Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
`
`Paper No. __
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________________________________
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`
`
`
`
`GUARDIAN BUILDING PRODUCTS, INC.,
`
` Petitioner,
`
`v.
`
`JOHNS MANSVILLE,
`
` Patent Owner.
`
`
`
`Patent No. 6,245,282
`Title: APPARATUS AND METHOD FOR FORMING FIBERS FROM
`THERMOPLASTIC FIBERIZABLE MATERIALS
`
`________________________________________
`
`Inter Partes Review No.: IPR2017-00633
`________________________________________
`
`PETITION FOR INTER PARTES REVIEW
`________________________________________
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`
`
`
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`

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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`TABLE OF CONTENTS
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`Page No.
`INTRODUCTION ......................................................................................... 1
`I.
`II. COMPLIANCE WITH IPR PETITION REQUIREMENTS .................. 1
`A. Mandatory Notices Under 37 C.F.R. § 42.8(b) ..................................... 1
`1.
`Real Party-in-Interest .................................................................. 1
`2.
`Related Matters ........................................................................... 1
`3.
`Designation of Lead and Backup Counsel .................................. 2
`4.
`Service Information..................................................................... 3
`Grounds for Standing ............................................................................ 3
`B.
`III. STATEMENT OF RELIEF REQUESTED ................................................ 3
`A.
`Identification of Claims Challenged and Relief Requested .................. 3
`B.
`Statutory Grounds and Prior Art Relied Upon ...................................... 3
`C.
`Specific Claims and Grounds for Relief ............................................... 4
`IV. THE ’282 PATENT ....................................................................................... 4
`A.
`Technical Background ........................................................................... 4
`B.
`Overview of the ’282 Patent .................................................................. 8
`C.
`Relevant Prosecution History ................................................................ 9
`D.
`Person of Ordinary Skill in the Art ..................................................... 10
`V. CLAIM CONSTRUCTION ........................................................................ 11
`A.
`Claims 11, 22, and 29 do not deserve patentable weight .................... 11
`VI. OVERVIEW OF THE RELIED UPON PRIOR ART ............................ 14
`B.
`U.S. Patent No. 3,265,477 (“McCoppin”) (Ex. 1005) ........................ 14
`C.
`U.S. Patent No. 3,227,536 (“Firnhaber”) (Ex. 1006) ......................... 16
`D. U.S. Patent No. 5,785,996 (“Snyder”) (Ex. 1007) .............................. 18
`E.
`U.S. Patent No. 3,304,164 (“Charpentier”) (Ex. 1008) ...................... 19
`F.
`U.S. Patent No. 5,277,706 (“Blandin”) (Ex. 1009) ............................. 20
`G. Admitted Prior Art from the ’282 Patent ............................................ 20
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`B.
`
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`VII. PRECISE REASONS FOR RELIEF REQUESTED ............................... 23
`A. Ground 1: Claims 6 and 10 are Anticipated by McCoppin or in
`the alternative, obvious in view of McCoppin .................................... 23
`1.
`Claim 6 ...................................................................................... 23
`2.
`Claim 10 .................................................................................... 31
`3.
`Alternatively, Claims 6 and 10 are Obvious ............................. 31
`Ground 2: Claims 6 and 10 are Anticipated by Firnhaber;
`Alternatively, the Claims are Obvious over Firnhaber in view
`of Snyder .............................................................................................. 32
`1.
`Claim 6 ...................................................................................... 33
`2.
`Claim 10 .................................................................................... 39
`3.
`Alternatively, the Claims 6 and 10 are Obvious ....................... 40
`4.
`Rationale to Combine Prior Art of Ground 2 ........................... 42
`Ground 3: Claims 7 and 8 are Obvious over McCoppin in
`combination with Charpentier ............................................................ 44
`1.
`Claim 7 (Decreasing Hole Diameter) ....................................... 44
`2.
`Claim 8 (Mass Flow Rate) ........................................................ 45
`3.
`Rationale to Combine Prior Art of Ground 3 ........................... 47
`D. Ground 4: Claim 9 is Obvious over McCoppin in combination
`with Snyder .......................................................................................... 48
`1.
`Rationale to Combine Prior Art of Ground 4 ........................... 49
`Ground 5: Claims 11 and 12 are Obvious over McCoppin in
`view of Admitted Prior Art ................................................................. 51
`1.
`Claim 11 (Total Energy) ........................................................... 51
`2.
`Claim 12 (Total Energy Percentages) ....................................... 52
`3.
`Rationale to Combine Prior Art of Ground 5 ........................... 54
`Ground 6: Claims 13 - 16 and 24 -29 are Obvious over
`McCoppin in view of the Admitted Prior Art and Blandin ................. 56
`1.
`Claims 13, 14, 24 and 26 (Combustion Velocity) .................... 56
`2.
`Claims 15, 25 and 27 (Velocity of Gaseous Fluid) .................. 58
`3.
`Claims 16 and 28 (Gaseous Fluid is Air) .................................. 59
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`C.
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`E.
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`F.
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`4.
`Claim 29 (Total Energy) ........................................................... 60
`Rationale to Combine Prior Art of Ground 6 ........................... 61
`5.
`G. Ground 7: Claims 17 -23 are Obvious over McCoppin in view
`of Charpentier, the Admitted Prior Art, and Blandin ......................... 62
`1.
`Claim 17 (Decreasing Hole Size and Combustion
`Velocity) .................................................................................... 62
`Claim 18 (Velocity of Gaseous Fluid) ...................................... 63
`2.
`Claim 19 (Narrowed Combustion Velocity Range) ................. 63
`3.
`Claim 20 (Velocity of Gaseous Fluid) ...................................... 64
`4.
`Claim 21 (Gaseous Fluid is Air) ............................................... 64
`5.
`Claim 22 (Total Energy) ........................................................... 64
`6.
`Claim 23 (Total Energy Percentage) ........................................ 65
`7.
`Rationale to Combine Prior Art of Ground 7 ........................... 65
`8.
`VIII. THE PROPOSED GROUNDS ARE NOT REDUNDANT ..................... 65
`IX. CONCLUSION ............................................................................................ 66
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`LIST OF EXHIBITS1
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`
`
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`Exhibit No. Description
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`Ex. 1001
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`U.S. Patent No. 6,245,282 (“the ’282 patent”)
`
`Ex. 1002
`
`Declaration of Steve W. Martin, Ph.D.
`
`Ex. 1003
`
`Curriculum Vitae of Steve W. Martin, Ph.D.
`
`Ex. 1004
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`Reserved
`
`Ex. 1005
`
`U.S. Patent No. 3,265,477 (“McCoppin”)
`
`Ex. 1006
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`U.S. Patent No. 3,227,536 (“Firnhaber”)
`
`Ex. 1007
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`U.S. Patent No. 5,785,996 (“Snyder”)
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`Ex. 1008
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`U.S. Patent No. 3,304,164 (“Charpentier”)
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`Ex. 1009
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`U.S. Patent No. 5,277,706 (“Blandin”)
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`Ex. 1010
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`U.S. Patent No. 4,737,178 (“Reifschneider”)
`
`Ex. 1011
`
`U.S. Patent No. 4,058,386 (“Faulkner”)
`
`Ex. 1012
`
`U.S. Patent No. 4,689,061 (“Britts”)
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`
`1 Citations to patents are to column:line number of the patents while citations to
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`other documents are to the page number added in the lower right hand corner.
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`U.S. Patent No. 6,245,282
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`
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`Ex. 1013
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`Reserved
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`Ex. 1014
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`Reserved
`
`Preliminary Amendment dated March 7, 2016 from File History of
`
`U.S. Reissued Patent Application No. 15/062,755
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`Non-Final Office Action dated October 7, 2016 from File History
`
`of U.S. Reissued Patent Application No. 15/062,755
`
`Amendment dated October 20, 2016 from File History of U.S.
`
`Reissued Patent Application No. 15/062,755
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`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
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`
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`ii
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`
`
`I.
`
`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`INTRODUCTION
`On behalf of Guardian Building Products, Inc. (“Guardian” or “Petitioner”)
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`and in accordance with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, inter partes
`
`review of claims 6-29 of United States Patent No. 6,245,282 to Baker et al.,
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`entitled “Apparatus and Method for Forming Fibers From Thermoplastic
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`Fiberizable Materials” (hereinafter “the ’282 patent”) is requested. This Petition
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`establishes that Petitioner has a reasonable likelihood of prevailing with respect to
`
`at least one of claims 6-29. A copy of the ’282 patent is provided as Ex. 1001.
`
`
`
`II. COMPLIANCE WITH IPR PETITION REQUIREMENTS
`A.
`Mandatory Notices Under 37 C.F.R. § 42.8(b)
`1.
`Real Party-in-Interest
`The real parties-in-interest for this Petition are Guardian Building Products,
`
`Inc. (“Petitioner”); Guardian Industries Corp.; Knauf Insulation, Inc.; and Knauf
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`Insulation GmbH.
`
`2.
`Related Matters
`The ’282 patent is currently the subject of the following Federal district
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`court litigation: Johns Mansville Corp. et al. v. Knauf Insulation, Inc. and Knauf
`
`Insulation GmbH, COD-1-15-cv-02671, District of Colorado (Denver). The case is
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`assigned to Judge Christine M. Arguello and was filed on December 9, 2015.
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`1
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`Reissue Application No. 15/067,755 regarding the ’282 patent was filed on
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`
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`March 7, 2016 and is currently pending. If the reissue application issues as a
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`patent, Patent Owner is required to surrender the ’282 patent pursuant to 35 U.S.C.
`
`§ 252. Petitioner would then seek to substitute or add the reissued patent to this
`
`Petition.2
`
`3.
`Designation of Lead and Backup Counsel
`Petitioner identifies R. David Donoghue (Reg. No. 42,493) as Lead Counsel
`
`and Steven E. Jedlinski (Reg. No. 66,922) and Anthony J. Fuga (pro hac vice
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`motion forthcoming) as Backup Counsel. Mr. Fuga has over six years’ experience
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`litigating intellectual property matters. Mr. Fuga has familiarity with the
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`technology at issue and the subject matter at issue in this proceeding. Petitioner
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`intends to file a motion seeking admission of Anthony J. Fuga to appear pro hac
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`vice.
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney accompanies this
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`Petition.
`
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`2 Patent Owner filed a complaint alleging infringement of the ’282 patent against
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`Knauf Insulation, Inc.―a real party-in-interest. Since a waiver of service was filed
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`on January 8, 2016, the Petitioner could not delay any longer to file the instant
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`Petition.
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`2
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`4.
`Service Information
`Petition consents to service by email at: clientteam-guardian@hklaw.com.
`
`Service on Petitioner may also be made by mail or hand delivery to:
`
`Holland & Knight LLP
`131 S. Dearborn, Floor 30
`Chicago, Illinois 60603
`The fax number for lead and backup counsel is (312) 578-6666.
`
`B.
`Grounds for Standing
`Petitioner certifies that, under 37 C.F.R. § 42.104(a), the ’282 patent is
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`available for IPR, and that Petitioner is not barred or estopped from requesting IPR
`
`of the ’282 patent.
`
`III. STATEMENT OF RELIEF REQUESTED
`A.
`Identification of Claims Challenged and Relief Requested
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner respectfully requests inter
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`partes review of claims 6-29 of the ’282 patent (“the challenged claims”) under 35
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`U.S.C. §§ 311-318 and 37 C.F.R. §§ 42.100-42.123, and the cancellation of the
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`challenged claims as being unpatentable under 35 U.S.C. §§ 102 or 103.
`
`B.
`Statutory Grounds and Prior Art Relied Upon
`There is at least a reasonable likelihood that at least one of the challenged
`
`claims will be found anticipated or obvious based on the following prior art. All of
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`the prior art patents and printed publications discussed herein constitute prior art
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`against the ’282 patent under, at least, 35 U.S.C. § 102(b), and are submitted
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`3
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`herewith pursuant to 35 U.S.C. § 312(a)(3).
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`Exhibit No. Patent
`1005
`U.S. Patent No. 3,265,477 (“McCoppin”)
`1006
`U.S. Patent No. 3,227,536 (“Firnhaber”)
`1007
`U.S. Patent No. 5,785,996 (“Snyder”)
`1008
`U.S. Patent No. 3,304,164 (“Charpentier”)
`1009
`U.S. Patent No. 5,277,706 (“Blandin”)
`
`
`Issue Date
`August 9, 1966
`January 4, 1966
`July 28, 1998
`February 14, 1967
`January 11, 1994
`
`On its face, the ’282 patent claims a filing date of August 5, 1999. (Ex.
`
`1001, cover.) Based on their respective issue dates, each of the references are prior
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`art to the ’282 patent at least under 35 U.S.C. § 102(b).
`
`C.
`Specific Claims and Grounds for Relief
`No. Claims
`Ground
`1
`6 and 10
`Anticipated by McCoppin or in the alternative, obvious in
`view of McCoppin
`Anticipated by Firnhaber or in the alternative, obvious over
`Firnhaber in view of Snyder.
`Obvious over McCoppin in view of Charpentier
`Obvious over McCoppin in view of Snyder
`Obvious over McCoppin in view of Admitted Prior Art
`Obvious over McCoppin in view of the Admitted Prior Art
`and Blandin
`Obvious over McCoppin in view of Charpentier, the
`Admitted Prior Art, and Blandin
`
`6 and 10
`
`7 and 8
`9
`11 and 12
`13-16 and
`24-29
`17-23
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`2
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`3
`4
`5
`6
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`7
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`
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`The grounds for unpatentability are supported by the Declaration of Steve
`
`W. Martin, Ph.D (Ex. 1002) under 37 C.F.R. § 42.65.
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`IV. THE ’282 PATENT
`A.
`Technical Background
`Material fibers, such as glass fibers, are useful for insulation and structural
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`4
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`products. Glass fibers for such products are typically made by devices commonly
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`known as fiberizers. (Ex. 1002 at ¶15.) A typical fiberizer set-up is shown below:
`
`
`
`
`Ex. 1010, Fig. 1.
`In a typical process, depicted in Figure 1 of Reifschneider (above), glass
`
`
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`materials are stored in a supply unit (10) and are fed into a furnace or melter (12).
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`(Id. at 2:40-41.) In the furnace, the glass materials are heated into a molten state.
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`(Id. at 2:41-42.) The molten glass is fed from a forehearth (14) into a spinner or
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`disc of the fiberizer (16). (Id. at 2:42-44, 51-54.) The spinner is then rotated, for
`
`example, by a motor. (Id. at 2:54-56.) The fiberizer creates a veil of glass fibers
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`(18) which are collected on a conveyer (24) and transported to be further
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`processed. (Id. at 2:46-50.)
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`5
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`In order to form the glass fibers, the side-wall of the spinner includes a
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`plurality of orifices or openings. (Id. at 2:57-59.) The fibers are formed using the
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`centrifugal force produced by the rotation of the spinner at high RPMs. More
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`specifically, centrifugal force causes the molten glass to press against the inside of
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`the spinner’s side wall causing the molten glass to flow radially outward through
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`the many holes in the spinner side wall. (Ex. 1002 at ¶18.)
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`A basic problem that glass fiber production processes must deal with is the
`
`fact that the viscosity of the glass (the ability of the glass to be drawn out into
`
`fibers) is strongly dependent upon the temperature. (Id. at ¶19.) Maintaining the
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`proper temperature of the glass and the fiberizer is of utmost importance.
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`Typically, heating methods are used to introduce additional heat at various
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`points along the glass flow path and throughout the glass fiberization process. This
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`includes maintaining the appropriate temperature both inside the spinner and
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`outside in the attenuation zone, where the glass fibers are elongated after they exit
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`the spinner. (Id. at ¶20.) The attenuation zone is heated to maintain the necessary
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`temperature of the molten material because glass fibers exiting the spinner are
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`most often larger in diameter than the final desired diameter and the fibers must be
`
`attenuated down to the final desired diameter. (Id.)
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`By the time of the filing of the ’282 patent, there were a variety of known
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`heating methods for fiberizers. For example, the fiberizer could include an internal
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`6
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`heating device (e.g. burner 40 shown in Figure 3, below, Ex 1010) and an external
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`heating device (e.g. burner 38 shown in Figure 3 below). (Ex 1010 at 2:59-62.).
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`
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`Ex. 1010, Fig. 3.
`Well-known heating methods included: (1) a combustible mixture being
`
`delivered via a manifold and burned exteriorly; (2) a combustible mixture being
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`burned under confined conditions within a chamber and the by-products being
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`discharged through an opening; and (3) inducing a current within a material for
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`induction heating. (Ex. 1002 at ¶22.) These methods had been known to heat the
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`inside of the spinner and to heat the attenuation zone. (Id.)
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`Fiberizers may also include a gaseous fluid ring (e.g. blower (42) shown in
`
`Figure 3 above) around the spinner disk. (Ex 1010 at 2:62-64.) As the molten
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`fibers exit the spinner disk, the gaseous fluid (e.g. gas, air or steam) is discharged
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`7
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`from the ring at a high velocity further attenuating the molten fibers by blowing (or
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`heating), and thereby pulling the molten fibers down. (Ex. 1002 at ¶23.) In
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`addition, the high velocity discharge may be used to break the fibers or drive the
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`fibers down to the conveyer below. (Id.)
`
`B.
`Overview of the ’282 Patent
`The ’282 patent was filed on August 5, 1999 and issued on June 12, 2001.
`
`(Ex. 1001 at cover.) The ’282 patent generally describes a fiberizer and methods
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`for utilizing a fiberizer. (Id. at Abstract)
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`In particular, the ’282 patent is focused on the particular method of heating
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`the attenuation zone (i.e., the zone immediately adjacent and external to the
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`fiberizing disk). The heating is accomplished by two manifolds that supply
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`combustible gas or gaseous mixtures (one internally and one externally of the
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`fiberizing disk), whereby combustion occurs external of the manifolds. The by-
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`products of the combustion of the gas or gaseous mixtures from both manifolds
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`contribute to the heating of the attenuation zone outside of the disk. (Id. at 2:41-
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`58.)
`
`The ’282 patent discloses a gaseous fluid discharge ring surrounding the
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`fiberizing disk, where a gaseous fluid is discharged in a downward direction to pull
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`on and attenuate the fibers as they exit the fiberizing disk and pass through the
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`heated attenuation zone. (Id. at 3:1-14.)
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`8
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`The ’282 patent includes two independent claims, claim 1 directed to a
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`fiberizing apparatus and claim 6 directed to a method for fiberizing. The ’282
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`patent additionally includes seventeen dependent claims, thirteen of which
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`ultimately depend from independent claim 6. (Id. at 8:43-9:33; 10:4-14:23.)
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`C.
`Relevant Prosecution History
`The ’282 patent’s prosecution history was relatively short and uneventful.
`
`The ’282 patent was not subject to any rejections under 35 U.S.C. §§ 102 or 103
`
`during prosecution. However, on March 7, 2016, the Patent Owner filed a reissue
`
`patent application regarding the ’282 patent – Serial No. 15/067,755. In connection
`
`with the application, the Patent Owner filed a statement which included a
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`discussion attempting to distinguish independent claims 1 and 6 from Firnhaber.
`
`(Ex. 1010 at p. 12-14.) In regard to independent claim 6, the Patent Owner’s only
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`purported shortcoming of Firnhaber was its alleged failure to disclose “the heating
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`of an annular fiber attenuation zone with the products of combustion from the
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`burning of combustible gases or gaseous mixtures from both the first and second
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`manifolds.” (Id. at p. 14.)
`
`In an Office Action, the examiner rejected claims 1-5 and new claim 30 in
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`the reissue application. (Ex. 1016 at p. 3-7). In particular, the examiner rejected
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`claims 1, 4 and 5 as being unpatentable over U.S. Patent No. 6,158,249 to
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`Battigelli in view of U.S. Patent No. 3,273,358 to Kleist. (Id. at p. 3.) Claims 2, 3
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`9
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`and 30 were rejected as unpatentable over Battigelli in view of Kleist and further in
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`view of U.S. Patent No. 5, 785,996 to Snyder (Ex. 1007). (Id. at p. 6.) Claims 6-29
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`were deemed to be allowable. (Id. at p. 7.)
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`In the face of the rejection, the Patent Owner cancelled claims 1 through 5
`
`and claim 30. (Ex. 1017 at p. 2, 7.) As a result of the cancellation of claim 30,
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`which was the sole basis of the error alleged in the Reissue Declaration, a final
`
`Office Action was issued due to a defective Reissue declaration. Subsequently, an
`
`amendment was filed adding new dependent claim 31 which depends from claim
`
`6.3 The reissue application is still currently pending with, as of now, unamended
`
`claims 6-29, the ’282 patent claims challenged in this petition, along with new
`
`claim 31.
`
`D.
`Person of Ordinary Skill in the Art
`A person of ordinary skill in the art in the field of the ’282 patent at the time
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`of the alleged invention would have at least a four-year degree in a science or
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`engineering discipline related to glass processing, such as material science,
`
`mechanical engineering, chemical engineering or chemistry, along with 3 to 5
`
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`3 Given claim 31 has not yet been entered, Petitioner has not presented any of its
`
`grounds for rejection. However, the examiner rejected similar claim 30. (Ex. 1016
`
`at p. 8.)
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`10
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`years of industry experience or research related to glass processing. (Ex. 1002 at
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`¶25.)
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`Petitioner submits the declaration of Steve W. Martin, PhD., an expert in the
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`field of the ’282 patent (Ex. 1002), and Dr. Martin’s curriculum vitae (Ex. 1003)
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`herewith.
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`V. CLAIM CONSTRUCTION
`In this proceeding, the unexpired claims must be given their broadest
`
`reasonable construction in light of the specification. 37 CFR § 42.100(b); see also
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`Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2144–46 (2016). The broadest
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`reasonable construction is the broadest reasonable interpretation of the claim
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`language. See In re Yamamoto, 740 F.2d 1569, 1571-72 (Fed. Cir. 1984). Any
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`claim term that lacks a definition in the specification therefore is also given a broad
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`interpretation. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
`
`Cir. 2001).
`
`A.
`Claims 11, 22, and 29 do not deserve patentable weight
`The language of dependent claims 11, 22 and 29 should not be given any
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`patentable weight because it merely recites the intended result of the “supplying”
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`limitations of independent claim 6. These dependent claims each require that the
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`total energy consumed simply be “between about 200 and about 1,500 BTU’s.”
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`11
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`The ’282 patent states that a “need” it solves is to “produce fibers of equal or
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`Petition for Inter Partes Review
`U.S. Patent No. 6,245,282
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`better quality at energy consumption equaling or approximating the energy
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`consumption of the second process…”. (Ex. 1001, 2:27-29.) However, a
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`“‘whereby’ clause in a method claim is not given weight when it simply expresses
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`the intended result of a process step positively recited.” MPEP Sec. 2111.04,
`
`quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381
`
`(Fed. Cir. 2003). The Board has stated that a “‘wherein’ clause in a method claim .
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`. . is analytically similar to a ‘whereby’ clause” for an intended result. Ex parte
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`Newport, APPEAL 2014-001226, 2014 WL 1331179, at *3 (Mar. 26, 2014). In Ex
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`parte Coffey, APL 2009-010813, 2009 WL 5510936, at *4 (Dec. 17, 2009), the
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`PTAB did not give patentable weight to the wherein clause because the wherein
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`clause “does not inform the mechanics of how the ‘determining’ step is
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`performed[.]” Like in Ex parte Coffey, the language of claims 11, 22 and 29 does
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`not inform the mechanics of the “supplying” step of claim 6, but simply recites the
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`intended result – low energy “between about 200 and about 1,500 BTU’s.”
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`In Ex parte Bruce, the Board did not give patentable weight to a wherein
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`clause because it “does not change anything about the recited steps but simply
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`states a characterization of the results of those steps.” Ex parte Bruce, APPEAL
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`2012-009150, 2015 WL 996349, at *8-9 (Mar. 4, 2015). The wherein clause “does
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`not inform the mechanics” of how the process steps are performed and does not
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`“require the person carrying out the method to perform any additional manipulative
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`U.S. Patent No. 6,245,282
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`step(s).” Id.
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`The analysis of the patentable weight of a clause stating an intended result of
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`a process is dependent on the facts of the specific case being analyzed. The
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`common approach used is to determine whether the clause gives meaning and
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`purpose to a manipulative step, or states a condition that is material to
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`patentability. If the condition is material to patentability, the clause will be
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`construed as a limitation to the claim. However, if the clause simply states the
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`intended result of a process step, the clause is not given any patentable weight.
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`Minton, 336 F.3d at 1381.
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`Similar to the wherein clauses presented above in Ex parte Newport, Ex
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`parte Coffey, and Ex parte Bruce, the clauses from claims 11, 22, and 29 simply
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`describe the intended result and present no functional or structural limitations to
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`the claim. The amount of energy consumed by the combustion of gases in the
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`manifolds does not describe an additional step that must be performed in the
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`method of forming fibers. The verbs used in these wherein clauses are passive and
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`do not require direct action by the person performing the process. Additionally,
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`these characteristics do not describe a particular function of the process described
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`in the claims.
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`Claims 11, 22, and 29 do not present any additional steps or structural
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`limitations to independent claim 6. Claims 11, 22, and 29 simply describe the
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`energy consumption that results from performing the steps described in claim 6,
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`without further limitation. For these reasons, the language of claims 11, 22, and 29
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`do not deserve patentable weight.
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`VI. OVERVIEW OF THE RELIED UPON PRIOR ART
`As shown below, there is nothing new or non-obvious in the ’282 patent.
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`The use of internal and external heating elements and a blower to attenuate molten
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`glass fibers has long been known. Claims 6 - 29 of the ’282 patent merely claim
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`the operation of well-known fiberizers for molten glass in well-known
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`arrangements.
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`B.
`U.S. Patent No. 3,265,477 (“McCoppin”) (Ex. 1005)
`McCoppin discloses numerous methods and apparatuses for fiberizing
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`molten materials which include:
`
`a.
`
`Supplying molten material to a fiberizing rotor or spinner (50)
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`and utilizing centrifugal forces wherein a rotor or spinner distributes molten
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`material into an attenuating zone. (Ex. 1005, 1:30-34, 64-67.)
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`b.
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`Heating the internal area of the spinner (50) by delivering an
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`ignitable mixture into the rotor where the mixture is then combusted in a
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`manner to assist in the distribution of the glass of the streams on the orificed
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`wall (56’) of the spinner. (Id. at 5:61-66; 6:36-46 and Figure 5.)
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`c.
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`Heating the area external of the spinner, in part, by a manifold
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`(242) delivering an ignitable mixture exterior of the spinner where the
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`mixture is then combusted exteriorly of the manifold chambers and the
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`spinner. (Id. at 11:15-19, 53-60 and Figure 15.)
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`d.
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`Utilizing a blower ring (86’ or 86f) through which steam or
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`pressured air is delivered at a high velocity engaging the fibers exiting the
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`spinner in order to more finely attenuate the fibers. (Id. at 6:3-8, Figs. 5 and
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`15.)
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`Annotated versions of Figures 5 and 15 of McCoppin are reproduced below:
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`Blower Ring
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`
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`Internal Heating
`Manifold
`
`Rotor
`
`
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`15
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`Id. at Fig. 5. (annotated)
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`Molten Feed
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`Blower Ring
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`Id. at Fig. 15 (annotated)
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`External Heating
`Manifold
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`Rotor
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`
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`C.
`U.S. Patent No. 3,227,536 (“Firnhaber”) (Ex. 1006)
`Firnhaber was cited as a novelty destroying (“X”) reference in the Search
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`Report for the ’282 patent’s child PCT application (WO 091/11118 A1); however,
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`it was never disclosed to the PTO during the prosecution of the ’282 patent. As
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`discussed in Section IV(C) above, the Patent Owner first disclosed Firnhaber in
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`the currently pending reissue application regarding the ’282 patent. As explained
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`herein, however, it appears that the examiner and Patent Owner did not appreciate
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`the full breadth of Firnhaber’s disclosure.
`
`In general, Firnhaber discloses a method for fiberizing molten materials,
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`which includes:
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`a.
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`Supplying molten material to a fiberizing rotor or spinner and
`
`utilizing centrifugal forces wherein a rotor or spinner distributes molten
`
`material into an attenuating zone. (Ex. 1006, 1:15-20; 2:43-53.)
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`b.
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`Heating the internal area of the spinner by delivering and
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`combusting ignitable gas externally of the manifold. (Id. at 2:53-64; see also
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`10, 36, 37, and 39 in Figure 1.)
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`c.
`
`Heating the area external of the spinner, in part, by a separate
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`manifold delivering an ignitable mixture exterior of the spinner where the
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`mixture is then combusted exteriorly of the manifold chambers and the
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`spinner. (Id. at 4:31-48; see also 44-50 in Figure 1.)
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`d.
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`Utilizing steam or gas jets to engage the fibers exiting the
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`spinner in order to more finely attenuate the fibers. (Id. at 1:20-24; 3:5-15;
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`Figure 1.)
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`An annotated version of Figure 1 of Firnhaber is reproduced below:
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`External Heating
`Burner
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`
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`Steam Jets
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`Rotor
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`Internal Heating
`Burner
`
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`Id. at Fig. 1 (annotated)
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`
`
`D.
`U.S. Patent No. 5,785,996 (“Snyder”) (Ex. 1007)
`Snyder describes a fiber manufacturing apparatus including a spinner, where
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`the spinner includes an outer wall with a plurality of orifices. During the operation
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`of the spinner, molten thermoplastic material is streamed into the spinner. As the
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`spinner rotates, the molten thermoplastic material flows to orifices of the
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`peripheral wall in order to manufacture fibers. (Ex. 1007, 2:1-14.)
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`Snyder further describes the fibers being maintained in a soft, attenuable
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`condition by (1) the heat of an annular burner external of the spinner (Id. at 3:25-
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`28; 24 in Figure 1), (2) a plurality of burners positioned internally of the spinner
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`(Id. at 3:23-25; 26 in Figure 1), and (3) utilizing the flow of gas over the top and
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`bottom of the peripheral wall of the spinner, in conjunction with a shield, to ensure
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`that the thermoplastic material located in the area of the peripheral wall (i.e., the
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`attenuation zone) remains molten (Id. at 4:19-27; 44 and 46 in Figure 1).
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`An annotated version of Figure 1 of the Snyder is reproduced below:
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`
`
`Housing Portion
`(e.g. shield)
`
`Internal Heating
`Burner
`
`External Heating
`Burner
`
`
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`Blower
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`
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`(Id. at Fig. 1 (annotated))
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`E.
`U.S. Patent No. 3,304,164 (“Charpentier”) (Ex. 1008)
`Charpentier describes a fiber manufacturing process in which molten
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`thermoplastic material is supplied to a hollow rotating body (1) provided with
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`orifices in the peripheral wall and the material is projected through these orifices
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`under the action of centrifugal force. (Ex. 1008, 1:10-16.)
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`Charpentier further discusses the orifices in the peripheral wall of the
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`hollow rotat