PTAB

IPR2017-01352

New NGC Inc v. United States Gypsum Co

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Gypsum-Containing Products with Increased Sag Resistance and Methods of Making Same
  • Brief Description: The ’914 patent describes gypsum-containing compositions, such as gypsum boards, prepared with specific "enhancing materials" to improve physical properties. The invention focuses on adding condensed phosphates, particularly sodium trimetaphosphate (STMP), to a calcined gypsum slurry to yield a final product with greater resistance to permanent deformation (sag) and improved strength.

3. Grounds for Unpatentability

Ground 1: Obviousness over Graux, ASTM, Hjelmeland, Sucech, and Summerfield - Claims 1-4, 6, 8, and 10 are obvious over Graux in view of multiple secondary references.

  • Prior Art Relied Upon: Graux (Patent 5,932,001), ASTM C473-95 ("ASTM"), Hjelmeland (Patent 5,980,628), Sucech (Patent 5,643,510), and Summerfield (Patent 2,985,219).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that the primary reference, Graux, discloses the core elements of the claimed invention, including a plaster composition made of calcined gypsum, water, an accelerator, starch, and STMP. Petitioner contended a POSITA would understand that STMP functions as an "enhancing material" to improve product quality. The secondary references were argued to supply the remaining claim elements: Summerfield teaches the basic process of manufacturing a paper-faced gypsum board by depositing a slurry between cover sheets; ASTM discloses the standard method for testing sag resistance recited in the claims; Hjelmeland teaches using condensed phosphates (like STMP) within the claimed concentration ranges (claim 2); and Sucech teaches adding foaming agents to create uniformly distributed voids for a lightweight core (claims 8 and 10).
    • Motivation to Combine: Petitioner asserted that a person of ordinary skill in the art (POSITA) would be motivated to combine these references to achieve predictable results. The references are all within the same field of gypsum product manufacturing and address well-known industry objectives, such as improving strength, reducing weight, and increasing sag resistance. A POSITA would have looked to known additives like those in Graux and Hjelmeland and standard manufacturing processes like those in Summerfield and Sucech to create an improved gypsum board, using the industry-standard ASTM test to verify performance.
    • Expectation of Success: Petitioner argued that a POSITA would have a reasonable expectation of success because the combination involves applying known techniques and additives for their intended, predictable purposes. Combining STMP (taught by Graux for product improvement) with a standard board manufacturing process (Summerfield) to produce a board with improved sag resistance (a known property measured by ASTM) would be a straightforward application of existing technology.

Ground 2: Obviousness over Satterthwaite, Hjelmeland, ASTM, Sucech, and Summerfield - Claims 1-4, 6, 8, and 10 are obvious over Satterthwaite in view of multiple secondary references.

  • Prior Art Relied Upon: Satterthwaite (Patent 3,234,037), Hjelmeland (Patent 5,980,628), ASTM C473-95 ("ASTM"), Sucech (Patent 5,643,510), and Summerfield (Patent 2,985,219).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground presented a similar argument to Ground 1, substituting Satterthwaite as the primary reference. Petitioner argued that Satterthwaite, which is directed to acoustical ceiling tiles, discloses a set gypsum product made from a mixture of water, gypsum, and a starch binder treated with STMP. The express purpose of this composition was to achieve "increased resistance to warp or sag." Petitioner contended this disclosure teaches the use of STMP as the claimed "enhancing material" to achieve the claimed sag resistance. The roles of the secondary references are analogous to their roles in Ground 1: Summerfield teaches forming the composition into a paper-faced board; Hjelmeland teaches the claimed concentration ranges for STMP; ASTM provides the recited testing standard for sag; and Sucech teaches the use of foaming agents.
    • Motivation to Combine: The motivation was argued to be the same as in Ground 1. Satterthwaite explicitly sought to solve the problem of sag in gypsum-based tile products. A POSITA would have been motivated to apply Satterthwaite's solution to other gypsum products like standard wallboard, using conventional manufacturing and testing methods described in the secondary references to predictably improve a well-known product characteristic.
    • Expectation of Success: Petitioner asserted a high expectation of success for the same reasons as in Ground 1. Since Satterthwaite already taught using STMP to successfully reduce sag in a gypsum product, applying this known solution to a different type of gypsum board using standard processes would have been a predictable endeavor for a POSITA.

4. Key Claim Construction Positions

  • enhancing material(s): Petitioner proposed this term be construed as an "additive that improves at least one of resistance to permanent deformation, strength, and dimensional stability in set gypsum-containing products." Petitioner argued this construction is supported by the specification and is critical because the prior art, including Graux and Satterthwaite, discloses additives like STMP that meet this definition, rendering the claims obvious.
  • accelerator: Petitioner proposed this term be construed to mean any "reagent or combination of reagents known to be useful to influence the rate of formation of set gypsum." This broad construction was asserted to be consistent with the patent's disclosure and would encompass accelerators well-known in the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-4, 6, 8, and 10 of the ’914 patent as unpatentable.