Ex Parte Porter

Board of Patent Appeals and Interferences

Aug 25, 2004

10155392 (B.P.A.I. Aug. 25, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte JOHN FREDERICK PORTER

____________

Appeal No. 2004-1810
Application No. 10/155,392

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ON BRIEF
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Before OWENS, DELMENDO and PAWLIKOWSKI, Administrative Patent
Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 7 and 29-31.
Claim 7 is representative of the matter on appeal and is
set forth below:
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Application No. 10/155,392

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7. A substantially planar cementitious board
having first and second opposed faces, said
cementitious board comprising:
hydraulic cement cementitious matrix material;
and
composite fabric reinforcement embedded within
said cementitious matrix material, said reinforcement
comprising an open mesh first component of high
modulus fiber strands continuously coated with alkali-
resistant polymeric material and a nonwoven web second
component, wherein at least one of said first and
second components is treated to enhance at least one
of wetting and adhesion characteristics thereof with
respect to said hydraulic cement cementitious matrix
material.

The examiner relies upon the following references as
evidence of unpatentability:

Kennedy et al. (Kennedy) 5,308,692 May 3, 1994
Newman et al. (Newman) 6,054,205 Apr. 25, 2000

On page 6 of the brief, appellant states that the
claims stand or fall together. Accordingly, we consider
claim 7 in this appeal. 37 CFR § 1.192(c)(7-8)(2003).
Claims 7 and 29-31 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Newman in view of Kennedy.

OPINION
We refer to pages 3-4 of the answer regarding the
examiner’s rejection.
On page 8 of the brief, appellant argues that claim 7
requires that the first and second components of the fabric
reinforcement, that is embedded within the cementitious
matrix material, is treated to enhance at least one of
Appeal No. 2004-1810
Application No. 10/155,392

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wetting and adhesion characteristics thereof with respect
to the cementitious matrix material. Appellant states that
Newman does not teach this aspect of the claimed invention.
The examiner recognizes this deficiency in Newman. The
examiner relies upon Kennedy for teaching the addition of
surfactants to a binder comprising a latex to assist the
latex in wetting and penetrating the mat of fibers, and the
examiner refers to column 9, lines 57-61 of Kennedy.
Answer, pages 3-4.
Beginning on page 8 of the brief, appellant argues
that the product in Kennedy is a fire resistant mat that is
used as a backing material for building products.
Appellant argues this is in stark contrast with the subject
matter of claim 7, wherein a composite fabric is embedded
within a cementitious matrix material (rather than a
backing material).
Appellant also argues that Kennedy is silent with
regard to enhancing the wetting or adhesion characteristics
of the mat with respect to the materials of which the board
is made. Appellant argues that Kennedy makes no mention of
any need for or advantage in providing any wetting or
adhesion enhancement of the mat in relation to the building
panel material. Brief, page 11. Appellant argues that the
wetting agent used in Kennedy is provided for the purpose
of augmenting the fire resistance capability of the mat,
and has nothing to do with promoting retention of the mat,
either internally or externally, to a building panel.
Brief, page 10.
Appeal No. 2004-1810
Application No. 10/155,392

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We note that the motivation to combine need not be
identical with appellant’s reasons/purpose. In re Dillon,
919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)
(en banc), cert. denied, 500 U.S. 904 (1991). In the
instant case, Kennedy teaches that surfactants may be used
“to assist the latex in wetting and penetrating the mat of
fibers”. See column 9, lines 59-61. Newman expresses a
desire for the binder to “penetrate” the yarns. See column
5, lines 38-41. Thus, there is motivation to combine the
references in order to enhance the penetration of the
binder into the fibers. Also, Kennedy teaches to use a
fire resistant latex binder composition, having surfactants
therein, to provide improved fire resistance to a building
component, such as a gypsum board. See column 1, lines 10-
15, column 9, lines 56-68, and columns 15-16 of Kennedy.
Therefore, it would further have been obvious to have
utilized such a binder composition for the binder coating
of Newman (see column 5, lines 33-68 of Newman) to improve
the fire resistance properties of the scrim/resultant
building component of Newman. Appellant has not shown that
the surfactants disclosed in Kennedy are not the kinds of
surfactants that would provide the properties claimed in
claim 7.1 We therefore are not persuaded by appellant’s
arguments.
In view of the above, we affirm the rejection.

1 Appellant’s specification states that “the first and/or second
components may be coated with one or more surfactants, hydrophilic
compounds, foam booster/stabilizers and polar polymer topical
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Application No. 10/155,392

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
ROMULO H. DELMENDO ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld

solutions”. See the specification, page 12, at line 28 through page
13, line 11.
Appeal No. 2004-1810
Application No. 10/155,392

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JOHN F. LETCHFORD
KLEHR, HARRISON HARVEY, BRANZBURG & ELLERS
260 SOUTH BROAD STREET
PHILADELPHIA, PA 19102