Ex Parte SUAU et al

Patent Trial and Appeal Board

Nov 13, 2017

12761435 (P.T.A.B. Nov. 13, 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.
12/761,435 04/16/2010 Jean-Marc SUAU 357466US0 1157
22850 7590 11/15/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
GOLDEN, CHINESSA T
ART UNIT PAPER NUMBER
1788
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-MARC SUAU
and YVES KENSICHER
Appeal 2015-008108
Application 12/761,435
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MONTE T. SQUIRE, and
JEFFREY R. SNAY, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’
decision finally rejecting claims 1—10 and 12—18 under 35 U.S.C. § 103(a) as
unpatentable over Gane et al.1 in view of Schwartz et al.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 US 2006/0142498 Al, published June 29, 2006 (“Gane”).
2 US 2003/0019401 Al, published January 30, 2003 (“Schwartz”).
Appeal 2015-008108
Application 12/761,435
The claimed subject matter is directed to a foamy aqueous suspension
comprising water, calcium sulfate hemihydrate, and a comb polymer (claims 1—5
and 16), a plasterboard comprising two sheets of paper and a body comprising the
foamy aqueous suspension in dried form (claims 6—10 and 17), and a comb
polymer (claims 12—15 and 18).
According to the Appellants, the first step in manufacturing plasterboard
typically is manufacturing an aqueous dispersion of calcium sulfate hemihydrate.
Spec. 1,11. 26—27. The Appellants disclose that “[i]n concrete terms, hemihydrate
in the form of a powder is added to water being agitated in a mixer in the presence
of a dispersing agent. It becomes hydrated when it contacts the water, forming
calcium sulfate dihydrate, meaning gypsum.” Spec. 1,11. 27—30.
The Appellants disclose that the aqueous suspension is subsequently “mixed
with foam taken from a generator (the water is injected into a turbine in the
presence of a foaming agent), then sandwiched between two rolling paper strips.”
Spec. 2,11. 9—11. Thereafter, the article is cut into the desired dimensions of
plasterboard. Spec. 2,1. 11.
The Appellants disclose:
The mixture between the suspension of calcium sulfate hemihydrate
and foam only lasts a few seconds. However, as the structure of the
foam is particularly sensitive to agitations in the environment, it often
degrades during this step. Such degradation leads to the formation of
large bubbles which affect the adhesion of the suspension of calcium
sulfate hemihydrate onto the strips of paper; it is therefore necessary
to overdose the quantity of foaming agent — which accordingly
decreases the productivity of the method — in order to obtain the
desired quantity of foam.
Spec. 2,11. 16—22 (emphasis added).
2
Appeal 2015-008108
Application 12/761,435
According to the Appellants, the addition of a (meth)acrylic acid ester-based
termonomer (i.e., a comb polymer3) leads to an improved anti-defoaming power,
without altering the polymer’s effectiveness as a dispersing agent. Spec. 3,11. 22—
26. The Appellants disclose that “[t]he expression ‘anti-defoaming power’ does
not mean that said polymer generates foam, but rather that, in the presence of
foam, its interaction with it is limited: it destructures little or none of said foam.”
Spec. 3,11. 26-28.
Representative claim 1 is reproduced below from the Claims Appendix of
the Appeal Brief dated March 30, 2015 (“App. Br.”).
1. A foamy aqueous suspension of calcium sulfate hemihydrate,
comprising water, calcium sulfate hemihydrate, and a comb polymer
comprising, expressed as a percentage by weight of the total weight,
monomers a), b) and c):
a) from 5% to 30% of at least one monomer which is
(meth)acrylic acid,
b) from 1 % to 20% of at least one monomer which is an
ester of (meth)acrylic acid, and
c) from 70% to 90% of at least one monomer which is an
alcoxy- or hydroxy-polyalkylene glycol,
the sum of percentages a), b) and c) being equal to at least 50% by
weight of the total weight of the comb polymer.
App. Br. 12.
B. DISCUSSION
The Examiner finds Schwartz discloses wallboard and drywall comprising
two sheets of paper and a body therebetween, wherein the body comprises a dried
foam aqueous suspension comprising water, calcium sulfate hemihydrate, and a
3 The Appellants disclose that the “comb” polymer is made of a (meth)acrylic
skeleton onto which are grafted alcoxy- or hydroxy-polyalkylene glycol lateral
chains. Spec. 2,11. 27—29.
3
Appeal 2015-008108
Application 12/761,435
comb polymer. Ans. 3.4 The Examiner does not find that Schwartz’s comb
polymer falls within the scope of the claimed comb polymer. See Ans. 10
(explaining that “Gane is relied upon for teaching the claimed copolymerized
polymer not Schwartz”).5
The Examiner finds Gane discloses an aqueous suspension comprising
water, gypsum,6 and a grafted copolymer. The Examiner finds the grafted
copolymer consists of “from 2% to 95% of methacrylic acid which reads on
Appellant’s claimed range of 5% to 30%,” “from 0% to 50% of alkyl acrylates or
methacrylates (methyl methacrylate) which reads on Appellant’s claimed range of
1% to 20%,” and “from 2% to 95% of an alkoxy polyalkylene glycol which reads
on Appellant’s claimed range of 70% to 90%.” Ans. 2—3. Thus, the Examiner
finds Gane’s grafted copolymer meets the claimed invention. Ans. 8. The
Examiner, however, finds “Gane fails to teach wherein the grafted copolymer is a
comb polymer.” Ans. 6. The Examiner also does not find that the aqueous
suspension disclosed in Gane is used to make wallboard or drywall. Rather, Gane
4 Examiner’s Answer dated July 6, 2015.
5 The Examiner finds Schwartz discloses a copolymer comprising an acrylate and
an alkoxy polyalkylene glycol. Ans. 3. The Examiner, however, does not find that
Schwartz’s copolymer comprises monomers in amounts within the claimed ranges.
6 The Appellants argue that the gypsum disclosed in Gane is natural gypsum (i.e.,
calcium sulfate dihydrate), not calcium sulfate hemihydrate as claimed and
disclosed in Schwartz. App. Br. 6. For support, the Appellants direct our attention
to, inter alia, paragraph 12 of Gane (App. Br. 6), which discloses that “mineral
fillers and/or pigments, such as calcium carbonate, dolomites, magnesium
hydroxide, kaolin, talc, gypsum, titanium oxide, satin white or aluminum
trihydroxide” are used in the suspension. In response, the Examiner merely finds
that “both Gane and Schwartz include a gypsum component within the aqueous
suspension.” Ans. 7.
4
Appeal 2015-008108
Application 12/761,435
discloses a paper sheet having improved gloss due to the grafted copolymer. See
Gane 14; see also App. Br. 4.
On this record, the Examiner has failed to explain, in any detail, why the
claimed comb polymer, comprising the claimed monomers in the claimed amounts,
would have been obvious to one of ordinary skill in the art based on the combined
teachings of Gane and Schwartz. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992) (the examiner bears the initial burden of presenting a prima facie case of
unpatentability). Therefore, the § 103(a) rejection is not sustained.
C. DECISION
The Examiner’s decision is reversed.
REVERSED
5