Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 9
`Entered: October 3, 2017
`
`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 IPR2017-01088
` Patent 7,425,236 B2
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 9
`Entered: October 3, 2017
`
`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 IPR2017-01088
` Patent 7,425,236 B2
`
`
`Before RAE LYNN P. GUEST, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01088
`Patent 7,425,236 B2
`
`I. INTRODUCTION
`New NGC, Inc. dba National Gypsum Company (“Petitioner”) filed a
`corrected Petition (Paper 7, “Pet.”) requesting inter partes review of claim 2
`of U.S. Patent No. 7,425,236 B2 (Ex. 1030, “the ’236 patent”). United
`States Gypsum Company (“Patent Owner”) filed a Preliminary Response to
`the Petition (Paper 8, “Prelim. Resp.”).
`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 and Preliminary Response, we
`determine that Petitioner has not demonstrated a reasonable likelihood of
`prevailing with respect to the challenged claim. Accordingly, we do not
`institute inter partes review.
`
`A. Related Proceedings
`The parties inform us that the ’236 patent is currently at issue in
`U.S. 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. 7,964,034
`B2, 6,632,550 B1, 6,342,284 B1, 7,758,980 B2, 8,142,914 B2, and
`8,500,904 B2 are at issue in IPR2017–01011, IPR2017–01086, IPR2017–
`01350, IPR2017–01351, IPR2017-01352, and IPR2017–01353 respectively.
`
`B. The ’236 Patent
`The ’236 patent discloses a method and composition for preparing
`“set gypsum-containing products that have increased resistance to permanent
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`deformation (e.g., sag resistance) by employing one or more enhancing
`materials.” Ex. 1030, 1:23–26.
`The ’236 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.
`Id. at 2:1–6. 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 structure of the
`gypsum-containing product. Id. at 2:6–14. Although the matrix of gypsum
`crystals increases the strength of the gypsum-containing product, the ’236
`patent posits that existing gypsum-containing products could still benefit if
`the strength of their component set gypsum crystal structures were increased.
`Id. at 2:15–19.
`To increase the strength, dimensional stability, and resistance to
`permanent deformation of set gypsum-containing products, the ’236 patent
`discloses mixing calcium sulfate material, water, and an appropriate amount
`of one or more enhancing materials. Id. at 1:23–44. In a preferred
`embodiment, the enhancing material is in the form of trimetaphosphate ions,
`derived from the addition of sodium trimetaphosphate (STMP). Id. at 4:9–
`34. According to the ’236 patent, 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 4:29–34. It was also
`“unexpectedly found that trimetaphosphate ion . . . does not retard the rate of
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`the formation of set gypsum from calcined gypsum,” and, in fact, actually
`accelerates the rate of rehydration. Id. at 4:35–41. According to the ’236
`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 4:41–46.
`
`C. Claim 2
`Claim 2 is the only claim challenged, and is reproduced below:
`2. A method for producing set gypsum product comprising
`dissolving one or more enhancing materials in water, forming a
`mixture of calcined gypsum, water, and accelerator, inserting the
`aqueous solution of enhancing materials into the mixture, and
`maintaining the mixture under conditions sufficient for the
`calcined gypsum to form an interlocking matrix of set gypsum.
`Ex. 1030, 31:16–32:3.
`
`D. The Asserted Grounds of Unpatentability
`Petitioner contends claim 2 of the ’236 patent is unpatentable based
`on the following grounds (Pet. 2):1
`References
`Graux2 and Kerr3
`
`Claim Challenged
`2
`
`Basis
`§ 103
`
`Satterthwaite4 and Kerr
`
`Conroy5 and Johnstone6
`
`§ 103
`
`§ 103
`
`
`
`2
`
`2
`
`
`1 Petitioner also relies on a declaration from Mr. Gerry Harlos (Ex. 1001).
`2 U.S. Patent No. 5,932,001, issued Aug. 3, 1999 (Ex. 1006).
`3 U.S. Patent No. 2,884,413, issued Apr. 28, 1959 (Ex. 1010).
`4 U.S. Patent No. 3,234,037, issued Feb. 8, 1966 (Ex. 1007).
`5 U.S. Patent No. 4,965,031, issued Oct. 23, 1990 (Ex. 1033).
`6 U.S. Patent No. 4,372,814, issued Feb. 8, 1983 (Ex. 1034).
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`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
`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 ’236 patent expired shortly
`after the Petition was filed. Paper 6, 2; Pet. 10. Thus, to the extent
`necessary, we will construe the claims of the ’236 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 “enhancing
`material(s),” “accelerator,” and “set gypsum product.” Pet. 11–16. Patent
`Owner responds to Petitioner’s proposed constructions with its own
`proposed constructions of these terms. Prelim. Resp. 26–38. Upon review
`of Petitioner’s and Patent Owner’s arguments and supporting evidence, we
`determine that it is necessary to address only the construction of “enhancing
`material(s)” 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.”).
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`Petitioner contends that the proper construction for the term
`“enhancing material” is an “additive that improves at least one of resistance
`to permanent deformation, strength, and dimensional stability in set gypsum-
`containing products.” Pet. 12 (citing Ex. 1001 ¶ 74). According to
`Petitioner, the Specification of the ’236 patent clearly states that an
`enhancing material improves at least one of the three aforementioned
`properties. Id. at 11 (citing Ex. 1030, 1:26–34). Petitioner further argues
`that “Patent Owner did not ‘clearly redefine’ the term ‘enhancing materials’
`as being limited to the specific chemicals listed in various locations in the
`[’236] patent but instead lists specific chemicals as examples of materials
`that may improve one or more of sag resistance, strength, and/or
`dimensional stability.” Id. at 14. Petitioner also argues that there is “a
`presumption that the term ‘enhancing materials’ in Claim 2” should be
`construed broadly based on the difference between unchallenged claims 1
`and 3, which include a list of acceptable enhancing materials, and claim 2,
`which does not. Id. at 13.
`Patent Owner contends that the proper construction for “enhancing
`materials” is “phosphoric acids, each of which comprises 1 or more
`phosphoric acid units; salts or ions of condensed phosphates, each of which
`comprises 2 or more phosphate units; and monobasic salts or monovalent
`ions of orthophosphates.” Prelim. Resp. 29 (citing Ex. 2001 ¶¶ 84–92).
`Patent Owner asserts that “this definition . . . and very similar variations of
`this definition, are repeated at least 10 times” in the specification of the ’236
`patent. Id. at 30 (citing Ex. 1030, Abstract, 3:61–64, 6:7–11, 6:21–24, 6:32–
`36, 6:43–46, 6:54–58, 26:3–6, 29:32–36, 31:9–15 (claim 1), and 32:8–13
`(claim 3)).
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`According to Patent Owner, the ’236 patent specification does not
`indicate that the term “enhancing materials” includes all materials that may
`improve resistance to deformation, strength, or dimensional stability of a set
`gypsum product. Id. at 32. Rather, Patent Owner contends that
`conventional additives that might be used to improve or modify
`these properties are not within the specification’s definition of
`the “enhancing materials” and are used for comparative
`purposes. For example, Table 2 compares the sag resistance of
`gypsum board containing STMP with a control board (no
`additive) and with other “comparative samples” containing only
`additives such as boric acid, sodium aluminum phosphate, wax
`emulsion, and glass fiber, which are representative of
`conventional additives.
`Id. at 32–33. Patent Owner notes that the ’236 patent refers to boards made
`using conventional additives as “the noninventive comparative boards.” Id.
`at 33 (quoting Ex. 1030, 14:28–32).
`
`“The words of a claim are generally given their ordinary and
`customary meaning as understood by a person of ordinary skill in the art
`when read in the context of the specification and prosecution history.”
`Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`2012) (citing Phillips, 415 F.3d at 1313). An exception to this general rule
`exists, however, “when the patentee disavows the full scope of a claim term
`either in the specification or during prosecution.” Id. (citing Vitronics Corp.
`v. Conceptronic, Inc., 90 F.3d 1576, 1580 (Fed. Cir. 1996)).
`With regard to disavowal of claim scope, our reviewing court has
`stated that
`[w]here the specification makes clear that the invention does not
`include a particular feature, that feature is deemed to be outside
`the reach of the claims of the patent, even though the language
`of the claims, read without reference to the specification, might
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`be considered broad enough to encompass the feature in
`question.
`SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
`1341 (Fed. Cir. 2001).
`Although the parties dispute the precise scope of the term “enhancing
`materials,” for purposes of this Decision we need only resolve whether the
`proper construction of the term “enhancing materials” is broad enough to
`encompass boric acid. Example 2 of the ’236 patent states that samples
`were prepared by mixing beta calcium sulfate hemihydrate, an accelerator,
`and water with either “0 g additive (control samples), 3 g of STMP
`(inventive samples), or 3 g of other additives (comparative samples).”
`Ex. 1030, 13:41–46. According to Table 2 of the ’236 patent, boric acid is
`one of the “other additives” used in making the “comparative samples.” Id.
`at 14:22. The ’236 patent explains that “[t]he additives employed in the
`comparative samples (outside the scope of the invention) are representative
`of other materials that have been employed to attempt to improve resistance
`of gypsum board to sagging under conditions of high humidity.” Id. at
`14:8–13 (emphasis added). As Patent Owner points out, the ’236 patent
`further characterizes the board made using boric acid as one of the
`“noninventive comparative boards.” Id. at 14:28–32.
`We find this discussion of comparative examples as being outside the
`scope of the invention constitutes a clear indication that the “patentee
`disavow[ed] the full scope of a claim term . . . in the specification.”
`Thorner, 669 F.3d at 1365. As a result, these comparative examples,
`including a composition comprising gypsum, water, an accelerator, and
`boric acid, are “outside the reach of the claims of the patent.” SciMed, 242
`F.3d at 1341; see also Prelim. Resp. 32–34 (Patent Owner referring to boric
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`acid as a “conventional additive[]”). Therefore, when viewed in the context
`of the specification, the correct construction of “enhancing material” cannot
`include boric acid.
`
`B. Alleged Obviousness over Graux and Kerr
`Petitioner contends the subject matter of claim 2 of the ’236 patent
`would have been obvious over the combination of Graux and Kerr. Pet. 22–
`33.
`
`1. Graux
`Graux discloses a plaster, coating, or adhesive composition based on
`plaster that contains a cationic amylaceous compound.7 Ex. 1006, 1:4–5,
`Abstract. Graux explains that the 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. Id. at 5:34–53.
`Graux notes that, “[a]part from the plaster and the cationic
`amylaceous compound, the composition according to the invention may also
`contain . . . at least one additive,” including an accelerator, “for example,
`gypsum, potassium sulphate, [and] lime,” as well as one or more retarders,
`
`
`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.
`8 Graux uses the term “sulphate,” whereas the ’236 patent uses the term
`“sulfate.” We understand these two terms to be synonymous.
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`fillers, water retaining agents, water-repelling agents, and lightweight
`additives. Id. at 7:28–59.
`Example 1 of Graux, describes forming a plaster composed of
`75 wt. % calcium sulphate hemihydrate and 25 wt. % anhydrous calcium
`sulphate “of the ‘dead-burned’ type,” and adding 0.04 wt. % cationic
`amylaceous compound and 0.05 wt % retarder, which slows the setting of
`the plaster. Id. at 9:11–24. In one test plaster of Example 1, the cationic
`amylaceous compound is the form of a cationic potato starch that has
`previously been crosslinked with STMP. Id. at 10:7–31.
`
`2. Kerr
`Kerr discloses a process for producing “simple and cross-linked
`phosphate esters.” Ex. 1010, 1:12–15, 1:21–25. In particular, Kerr
`discovered that when starch in semi-dry state is heated under
`certain conditions in contact with an inorganic phosphate salt
`from
`the
`group
`consisting
`of metaphosphates,
`polymetaphosphates, pyrophosphates, tripolyphosphates, and
`mixtures thereof, the starch reacts with the phosphate to form a
`partial ester (simple ester), or the salt of a partial ester of the
`starch and orthophosphoric acid. Optionally, the starch ester
`may be crosslinked by continuing the heat treatment in the
`presence of certain alkaline substances.
`Id. at 1:26–35. Kerr illustrates how the reaction between starch and STMP
`forms di-starch orthophosphate and tetrasodium pyrophosphate. Id. at 2:54–
`69. Kerr discloses several examples wherein a phosphate salt is dissolved in
`water and added to a starch. Id. at 6:61–17:48.
`
`3. Analysis
`Claim 2 requires, among other things, adding an aqueous solution of
`enhancing materials into a mixture of calcined gypsum, water, and an
`accelerator. Ex. 1030, 31:17–32:1. Petitioner contends that “Graux
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`discloses all of the ingredients identified in the claimed composition,”
`including a composition of calcined gypsum, water, an accelerator, and
`STMP. Pet. 22. Petitioner further asserts that, because Graux discloses a
`plaster composition that is “more or less” a homogenous mixture of plaster
`and water, one of ordinary skill in the art would have found it obvious to
`“dissolve STMP in water before adding the solution to the gypsum mixture,
`which can include starch.” Id. at 24. Additionally, Petitioner argues that a
`person of ordinary skill in the art would understand that the basic chemistry
`in Kerr and Graux is similar, and Kerr would “underscore . . . that it is
`beneficial to use an aqueous form of STMP.” Id. at 25.
`Patent Owner responds that the challenged claim 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. 42, 50,
`52, 54. We agree with Patent Owner.
`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 crosslinked using STMP. Pet. 30–31. 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. Mr. Harlos discusses the reaction between
`STMP and a potato starch, and provides the following figure depicting this
`reaction:
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`Ex. 1001 ¶ 50. This figure shows the reaction between potato starch and
`STMP results in the formation of di-starch orthophosphate and tetrasodium
`pyrophosphate. Id. Consistent with Mr. Harlos’ testimony, Patent Owner’s
`declarant, Dr. Bruce, testifies that the STMP of Graux is “consumed” during
`the crosslinking reaction.9 Ex. 2001 ¶ 112.
`
`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
`tetrasodium pyrophosphate, i.e., STMP is consumed during Graux’s 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 2.
`Although STMP is consumed during the crosslinking process,
`Petitioner demonstrates that tetrasodium pyrophosphate, which is recited in
`the ’236 specification as an enhancing material (Ex. 1030, 26:35), is
`produced during the crosslinking reaction of Graux. Ex. 1001 ¶ 50. In
`addition, Dr. Bruce implicitly acknowledges that unreacted STMP could
`
`
`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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`remain in the cross-linked starch after the crosslinking process is completed.
`Ex. 2001 ¶ 113 (Dr. Bruce acknowledging that residual STMP may remain
`after the crosslinking reaction is completed). We are presented with
`insufficient evidence, however, that 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 is 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 (Ex. 2002) for a description of how various crosslinked
`starches were manufactured in the art, including starches crosslinked with
`STMP. Ex. 2001 ¶ 112 (citing Ex. 1006, 5:46–53); Ex. 2002, 3:9–18. In
`Examples I and II of EP 603 727, 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, 5:42–47, 6:54–55; see also id. at 7:46–50 (explaining that
`the samples “were worked up as described above”). Dr. 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 ¶¶ 112–113 (indicating that “Kerr also
`confirms that the conventional practice involves washing and drying the
`crosslinked starch,” which would remove any residual STMP and
`tetrasodium pyrophosphate).
`Thus, on this record, we are not persuaded that Graux discloses,
`expressly or inherently, the combination of calcined gypsum, water, an
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`accelerator, and one or more of the enhancing materials recited in claim 2.
`Petitioner does not rely on Kerr to cure this deficiency.
`Based on the foregoing, Petitioner has not demonstrated that the
`combined teachings of Graux and Kerr disclose or suggest every limitation
`of independent claim 2. Therefore, we conclude that Petitioner has not
`demonstrated a reasonable likelihood that claim 2 is unpatentable over
`Graux and Kerr.
`
`C. Alleged Obviousness over Satterthwaite and Kerr
`Petitioner contends that the subject matter of claim 2 would have been
`obvious over Satterthwaite and Kerr. Pet. 33–43.
`
`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–
`19.
`
`The disclosed “super-thick” boiling starch is manufactured by treating
`corn starch in aqueous slurry with, among other things, sodium
`trimetaphosphate, which crosslinks the starch molecules. Id. at 1:66–2:13.
`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
`acid ester is sprayed into the disclosed super-thick boiling starch in dry form.
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`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–
`42.
`
`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. 18. Petitioner concedes that Satterthwaite does not disclose the use of
`an accelerator, but contends “the inclusion of an accelerator is admitted prior
`art in the ’236 patent.” Id. at 39 (citing Ex. 1030, 17:41–43). Petitioner
`further argues a person of ordinary skill in the art would have known
`accelerators “are added to accelerate the hardening of the gypsum-containing
`product,” and would have understood “that adding an accelerator to the
`mixture would provide improved strength to gypsum-containing products
`over those to which it was not added.” Id.
`Patent Owner asserts the combination of Satterthwaite and Kerr would
`not have rendered the subject matter of the challenged claim 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 gypsum mixture.” Prelim. Resp. 60–61. 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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`Patent 7,425,236 B2
`
`that “a starch treated with STMP” is subsequently added to a mixture of
`water, gypsum, mineral wool, and other ingredients. Pet. 18; see also id. at
`36 (stating that “Satterthwaite discloses treating a solution of starch in water
`with ‘reagents such as . . . STMP . . . which form cross-links between the
`starch molecules.’”), 40 (citing Ex. 1007, 1:13–18, 2:9–13; Ex. 1001 ¶ 118).
`Petitioner does not explain why the addition of “a starch treated with STMP”
`is equivalent to inserting an aqueous solution of STMP into the mixture of
`gypsum, water, and an accelerator, as recited in claim 2. 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.
`Thus, on this record, we are not persuaded that Satterthwaite
`discloses, expressly or inherently, adding an enhancing material to the
`combination of calcined gypsum, water, and an accelerator as recited in
`claim 2. Petitioner does not rely on Kerr to cure this deficiency.
`Based on the foregoing, Petitioner has not demonstrated that the
`combined teachings of Satterthwaite and Kerr disclose or suggest every
`limitation of independent claim 2. Therefore, we conclude that Petitioner
`has not demonstrated a reasonable likelihood that claim 2 is unpatentable
`over Satterthwaite and Kerr.
`
`D. Alleged Obviousness over Conroy and Johnstone
`Petitioner contends that the subject matter of claim 2 would have been
`obvious over Conroy and Johnstone. Pet. 43–50.
`Petitioner’s challenge with regard to Conroy and Johnstone is based
`on the argument that boric acid is an “enhancing material,” as that term is
`construed by Petitioner, and Conroy and Johnstone disclose gypsum
`
`16
`
`
`
`Case IPR2017-01088
`Patent 7,425,236 B2
`
`compositions that include boric acid. Pet. 45–48. As discussed above in
`Section II.A, however, we find that boric acid does not fall within the scope
`of the claimed enhancing materials. As a result, the combined teachings of
`Conroy and Johnstone fail to disclose or suggest all of the elements in claim
`2. Therefore, we conclude that Petitioner has not demonstrated a reasonable
`likelihood that claim 2 is unpatentable over Conroy and Johnstone.
`III. CONCLUSION
`Upon consideration of the Petition and the Preliminary Response, as
`well as the testimony of Mr. Harlos and Dr. Bruce, we conclude that
`Petitioner has not demonstrated a reasonable likelihood that claim 2 is
`unpatentable over the recited prior art references. Accordingly, we do not
`institute inter partes review with respect to any of the asserted grounds.
`IV. ORDER
`
`It is hereby
`ORDERED that inter partes review is not instituted.
`
`
`
`
`
`17
`
`
`
`Case IPR2017-01088
`Patent 7,425,236 B2
`
`PETITIONER:
`
`Ross R. Barton
`Benjamin Pleune
`Lauren E. Burrow
`Stephen Lareau
`Tasneem Delphry
`ALSTON & BIRD LLP
`ross.barton@alston.com
`ben.pleune@alston.com
`lauren.burrow@alston.com
`stephen.lareau@alston.com
`tasneem.delphry@alston.com
`
`
`PATENT OWNER:
`
`Timothy P. Maloney
`Karl R. Fink
`FITCH, EVEN, TABIN & FLANNERY LLP
`tpmalo@fitcheven.com
`krfink@fitcheven.com
`
`
`
`
`
`
`
`
`
`
`
`
`18
`
`
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