020 Al, published April 15, 2004 (“Hindi”).
6 Adamo et al., US 2005/0214534 Al, published September 29, 2005
(“Adamo”).
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Appeal 2017-002214
Application 12/970,011
polymer, a polyol crosslinker (glycerol, sucrose, or sorbitol), and a filler. Id.
at 3. The Examiner reasons that one skilled in the art would have reason to
combine the substrate of Morita with the binder system of Hindi, “to impart
toughness, for reaction with the polyacid in the composition and in order to
control cost.” Id. The Examiner further finds that Helbing discloses a
coated fibrous substrate where the coating is neutralized with a neutralizing
agent that is a volatile base. Id. The Examiner explains that one of ordinary
skill in the art would have found it obvious “to neutralize the coating of
Morita in order to avoid corrosion problems in manufacturing equipment.”
Id. at 4. The Examiner further finds that Adamo teaches a coated fibrous
substrate for use as a ceiling tile and reasons that one of ordinary skill in the
art would have found it obvious to use the substrate of Morita as a ceiling
tile “wherein such ceiling tile would not emit harmful gases, yellow over
time, and emit foul order [sic] when wet.” Id.
Appellants raise three arguments: (1) “the proposed combination of
Morita and Hindi fails to meet the pH feature of claims 1,21, and 18”
(Appeal Br. 6); (2) “the proposed combination of Adamo and Helbing to the
coated substrate of Morita as modified by Hindi is improper” (Id. at 8); and
(3) “Morita teaches away from the binder system of Hindi and Helbing” (Id.
at 9). Because we agree with Appellants’ first argument, we do not reach
the second or third arguments.
Appellants argue that the combination of Morita and Hindi fails to
meet the pH limitation “of from about 6 or greater” as claimed. Appeal Br.
6. Appellants explain that “the binder system [of Hindi] helps provide
‘excellent recovery and rigidity’” and that “achieving such excellent
recovery and rigidity requires that the pH of the binder system be Tow — i.e.,
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Appeal 2017-002214
Application 12/970,011
‘no greater than 4.5.”” Id. Therefore, Appellants reason that including the
binder system of Hindi, as the Examiner suggests, “requires that the binder
system have a maximum pH of about 4.5.” Id. at 6.
We agree with Appellants. The Examiner relies on Hindi to supply
the binder system as claimed. But, Hindi discloses a filler extended
fiberglass binder having a low pH. According to Hindi,
The low molecular weight polycarboxy polymer, when
combined with a low pH binder, results in a final product which
exhibits excellent recovery and rigidity. [Hindi | 21 (emphasis
added)].
A low ratio, approaching 1/0.7 has been found to be of particular
advantage in the present invention, when combined with a low
molecular weight polycarboxy polymer, and also preferably with
a low pH binder. [Id. 23 (emphasis added)].
It is most preferred that the pH of the binder of the present
invention also be low, i.e., no greater than 4.5. For it has been
found that the combination of low molecular weight polycarboxy
polymer with a lowered pH provides a binder exhibiting minimal
processing difficulties and a final product with excellent
recovery and rigidity. Maintaining the pH in the range of greater
than 3.5 to 4.5 or less, also allows one to avoid serious problems
with corrosion of the equipment while still realizing the benefits
of the low pH. [Id. at 125 (emphasis added)].
The Examiner insists that “Hindi is open to any pH value and is not limited
to values of 3.5^4.5,” which relates to a preferred embodiment. Ans. 10.
However, as shown above, the disclosure of Hindi stresses the importance of
a binder having a low pH, i.e., one no greater than 4.5. The Examiner has
failed to show that the inclusion of the low pH binder system of Hindi in the
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Application 12/970,011
coated substrate of Morita would result in a coating having a pH of from
about 6 or greater.
Therefore, on this record, we are constrained to reverse the
Examiner’s rejection.
CONCLUSION
Appellants have shown a reversible error in the Examiner’s rejection
of claims 1, 3, 5—9, 12—15, 18, and 21—24 under 35 U.S.C. § 103(a) as
unpatentable over Morita in view of Helbing, Hindi, and Adamo.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 5—9,
12—15, 18, and 21—24 is reversed.
REVERSED
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