PTAB

IPR2017-01350

New NGC Inc v. United States Gypsum Co

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Set Gypsum-Containing Compositions With Enhanced Resistance To Permanent Deformation
  • Brief Description: The ’284 patent relates to gypsum-containing compositions for building products, such as wallboard and acoustical tiles. The invention claims to improve sag resistance by including "enhancing materials," specifically condensed phosphates like sodium trimetaphosphate (STMP), in the gypsum slurry.

3. Grounds for Unpatentability

Ground 1: Claims 1-7, 10-15, 18, 22, 26, 29, 32-34, and 40 are obvious over Graux in view of ASTM C473-95, Hjelmeland, Sucech, Baig, and Summerfield.

  • Prior Art Relied Upon: Graux (Patent 5,932,001), ASTM C473-95, Hjelmeland (Patent 5,980,628), Sucech (Patent 5,643,510), Baig (Patent 5,320,677), and Summerfield (Patent 2,985,219).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Graux disclosed the core composition of the challenged claims, teaching a plaster containing calcined gypsum, water, starch, and STMP (a claimed "enhancing material"). The ’284 patent’s sag resistance requirement was rendered obvious by the industry standard test for measuring sag, ASTM C473-95, which a person of ordinary skill in the art (POSITA) would naturally use to verify the known properties of a composition like Graux’s. The secondary references were alleged to teach other claimed features: Hjelmeland taught specific concentration ranges for phosphates like STMP; Sucech taught using foaming agents to create voids; Baig taught including "host particles" for strength; and Summerfield taught the basic method of manufacturing gypsum board between paper cover sheets.
    • Motivation to Combine: A POSITA would combine Graux's composition with the standard ASTM test to confirm the known benefits of STMP on sag resistance. The motivation to add the secondary references was to incorporate other well-known, desirable features into the basic gypsum board formulation. For example, a POSITA would add a foaming agent (Sucech) to reduce weight or add host particles (Baig) to improve strength, both common practices in the field.
    • Expectation of Success: Petitioner asserted a POSITA would have a high expectation of success because the combination involved applying conventional processing steps and additives (foaming agents, paper liners, etc.) to a known base composition (Graux) to achieve predictable improvements.

Ground 2: Claims 1-7, 10-15, 18, 22, 26, 32-34, and 40 are obvious over Satterthwaite in view of Hjelmeland, ASTM C473-95, Sucech, Baig, and Summerfield.

  • Prior Art Relied Upon: Satterthwaite (Patent 3,234,037), Hjelmeland (Patent 5,980,628), ASTM C473-95, Sucech (Patent 5,643,510), Baig (Patent 5,320,677), and Summerfield (Patent 2,985,219).
  • Core Argument for this Ground:
    • Prior Art Mapping: Satterthwaite, a 1966 patent, was presented as teaching the key inventive concept. It disclosed using STMP-treated starch in gypsum-based acoustical tiles to achieve "increased resistance to warp or sag." Petitioner contended that this fundamental teaching rendered the ’284 patent's claims obvious. The supporting combination of secondary references served the same purpose as in Ground 1: ASTM provided the standard sag test, Hjelmeland provided dosage ranges, Sucech provided foaming, Baig provided host particles, and Summerfield provided the paper-faced board structure.
    • Motivation to Combine: The primary motivation was to apply Satterthwaite’s established principle of using STMP to improve sag resistance in gypsum products to the manufacturing of standard gypsum wallboard. A POSITA would be motivated to use Satterthwaite's sag-resistant composition and confirm its properties using the standard ASTM test. The further combination with the other references was driven by the desire to produce a commercially viable board with known features like reduced weight and improved strength.
    • Expectation of Success: Success was predictable because Satterthwaite already taught that STMP improves sag resistance in a set gypsum product. Applying this known principle to a different type of gypsum product (wallboard instead of tile) and incorporating other standard manufacturing techniques would have been a straightforward application of established art.

4. Key Claim Construction Positions

  • "Enhancing Material(s)": Petitioner argued this term should be construed as "an additive that improves at least one of resistance to permanent deformation (e.g., sag resistance), strength, and dimensional stability in set gypsum-containing products." This construction, derived from the patent’s specification, was central to arguing that prior art disclosing STMP for improving strength or sag inherently taught the use of an "enhancing material."
  • "Host Particle(s)": For claim 4, Petitioner proposed construing this term as "a macroscopic particle, such as a fiber, a chip or a flake, of a substance other than gypsum that is substantially insoluble in the gypsum-containing slurry." This definition was taken directly from the Baig patent, which was incorporated by reference into the ’284 patent.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-7, 10-15, 18, 22, 26, 29, 32-34, and 40 of the ’284 patent as unpatentable under 35 U.S.C. §103.