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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 12
`Entered: October 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`NEW NGC, INC. dba NATIONAL GYPSUM COMPANY,
`Petitioner,
`
`v.
`
`UNITED STATES GYPSUM COMPANY,
`Patent Owner.
`
`
`Case IPR2017-01011
`Patent 7,964,034 B2
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`I. INTRODUCTION
`New NGC, Incorporated dba National Gypsum Company
`(“Petitioner”) filed a corrected Petition (Paper 7, “Pet.”) requesting inter
`partes review of claims 1, 2, 4, 5, and 7–9 of U.S. Patent No. 7,964,034 B2
`(Ex. 1029, “the ’034 patent”). United States Gypsum Company (“Patent
`Owner”) filed a Preliminary Response to the Petition (Paper 8, “Prelim.
`
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`IPR2017-01011
`Patent 7,964,034 B2
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`Resp.”). Subsequently, Petitioner filed a Reply to the Preliminary Response
`(Paper 10), to which Patent Owner filed a Sur-reply (Paper 11).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting
`an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless the Director
`determines . . . there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`After considering the Petition, Preliminary Response, Reply, and Sur-
`reply, we determine that Petitioner has not demonstrated a reasonable
`likelihood of prevailing with respect to the challenged claims. Accordingly,
`we do not institute inter partes review.
`
`A. Related Proceedings
`The parties inform us that the ’034 patent is currently at issue in
`United States Gypsum Co. v. New NGC, Inc., Case No. 1:17-cv-00130 (D.
`Del. Feb. 6, 2017). Pet. 1; Paper 4, 2. In addition, related U.S. Patent Nos.
`6,632,550 B1 and 7,425,236 B2 are at issue in IPR2017-01086 and
`IPR2017-01088, respectively. Pet. 1.
`
`B. The ’034 Patent
`The ’034 patent discloses a method and composition for preparing set
`gypsum-containing products having increased resistance to permanent
`deformation (e.g., sag resistance). Ex. 1029, 1:23–31.
`The ’034 patent explains that most gypsum-containing products are
`prepared by forming a mixture of calcined gypsum (calcium sulfate
`hemihydrate and/or calcium sulfate anhydrite) and water, casting the mixture
`into a desired shape, and allowing the mixture to harden to form set gypsum.
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`Patent 7,964,034 B2
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`Id. at 2:6–11. During this process, the calcined gypsum is rehydrated with
`water, forming an interlocking matrix of set gypsum crystals (calcium
`sulfate dihydrate) and imparting strength to the gypsum-containing product.
`Id. at 2:10–19. Although the matrix of gypsum crystals increases the
`strength of the gypsum-containing product, the ’034 patent posits that
`existing gypsum-containing products could still benefit if the strength of
`their component set gypsum crystal structures were increased. Id. at 2:20–
`23.
`
`To increase the strength, dimensional stability, and resistance to
`permanent deformation of set gypsum-containing products, the ’034 patent
`discloses mixing calcium sulfate material, water, and an appropriate amount
`of one or more enhancing materials. Id. at 1:28–37. In a preferred
`embodiment, the enhancing material is in the form of trimetaphosphate ions
`derived from sodium trimetaphosphate (STMP). Id. at 4:14–26. According
`to the ’034 patent, it was found that the set gypsum-containing products
`incorporating this compound were “unexpectedly found to have increased
`strength, resistance to permanent deformation (e.g., sag resistance), and
`dimensional stability, compared with set gypsum formed from a mixture
`containing no trimetaphosphate ion.” Id. at 4:32–38. It was also
`“unexpectedly found that trimetaphosphate ion . . . does not retard the rate of
`the formation of set gypsum from calcined gypsum,” and, in fact, actually
`accelerates the rate of rehydration. Id. at 4:40–46. According to the ’034
`patent, this is “especially surprising” because most “phosphoric or phosphate
`materials retard the rate of formation of set gypsum and decrease the
`strength of the gypsum formed.” Id. at 4:46–51.
`
`3
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`Patent 7,964,034 B2
`C. Illustrative Claim
`Claim 1 is illustrative of the challenged claims and is reproduced
`below:
`
`1. A method for producing a set gypsum-containing
`product comprising forming a mixture of calcined gypsum,
`water, an accelerator, and one or more enhancing materials
`chosen from the group consisting of: sodium trimetaphosphate,
`tetrapotassium pyrophosphate,
`tetrasodium pyrophosphate,
`aluminum
`trimetaphosphate, sodium acid pyrophosphate,
`ammonium polyphosphate having 1000-3000
`repeating
`phosphate units, and acids, salts, or the anionic portions thereof,
`and
`
`maintaining the mixture under conditions sufficient for the
`calcined gypsum to form an interlocking matrix of set gypsum,
`the enhancing material or materials having been included
`in the mixture in an amount such that the set gypsum-containing
`product has greater resistance to permanent deformation than it
`would have if the enhancing material had not been included in
`the mixture, such that when the mixture is cast in the form of ½
`inch gypsum board, said board has a sag resistance, as
`determined according to ASTM C473-95, of less than about 0.1
`inch per two foot length of said board,
`the accelerator having been included in an amount such
`that the set gypsum-containing product has greater strength than
`it would have if the accelerator had not been included in the
`mixture.
`Ex. 1029, 31:23–46.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner contends claims 1, 2, 4, 5, and 7–9 of the ’034 patent are
`unpatentable based on the following grounds (Pet. 2):1
`
`
`1 Petitioner also relies on a declaration from Mr. Gerry Harlos (Ex. 1001).
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`Patent 7,964,034 B2
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`Basis Claims Challenged
`§ 103
`1, 2, 4, 5, and 7–9
`
`References
`Graux,2 ASTM C473-95,3 and
`Hjelmeland4
`Satterthwaite,5 ASTM C473-95,
`and Hjelmeland
`Petitioner contends that Graux is prior art to the ’034 patent under 35
`
`U.S.C. § 102(e), Satterthwaite and ASTM C473-95 are prior art under
`§ 102(b), and Hjelmeland is prior art under § 102(e) and/or § 102(a).6 Pet.
`15–19; Reply 1.
`
`§ 103
`
`1, 2, 4, 5, and 7–9
`
`II. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, “[a] claim in an unexpired patent shall be
`given its broadest reasonable construction in light of the specification of the
`patent in which it appears.” 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard). Claims of a patent that will
`expire within 18 months from the Notice of Filing Date, however, are
`construed using “a district court-type claim construction approach,”
`provided a motion under 37 C.F.R. § 42.20 is filed within 30 days from the
`
`
`2 U.S. Patent No. 5,932,001, issued Aug. 3, 1999 (Ex. 1006).
`3 Standard Test Methods for Physical Testing of Gypsum Board Products
`and Gypsum Lath, AMERICAN SOCIETY FOR TESTING AND MATERIALS 1–11
`(1995) (EX. 1009).
`4 U.S. Patent No. 5,980,628, issued Nov. 9, 1999 (Ex. 1008).
`5 U.S. Patent No. 3,234,037, issued Feb. 8, 1966 (Ex. 1007).
`6 We authorized the filing of the Reply and Sur-reply to allow the parties to
`address the prior art status of Hjelmeland. Because we deny the Petition on
`different grounds, we decline to address the prior art status of Hjelmeland in
`this Decision.
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`filing of the petition. 37 C.F.R. § 42.100(b). Patent Owner timely filed such
`a motion, and Petitioner does not dispute that the ’034 patent expired shortly
`after the Petition was filed. Paper 6, 2; Pet. 9. Thus, to the extent necessary,
`we will construe the claims of the ’034 patent using “a district court-type
`claim construction approach.” 37 C.F.R. § 42.100(b); Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`Petitioner provides proposed constructions for the terms “accelerator,”
`“set gypsum-containing product,” and “enhancing material(s).” Pet. 11–15.
`Patent Owner responds to Petitioner’s proposed constructions with its own
`proposed constructions of these terms. Prelim. Resp. 21–29. Upon review
`of Petitioner’s and Patent Owner’s arguments and supporting evidence, we
`determine that no claim terms require express construction for purposes of
`this decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`
`B. Alleged Obviousness over Graux, ASTM C473-95, and Hjelmeland
`Petitioner contends the subject matter of claims 1, 2, 4, 5, and 7–9 of
`the ’034 patent would have been obvious over the combination of Graux,
`ASTM C473-95, and Hjelmeland. Pet. 21–39.
`
`1. Graux
`Graux discloses a plaster coating or adhesive that contains a cationic
`amylaceous compound.7 Ex. 1006, 1:4–5, Abstract. Graux explains that the
`
`
`7 Graux defines amylaceous compounds as including “all starches of natural
`or hybrid origin, including those derived from genetic mutations or
`manipulations.” Ex. 1006, 4:49–52.
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`plaster in this composition may contain any form of calcium sulphate,8
`including the hemihydrate, calcined/rehydrated, and anhydrous forms, and
`the cationic amylaceous compound has a fixed nitrogen content of at least
`0.15% and a solubility in water of at least 50%. Id. at 1:35–39, 4:32–36,
`Abstract. The cationic amylaceous compound may also be crosslinked as
`described in European patent EP 603 727 A1. Id. at 5:39–53.
`Graux notes that, “[a]part from the plaster and the cationic
`amylaceous compound, the composition . . . may also contain . . . at least
`one additive, includ[ing]” an accelerator, “for example, gypsum, potassium
`sulphate, [and] lime,” as well as one or more retarders, fillers, water
`retaining agents, water-repelling agents, and lightweight additives. Id. at
`7:28–59.
`In Example 1 of Graux, a plaster composed of 75 wt. % calcium
`sulphate hemihydrate and 25 wt. % anhydrous calcium sulphate “of the
`‘dead-burned’ type,” is provided. Id. at 9:11–15. To this plaster is added
`0.04 wt. % cationic amylaceous compound and 0.05 wt % retarder, which
`slows the setting of the plaster “to allow a better estimate of the
`effectiveness of the amylaceous compound.” Id. at 9:15–24. In one test
`plaster of Example 1, the cationic amylaceous compound is in the form of a
`cationic potato starch that has previously been crosslinked with STMP. Id.
`at 10:7–31.
`
`
`8 Graux, as well as Hjelmeland, uses the term “sulphate,” whereas the ’034
`patent uses the term “sulfate.” We understand these two terms to be
`synonymous.
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`2. ASTM C473-95
`ASTM C473-95 provides standard test methods for gypsum board
`products. Ex. 1009, 1. These test methods include, inter alia, tests for
`humidified deflection (sag resistance), hardness, and nail pull resistance. Id.
`at 2–7.
`
`3. Hjelmeland
`Hjelmeland discloses a curable gypsum-based composition that is
`designed for use in the production of cured gypsum products. Ex. 1008,
`3:52–57.
`Hjelmeland explains that there was a need in the art for curable
`gypsum-based compositions having a long pot life but short setting time. Id.
`at 1:33–37. To achieve this goal, Hjelmeland provides a “two-component
`composition.” Id. at 3:57–59. The first component is a calcined gypsum
`suspension containing a set retarding agent in the form of an organic acid
`containing at least two acid groups and/or inorganic anions selected from the
`group consisting of polyphosphate and polyborate. Id. at 3:52–4:3, 4:46–48.
`The second component contains a set accelerating substance comprising
`water soluble salts of multivalent metal ions and, optionally, organic or
`inorganic salts of ammonium and/or elements from the first group of the
`periodic table of elements. Id. at 4:4–10.
`According to Hjelmeland, the set retarding agents of the first
`component impart a long pot life (on the order of 1 hour) to the product.
`4:46–48. Then, when the product is to be applied to a particular surface, the
`second component is added to the first to cause its multivalent metal ions to
`form complexes with or precipitate the set retarding substances of the first
`component, thereby neutralizing the retarding agent. Id. at 4:24–28. Once
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`the two components are mixed, the gypsum composition has a gelation time
`of 2–15 minutes. Id. at 4:50–53.
`
`4. Analysis
`Petitioner contends that “Graux discloses all of the ingredients
`identified in the claimed composition,” including a mixture of calcined
`gypsum, water, an accelerator(s), and STMP, and that one of ordinary skill
`in the art, armed with the testing protocols of ASTM C473-95, would have
`been able “to apply the predictable solutions described in Graux to yield a
`product” that met the sag resistance levels set forth in the challenged claims.
`Pet. 22–23 (citing Ex. 1006, 1:24–30, 7:32–33, 9:29–30, 10:29–30; Ex. 1001
`¶ 90). Petitioner further asserts that, because STMP and the polyphosphates
`of Hjelmeland are both condensed phosphates, one of ordinary skill in the art
`would have found it obvious to “use the amount of condensed phosphate
`specified [in] Hjelmeland in the plaster compositions of Graux.” Id. at 23–
`24.
`
`Patent Owner responds that the challenged claims would not have
`been obvious over the recited references because, among other things,
`Petitioner has not demonstrated that Graux teaches or suggests adding
`STMP to a mixture of calcined gypsum, water, and an accelerator. Prelim.
`Resp. 41–42, 45. We agree with Patent Owner.
`Independent claim 1 requires, among other things, a mixture of
`calcined gypsum, water, an accelerator, and one or more enhancing materials
`selected from a group that includes STMP. Ex. 1029, 31:22–30. We are
`directed to no embodiment or teaching in Graux in which STMP is added
`directly to a mixture of gypsum, water, and an accelerator. Instead,
`Petitioner relies upon the addition of a potato starch that has previously been
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`crosslinked using STMP. On this record, we are not persuaded that this
`disclosure is sufficient to show that STMP is added to the mixture of
`gypsum, water, and an accelerator in Graux.
`As noted above, the cross-linked starch of Graux is created by mixing
`STMP and a potato starch. The following figure, reproduced below and
`provided by Mr. Harlos, depicts this reaction:
`
`
`As shown in the figure above, the reaction between the potato starch and
`STMP results in the formation of di-starch orthophosphate and tetrasodium
`pyrophosphate. 9 Ex. 1001 ¶ 50. This is consistent with testimony from
`Patent Owner’s declarant, Dr. Bruce, indicating that the STMP of Graux is
`“consumed” during the crosslinking reaction. Ex. 2001 ¶ 111.
`
`Because the reaction of STMP and potato starch in Graux occurs
`before the starch is added to the gypsum and water mixture, and because the
`reaction converts the starch and STMP into di-starch orthophosphate and
`
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`9 Mr. Harlos testifies that the “crosslinks between starch molecules” in
`Graux are “permanent” and “require a large amount of energy to break.” Ex.
`1001 ¶ 49.
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`10
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`tetrasodium pyrophosphate, i.e., STMP is consumed during the Graux
`reaction process, we are not persuaded that Graux expressly teaches or
`suggests adding STMP to a mixture of gypsum, water, and an accelerator, as
`required by claim 1.
`Although STMP is consumed during the crosslinking process,
`Petitioner demonstrates that tetrasodium pyrophosphate, which is also
`recited in claim 1 as an enhancing material, is produced during the
`crosslinking reaction of Graux. In addition, Dr. Bruce implicitly
`acknowledges that unreacted STMP could remain in the cross-linked starch
`after the crosslinking process is completed. Ex. 2001 ¶ 111 (Dr. Bruce
`acknowledging that excess STMP may remain after the crosslinking reaction
`is completed). We are presented with insufficient evidence, however, that
`either of these compounds would be present when the starch is ultimately
`added to the gypsum, water, and accelerator mixture.
`First, Petitioner does not even attempt to demonstrate that residual
`STMP or tetrasodium pyrophosphate are present in the cross-linked starch
`when it is added to the mixture of gypsum, water, and an accelerator of
`Graux. Second, as noted by Patent Owner, Graux relies upon European
`patent EP 603 727 A1 (Ex. 2002) for a description of how various
`crosslinked starches were manufactured in the art, including starches
`crosslinked with STMP. Ex. 2001 ¶ 111 (citing Ex. 1006, 5:46–53); Ex.
`2002, 3:9–13. In Examples I and II of EP 603 727 A1, a crosslinking agent
`is applied to a starch, the cross-linking reaction is completed, and the cross-
`linked samples are then “filtered, washed with water (two parts water per
`part of starch) and dried.” Ex. 2002, 5:46–47, 6:54–55; see also id. at 7:46–
`50 (explaining that the samples “were worked up as described above”). Dr.
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`Bruce testifies that this washing process would remove any excess STMP
`from the cross-linked starch of Graux, and neither Petitioner nor Mr. Harlos
`present evidence to suggest otherwise. Ex. 2001 ¶ 111. Thus, on this
`record, we are not persuaded that Graux discloses, expressly or inherently,
`the combination of calcined gypsum, water, an accelerator, and one or more
`of the enhancing materials recited in claim 1.
`Claim 1 also requires including the enhancing material in the mixture
`in an amount such that the set gypsum-containing product
`has greater resistance to permanent deformation than it
`would have if the enhancing material had not been included
`in the mixture, such that when the mixture is cast in the form
`of ½ inch gypsum board, said board has a sag resistance, as
`determined according to ASTM C473-95, of less than about
`0.1 inch per two foot length of said board.
`Ex. 1029, 31:35–43. Petitioner contends a person of ordinary skill in the art
`“would understand that the combination of Graux and ASTM C473-95
`discloses this claim element.” Pet. 30. Specifically, Petitioner maintains
`that Graux discloses the inclusion of STMP and asserts that the addition of
`this enhancing material to the mixture in Graux results in a composition with
`“better resistance to deformation than if it was not added.” Id. at 28.
`Petitioner further argues that it would have been obvious to a person of
`ordinary skill in the art to use ASTM C473-95 to test the sag resistance of
`the composition disclosed by Graux, and “[m]erely measuring an inherent
`property of an already-known composition does not make the composition
`patentable.” Id. at 29–30. Petitioner also notes that the ’034 patent
`identifies prior art set-gypsum containing products having a sag resistance
`value of less than 0.1 inch. Id. at 29–31 (citing Ex. 1029, Figs. 2, 3, 14:64–
`16:38; Ex. 1001 ¶¶ 103–104).
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`Patent Owner argues that Graux is not concerned with sag resistance,
`and the ASTM C473-95 standards, which apply to finished gypsum board
`products, are not applicable to Graux’s plaster products. Prelim. Resp. 40–
`42 (citing Ex. 1006, 1:46–61). Patent Owner also argues that Petitioner
`offers no evidence to support the idea that sag resistance is an inherent
`element of set-gypsum containing materials, and “nonsensically alleges the
`mere existence of the ASTM C473-95 test would somehow enable a [person
`having ordinary skill in the art] to have reasonable expectation of success in
`meeting the claimed 0.1 inch or less of sag.” Id. at 47. Patent Owner further
`contends that the prior art products identified in the ’034 patent are examples
`of prior art products with problems the ’034 patent addressed and solved. Id.
`at 48.
`After reviewing the parties’ positions, we are not persuaded that
`Petitioner has demonstrated sufficiently that the prior art references teach or
`suggest including an enhancing material in the mixture of Graux in an
`amount such that when the mixture is cast in the form of a ½ inch gypsum
`board, the board has a sag resistance of less than about 0.1 inch per two feet
`in length, as determined according to ASTM C473-95. Petitioner has not
`directed us to any sag resistance values for gypsum boards made using the
`ingredients disclosed in Graux and measured according to ASTM C473-
`95.10 Nor has Petitioner directed us to evidence sufficient to establish that
`the claimed sag resistance value is an inherent property of a gypsum-
`
`
`10 Even if we were to agree with Petitioner that Graux discloses a mixture of
`calcined gypsum, water, an accelerator, and an enhancing material––which,
`for the reasons discussed above, we do not––Petitioner’s argument still
`suffers from this deficiency.
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`containing product formed from a mixture of calcined gypsum, water, an
`accelerator, and STMP, i.e., the product of the combination asserted by
`Petitioner. Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d 1292, 1295
`(Fed. Cir. 2002) (“Inherent anticipation requires that the missing descriptive
`material is ‘necessarily present,’ not merely probably or possibly present, in
`the prior art”)(quoting In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999)).
`With regard to Petitioner’s argument that the ’034 patent discloses
`prior art gypsum boards having a sag resistance of less than 0.1 inch,
`Petitioner has not directed us to any evidence demonstrating that these
`products contain the enhancing materials recited in claim 1, or that they were
`tested using the ASTM C473-95 test method. Further, we agree with Patent
`Owner that the mere fact that a person of ordinary skill in the art would have
`been aware of the test methods set forth in ASTM C473-95 does not
`establish that boards tested according to those test methods would have a
`particular sag resistance value or that a person of ordinary skill in the art
`would have been able to produce a board having a particular sag resistance
`value. For example, under the heading “Significance and Use” in the section
`discussing Humidified Deflection (i.e., sag resistance), ASTM C473-95
`states only that “[t]his test method covers a procedure for evaluating the
`deflection of gypsum board.” Ex. 1009, 8 (Section 49.1) (emphasis added).
`We are not persuaded that such a disclosure would have “motivated [a
`person of ordinary skill in the art] to utilize the known enhancing materials
`and accelerators disclosed in Graux” to arrive at the claimed invention, as
`Petitioner argues. Pet. 22.
`Based on the foregoing, Petitioner has not demonstrated that Graux
`discloses every limitation of independent claim 1, or that one of ordinary
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`skill in the art would have sought to modify Graux in view of ASTM C473-
`95 and Hjelmeland to arrive at the subject matter of claim 1. Thus,
`Petitioner has not demonstrated a reasonable likelihood that independent
`claim 1 would have been obvious over Graux, ASTM C473-95, and
`Hjelmeland. And, because independent claim 7 requires the same enhancing
`materials as recited in claim 1, and because challenged dependent claims 2,
`4, 5, 8, and 9 depend directly from either claims 1 or 7, we are likewise not
`persuaded that claims 2, 4, 5, and 7–9 would have been obvious over the
`combination of Graux, ASTM C473-95, and Hjelmeland.
`
`C. Alleged Obviousness of Claims 1, 2, 4, 5, and 7–9 over
`Satterthwaite, ASTM C473-95, and Hjelmeland
`Petitioner contends that the subject matter of claims 1, 2, 4, 5, and 7–9
`would have been obvious over Satterthwaite, ASTM C473-95, and
`Hjelmeland. Pet. 40–63.
`
`1. Satterthwaite
`Satterthwaite discloses “the production of a starch binder comprising
`a thick-boiling starch and a polyhydric alcohol fatty acid ester.” Ex. 1007,
`1:10–12. Satterthwaite explains that the disclosed starch binder, when
`gelatinized, “has a greater viscosity and a greater viscosity stability than
`other starches, and is therefore particularly suitable for use in the
`manufacture of acoustical ceiling tile and other tile products made from a
`mixture of water, gypsum, mineral wool and other ingredients.” Id. at 1:13–
`18.
`
`The disclosed “super-thick” boiling starch is manufactured by treating
`corn starch in an aqueous slurry with, among other things, sodium
`trimetaphosphate, which crosslinks the starch molecules. Id. at 1:66–2:13.
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`The resulting product is then “filtered and washed and dried by conventional
`means.” Id. at 1:53–55, 2:29–31.
`In a preferred embodiment of Satterthwaite, polyhydric alcohol fatty
`ester is sprayed into the disclosed super-thick boiling starch in dry form. Id.
`at 3:32–36. The resulting composition is then added to a tile mix consisting
`of water, gypsum, boric acid, and paraffin wax, and heated to 200º F. Id. at
`3:36–38. The resulting mixture is then diluted with water, cooled, and
`blended with mineral wool to form gypsum sheets. Id. at 3:38–41.
`
`2. Analysis
`Petitioner contends that Satterthwaite discloses using a starch treated
`with STMP in combination with a mixture of water, gypsum, mineral wool,
`and other ingredients, to form acoustical ceiling tiles and other products.
`Pet. 40. Petitioner concedes that Satterthwaite does not disclose the use of
`an accelerator, but contends a person of ordinary skill in the art would have
`sought to use such a compound in the composition of Satterthwaite because
`accelerators are expressly taught in Hjelmeland and were known to increase
`strength and sag resistance. Id.
`Patent Owner asserts the combination of Satterthwaite, ASTM C473-
`95, and Hjelmeland would not have rendered the subject matter of the
`challenged claims obvious because, contrary to Petitioner’s assertions,
`Satterthwaite “does not in any respect disclose or suggest adding STMP, or
`any other claimed enhancing material, to a set gypsum-containing product.”
`Prelim. Resp. 51. We agree with Patent Owner.
`Petitioner directs our attention to no disclosure in Satterthwaite that
`STMP is ever added directly to the disclosed mixture of water, gypsum, and
`mineral wool. At best, the evidence relied upon by Petitioner establishes
`
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`
`that “a starch treated with STMP” is subsequently added to a mixture of
`water, gypsum, mineral wool, and other ingredients. Pet. 40, 46 (citing Ex.
`1007, 1:15–18, 2:9–13; Ex. 1001 ¶¶ 136, 146). Petitioner does not explain
`why the addition of “a starch treated with STMP” is equivalent to the
`addition of STMP, as recited in claim 1. Nor does Petitioner even attempt to
`establish that the STMP added to crosslink the potato starch molecules in
`Satterthwaite would necessarily be present after the cross-linked starch is
`filtered, washed, and dried. See Ex. 1007, 1:53–55, 2:29–31.
`To the extent that Petitioner contends Hjelmeland discloses using
`STMP as a “set retarding substance,” we note that Petitioner directs our
`attention to no express disclosure in Hjelmeland of using STMP. Pet. 47
`(citing Ex. 1001 ¶¶ 157–158) (asserting that Hjelmeland “discloses STMP”).
`Petitioner directs our attention instead to Hjelmeland’s disclosure of using a
`genus of set retarding agents comprising: “(i) an organic acid containing at
`least two acid groups selected from the group consisting of . . . phosphate or
`phosphonate . . . and/or (ii) inorganic anions selected from the group
`consisting of polyphosphate . . . .” Ex. 1008, 3:60–4:3. The disclosure of a
`genus, however, is not necessarily a disclosure of each species within that
`genus. See Abbvie Inc. v. Mathilda & Terence Kennedy Institute, 764 F.3d
`1366, 1379 (Fed. Cir. 2014); In re Baird, 16 F.3d 380, 382 (Fed. Cir. 1994)
`(“The fact that a claimed compound may be encompassed by a disclosed
`generic formula does not by itself render that compound obvious.”).
`Furthermore, Petitioner’s explanation for why a person of ordinary
`skill in the art would have had a reason to combine the teachings of
`Satterthwaite and Hjelmeland is based on Petitioner’s assertions that
`Satterthwaite and Hjelmeland each disclose a set gypsum-containing product
`
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`IPR2017-01011
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`
`formed from a mixture of water, calcined gypsum, and a condensed
`phosphate. Pet. 42. Based on this common disclosure, Petitioner argues that
`a person of ordinary skill in the art would look to Hjelmeland for guidance
`as to how much STMP to add to Satterthwaite’s mixture. Specifically,
`Petitioner states:
`a [person having ordinary skill in the art] would understand that
`STMP, as disclosed by Satterthwaite, is a salt of a condensed
`phosphate. [Ex. 1001 ¶ 140]. As such, a [person having ordinary
`skill in
`the art], understanding the similarities between
`Hjelmeland, which discloses
`the amount of condensed
`phosphoric acid or ion of condensed phosphate to include in a set
`gypsum-containing product,
`[Ex.] 1008, 4:13-15, and
`Satterthwaite, would find it obvious to use the amount of
`condensed phosphate specified by Hjelmeland in the plaster
`compositions of Satterthwaite and would have a reasonable
`expectation of success in doing so. [Ex.] 1001, ¶ 140.
`
`Id.
`
`As discussed above, however, Petitioner has not established
`sufficiently that Satterthwaite discloses adding STMP directly to the
`disclosed mixture of water, gypsum, and mineral wool. This deficiency
`undermines Petitioner’s argument that a person of ordinary skill in the art
`would look to Hjelmeland to determine how much STMP to add to
`Satterthwaite’s composition.
`Rather, in view of our determination regarding the disclosure of
`Satterthwaite, the more appropriate inquiry is whether, in view of
`Hjelmeland, a person of ordinary skill in the art would have had reason to
`add STMP to the starch-gypsum-water mixture of Satterthwaite in the first
`place. Petitioner, however, does not explain adequately why one of ordinary
`skill in the art, having already utilized STMP to crosslink the starch, would
`have then sought to add STMP to Satterthwaite’s mixture in view of
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`Hjelmeland’s genus disclosure. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`418 (2007) (“[A] patent composed of several elements is not proved obvious
`merely by demonstrating that each of its elements was, independently,
`known in the prior art.”). As a result, Petitioner has failed to identify a
`reason why a person of ordinary skill in the art would have combined the
`disclosed elements in the art in the same fashion as recited in the claims of
`the ’034 patent. Id. (“[I]it can be important to identify a reason that would
`have prompted a person of ordinary skill in the relevant field to combine the
`elements in the way the claimed new invention does.”).
`Claim 1 also requires including the enhancing material in the mixture
`in an amount such that the set gypsum-containing product
`has greater resistance to permanent deformation than it
`would have if the enhancing material had not been included
`in the mixture, such that when the mixture is cast in the form
`of ½ inch gypsum board, said board has a sag resistance, as
`determined according to ASTM C473-95, of less than about
`0.1 inch per two foot length of said board.
`Ex. 1029, 31:35–42. Petitioner contends that a person of ordinary skill in
`the art “would understand that the combination of Satterthwaite and ASTM
`C473-95 discloses this claim element.” Pet. 51. Specifically, Petitioner
`argues that Satterthwaite “discloses STMP,” and that this compoun
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