Trials@uspto.gov
`571-272-7822
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` Paper: 9
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` Entered: October 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
`Petitioner,
`
`v.
`
`KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
`Patent Owner.
`____________
`
`Case IPR2018-00827
`Patent 9,828,287 B2
`____________
`
`
`
`Before JAMES T. MOORE, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
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`
`
`571-272-7822
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` Paper: 9
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` Entered: October 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.,
`Petitioner,
`
`v.
`
`KNAUF INSULATION, INC. and KNAUF INSULATION SPRL,
`Patent Owner.
`____________
`
`Case IPR2018-00827
`Patent 9,828,287 B2
`____________
`
`
`
`Before JAMES T. MOORE, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`KALAN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2018-00827
`Patent 9,828,287 B2
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`
`Johns Manville Corporation and Johns Manville, Inc. (“Petitioner”)
`filed a Petition (Paper 1, “Pet.”) seeking inter partes review of claims 1–9
`and 16–17 of U.S. Patent No. 9,828,287 B2 (Ex. 1001, “the ’287 patent”).
`Knauf Insulation, Inc. and Knauf Insulation SPRL (“Patent Owner”) filed a
`Preliminary Response. 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). An inter partes review may
`not be instituted “unless . . . there is a reasonable likelihood that the
`petitioner would prevail with respect to at least 1 of the claims challenged in
`the petition.” 35 U.S.C. § 314(a). Applying this standard to the information
`presented in the Petition, the Preliminary Response, and the supporting
`evidence, we determine Petitioner has not established a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Therefore, institution of an inter partes review is
`denied.
`
`I. BACKGROUND
`A. Related Matters
`The parties identify the following civil action as involving
`the ’287 patent: Knauf Insulation, Inc. v. Johns Manville Corp., No. 1:15-
`cv-00111-WTL-MJD (S.D. Ind. 2015). Pet. 1; Paper 4, 1. Petitioner asserts
`that the ’287 patent contains overlapping subject matter with a number of
`other patents that are the subject of proceedings before the Office. Pet. 1–2.
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`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Claims Challenged
`1–9 and 16–17
`1, 4–8, and 16–17
`1–9 and 16–17
`
`B. Petitioner’s Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability (Pet. 16,
`36, 46, 60):
`References
`Srinivasan1 and Worthington2
`Srinivasan and Gogek3
`Helbing,4 Worthington, and
`Srinivasan
`Helbing, Gogek, and
`Srinivasan
`Petitioner supports its challenges with a Declaration of Dr. Frederick
`J. Hirsekorn. Ex. 1005.
`
`§ 103(a)
`
`1, 4–8, and 16–17
`
`C. The ’287 Patent (Ex. 1001)
`The ’287 patent, titled “Binders and Materials Made Therewith,”
`relates to binders to produce or promote cohesion in non-assembled or
`loosely assembled matter. Ex. 1001, at [54], [57]. The binders of the ’287
`patent may be used in a variety of fabrication applications, and may be
`formaldehyde free. Id. at 1:62–65, 2:6–7. Generally, the binders may
`contain ester and/or polyester compounds, sodium or potassium salts of
`inorganic acids, and may include the product of a Maillard reaction, which
`
`
`1 U.S. Patent App. Pub. No. 2005/0059770 A1, published March 17, 2005
`(Ex. 1003, “Srinivasan”).
`2 U.S. Patent No. 3,513,001, issued May 19, 1970 (Ex. 1004,
`“Worthington”).
`3 U.S. Patent No. 2,965,504, issued December 20, 1960 (Ex. 1009,
`“Gogek”).
`4 U.S. Patent App. Pub. No. 2005/0202224 A1, published Sept. 15, 2005
`(Ex. 1008, “Helbing”).
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`reactants may include an amine reactant reacted with a reducing-sugar
`carbohydrate reactant. Id. at 2:12–46.
`The ’287 patent provides numerous examples of binders and the
`procedure for preparing those binders. Id. at 55:52–73:23. The claims of
`the ’287 patent are directed to a thermal or acoustical fiberglass insulation
`material comprising a collection of glass fibers and a binder with various
`characteristics. Id. at 88:28–90:22.
`D. Illustrative Claim
`The ’287 patent includes 17 claims; claims 1, 8, and 9 are the only
`independent claims. Claim 1 is illustrative of the challenged claims and is
`reproduced below, with additional numbering as added by Petitioner:
`1. [1.1] A thermal or acoustical fiberglass insulation material
`comprising:
`(a) [1.2] a collection of glass fibers; and
`(b) [1.3] a binder disposed on the collection of glass fibers,
`wherein the binder comprises [1.4] i) at least one reaction
`product of a reducing sugar reactant and an amine reactant,
`[1.5] wherein the percent by dry weight of the reducing sugar
`reactant with respect to the total weight of reactants ranges
`from about 73% to about 96%, [1.6] ii) a silicon-containing
`coupling agent, and [1.7] iii) optionally, a corrosion inhibitor,
`[1.8] wherein the fiberglass material comprises less than 99%
`by weight and more than 75% by weight glass fibers, [1.9]
`and wherein the fiberglass material has a density of from
`about 0.4 lbs/ft3 to about 6 lbs/ft3.
`Ex. 1001, 88:28–43.
`
`II. DISCUSSION
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable interpretation in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
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`Tech., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016) (upholding application
`of the broadest reasonable interpretation standard in an inter partes review).
`Under that standard, we generally give claim terms their ordinary and
`customary meaning as would be understood by a person of ordinary skill in
`the art in the context of the entire patent disclosure. In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes express constructions for two claim terms—
`“amine reactant” and “the binder contains about 4 percent to about 5 percent
`nitrogen by mass as determined by elemental analysis.” Pet. 8–13. After
`considering the parties’ arguments and the evidence before us, we determine
`it is not necessary to construe any claim term expressly to determine whether
`to institute trial. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`795, 803 (Fed. Cir. 1999) (“only those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy”).
`B. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art
`(“POSITA”) “would have been someone with a Ph.D. in Chemistry and 3–5
`years of industry experience in binder development for insulating or
`analogous products, or someone with a Bachelor of Science degree in
`Chemistry or Chemical Engineering and 10 or more years of experience in
`binder development for the manufacture of insulating or analogous
`products.” Pet. 10 (citing Ex. 1005 ¶ 38) (emphasis added). Patent Owner
`does not dispute Petitioner’s contention regarding the level of skill in the art.
`We determine that “analogous products,” as set forth in Petitioner’s
`definition of a POSITA, is unclear and overly broad. Petitioner does not
`explain what it means by “analogous products,” and the phrase “insulating
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`or analogous products” is broader than the field of art to which the claimed
`method pertains. Id. Dr. Hirsekorn explains that the challenged claims of
`the ’287 patent “are directed to thermal or acoustical fiberglass insulation
`materials made by disposing a binder on a collection of glass fibers.”
`Ex. 1005 ¶ 39. That testimony is consistent with the preamble of claim 1 of
`the ’287 patent, which recites: “[a] thermal or acoustical fiberglass
`insulation material.” Ex. 1001, 88:28.
`Accordingly, on this record and consistent with the expert testimony
`and the language of the ’287 patent, we determine that a POSITA would
`have had a Ph.D. in Chemistry and three to five years of industry experience
`in binder development for the manufacture of fiberglass insulation products,
`or a Bachelor’s degree in Chemistry or Chemical Engineering and ten or
`more years of experience in binder development for the manufacture of
`fiberglass insulation products. Ex. 1005 ¶¶ 38–39.
`C. Overview of Prior Art References
`Srinvasan (Ex. 1003)
`1.
`Srinivasan generally discloses “[a]n aqueous binder composition” and
`“the related method of its use for making glass fiber products, especially
`fiberglass insulation.” Ex. 1003, at [57]. Srinivasan describes its
`composition as “a new formaldehyde-free binder composition.” Id. ¶ 1. The
`composition particularly relates to “a water-soluble and substantially
`infinitely water-dilutable thermosetting (i.e., thermosettable) adduct (or
`copolymer) of an unsaturated carboxylic acid monomer (i.e., at least on[e]
`such monomer) and an unsaturated hydroxyl monomer (i.e., at least one such
`monomer).” Id. ¶ 21. Srinivasan includes silanes as coupling agents. Id.
`¶ 55. It discusses products in which 99–60% by weight will be composed of
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`glass fibers, and products having a density in the range of less than one
`pound per cubic foot to forty pounds per cubic foot. Id. ¶ 65.
`2. Worthington (Ex. 1004)
`Worthington discloses thermosetting compositions for use as binders
`in the making of shell molds or cores and for other purposes for which
`thermosetting compositions are used, for example, for the production of
`plastic articles in conjunction with a suitable filler. Ex. 1004, 1:29–35.
`Worthington’s objective is to provide a substitute for phenolic resins and
`other binders conventionally used in the shell mold process. Id. at 1:41–52.
`According to Worthington, the thermosetting composition comprises:
`a major proportion by weight of a carbohydrate (preferably the
`carbohydrate is mixed with a minor proportion of either a mineral
`acid or a salt liberating such an acid on heating, such as, for
`example, the ammonium salt of sulphuric or hydrochloric acid),
`a minor proportion of a carboxylic acid, preferably a
`polycarboxylic acid, preferably containing additional groups
`such as hydroxyl or amino groups or an aromatic carboxylic acid
`with active α carbon atoms, or a mixture of two or more such
`acids and a still smaller proportion of one or more cross-linking
`agents and of one or more amines.
`Id. at 1:53–65.
`Worthington discloses that the ingredients react to form a
`thermosetting resin-like product that can be used to replace phenol
`formaldehyde synthetic resins or other materials commonly used in the
`production of molded products or of shell molds or cores. Id. at 3:55–58.
`Worthington identifies advantages of the disclosed binders over phenol-
`formaldehyde resins and other materials previously used in the art. Id.
`at 7:11–23.
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`
`Helbing (Ex. 1008)
`3.
`Helbing discloses “formaldehyde-free, thermally-curable, alkaline,
`aqueous binder compositions.” Ex. 1008, at [57]. In particular, Helbing’s
`disclosure relates to “thermally-curable, polyester binders for non-woven
`fibers.” Id. ¶ 2. Helbing discloses, inter alia, a glass fiber product (id. ¶ 10),
`a binder composition including a polyacid component having acid groups
`and a polyhydroxy component having hydroxyl groups (id. ¶¶ 8, 11, 17), use
`of catalysts capable of increasing the rate of polyester formation that may
`include an ammonium salt (id. ¶ 20), and use of silicon-containing coupling
`agents (id. ¶ 21).
`4.
`Gogek (Ex. 1009)
`Gogek relates to moisture resistant refractory blocks having high
`hardness suitable for use in insulating furnaces. Ex. 1009, 1:14–16. Gogek
`discloses:
`I have discovered that greatly improved insulating blocks which
`are highly moisture resistant can be prepared from refractory
`materials and a binder consisting essentially of a sugar and a
`chemical adjunct, and I have also discovered that such blocks
`possess hardness and resistance to breakage and chipping not
`found in any commercially available refractory block.
`Id. at 1:30–36. Gogek discloses that the preferred chemical adjunct is
`ammonium sulfate. Id. at 1:73.
`Gogek discloses the following example formulation:
`
`
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`Ex. 1009, 2:10–18 (Example 1). Gogek discloses that, to make an insulating
`block, “the above-named components were slurried in 600 to 1000 parts of
`water, and the slurry was passed between two moving perforated belts to
`squeeze out the excess water and compact the undissolved ingredients.” Id.
`at 2:19–23. The compressed mass was cut into blocks, which were then
`baked in kilns. Id. at 2:23–26. According to Gogek, blocks made according
`to this method were resistant to water and exhibited high surface hardness,
`as compared with blocks made by prior art methods. Id. at 2:30–41.
`D. Petitioner’s Ground 1: Srinivasan and Worthington
`Petitioner contends that Srinivasan and Worthington teach the thermal
`or acoustical fiberglass insulation material limitations of independent
`claim 1, i.e., that Srinivasan discloses limitations 1.1, 1.2, 1.3, 1.6, 1.8, and
`1.9, and that Worthington teaches limitations 1.4 and 1.5 (optional
`limitation 1.7, Petitioner argues, need not be met). Pet. 19–24. Petitioner
`relies on Srinivasan and/or Worthington to teach the additional limitations of
`claims 2–9 and 16–17. Id. at 24–35. Petitioner contends that a skilled
`artisan would have had several reasons to combine the teachings of
`Srinivasan and Worthington. Id. at 17–19 (“Overarching Reasons to
`Combine Srinivasan and Worthington”) (citing Ex. 1005 ¶¶ 67–69).
`Patent Owner argues that Petitioner fails to adequately explain its
`theory of obviousness, and picks and chooses binder components without
`explanation. Prelim. Resp. 12–20. Patent Owner also argues that Petitioner
`fails to provide a valid rationale for combining the cited references. Id.
`at 20–27. More particularly, Patent Owner argues that being in the same
`field of endeavor or analogous does not establish obviousness; that using
`thermoset material is too broad to explain obviousness; that Petitioner fails
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`to support its assertion that elements of the cited references could have been
`predictably combined; and that Petitioner improperly bases its obviousness
`grounds on the disclosure of the ’287 patent and the reexamination of
`the ’445 patent. Id. at 21–27. Patent Owner also argues that compatibility
`does not mean obvious to combine (id. at 29) and that a need for
`formaldehyde-free binders is not a reason to modify Srinivasan or Helbing
`(id. at 31).
`First, Petitioner argues that both Srinivasan and Worthington
`“disclose a thermosetting binder composition, and both do so with a binder
`containing a reducing sugar and a monomeric carboxylic acid, making the
`reactants in the similar endeavors related to each other.” Pet. 17 (citing
`Ex. 1005 ¶ 67). In the same vein, Petitioner argues that the Board “found
`Worthington to be analogous prior art” to Patent Owner’s related binder
`patent, and that therefore, Worthington is analogous art. Id. at 18.
`Petitioner’s argument is deficient in several respects. Analogous art is
`merely a threshold inquiry as to whether a reference can be considered in an
`obviousness analysis. Demonstrating that a reference is analogous art or
`relevant to the field of endeavor of the challenged patent is not sufficient to
`establish that one of ordinary skill would have had reason to combine its
`teachings with other prior art in the manner set forth in the claim. See
`Securus Techs., Inc. v. Global Tel*Link Corp., 701 F. App’x 971, 977 (Fed.
`Cir. 2017) (“a broad characterization of [prior art references] as both falling
`within the same alleged field . . . without more, is not enough for [Petitioner]
`to meet its burden of presenting a sufficient rationale to support an
`obviousness conclusion”). Mere compatibility of the references is likewise
`not sufficient. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 993
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`(Fed. Cir. 2017) (it is not enough to show that “a skilled artisan, once
`presented with the two references, would have understood that they could be
`combined”).
`Second, Petitioner argues that, because Srinivasan “teaches methods
`lending themselves to the use of thermosetting compositions,” and because
`Worthington “expressly teaches that its methods are appropriate wherever a
`thermosetting composition may be used,” that a “combination of
`Worthington and Srinivasan is obvious in the context of thermosetting
`compositions.” Pet. 17–18 (citing Ex. 1005 ¶ 68). Petitioner argues that, “as
`shown below,” the challenged claims “represent nothing more than the
`predictable use of prior art elements from Srinivasan and/or Worthington
`according to their established functions.” Id. In its claim-by-claim analysis,
`Petitioner asserts that one of ordinary skill “would have recognized the
`benefits of Worthington’s thermosetting composition” and “found it obvious
`to use that composition in the method disclosed by Srinivasan such that
`flexibility in physical conditions might be increased, the product might last
`longer in storage, noxious fumes might not be produced, and materials for
`production might be secured more cheaply.” Id. at 21 (citing Ex. 1005 ¶ 75).
`Petitioner’s argument assumes that all thermoset binders are useful in
`a fiberglass insulation product of the type disclosed in Srinivasan—an
`assumption that Petitioner fails to support. Petitioner does not compare the
`thermoset binder disclosed in Worthington with the thermoset binder
`disclosed in Srinivasan, nor does Petitioner attempt to show that one of
`ordinary skill in the art would have had a reason to substitute Worthington’s
`binder for the binder disclosed in Srinivasan. See Pet. 21; Ex. 1005 ¶ 75.
`
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`As noted by Patent Owner, “the cited references teach considerably different
`binding systems.” Prelim. Resp. 19. Srinivasan teaches “a free radical
`polymerized adduct of a monomeric carboxylic acid component and a
`monomeric hydroxyl component, polymerized in the presence of a chain
`transfer agent,” for use in “making glass fiber products, especially fiberglass
`insulation.” Id.; Ex. 1009, at [57]. On the other hand, Worthington
`discloses thermosetting compositions for use as binders in the making of
`shell molds or cores and, for example, for the production of plastic articles in
`conjunction with a suitable filler, with the objective of providing a substitute
`for phenolic resins and other binders conventionally used in the shell mold
`process. Ex. 1004, 1:29–35, 1:41–52.
`Moreover, Petitioner does not support, in its claim-by-claim analysis,
`which elements of the cited references could be predictably combined. For
`example, in its discussion of claim 1, Petitioner indicates which of the
`references purportedly discloses each element of claim 1, but does not
`indicate which of the prior art elements allegedly has a known function,
`what that function is, and why that function is allegedly predictable.
`Pet. 19–24; Prelim. Resp. 26. Petitioner and its declarant have not
`explained sufficiently why one of ordinary skill in the art would have
`selected Worthington’s thermosetting composition for use as a binder in a
`fiberglass insulation material. Petitioner’s reliance on the testimony of
`Dr. Hirsekorn to support its arguments fails to direct us to evidence
`supporting that claims 1–9 and 16–17 represent nothing more than the
`predictable use of prior art elements. Accordingly, we give little weight to
`Dr. Hirsekorn’s testimony. See 37 C.F.R. § 42.65(a) (“Expert testimony that
`does not disclose the underlying facts or data on which the opinion is based
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`is entitled to little or no weight.”); Rohm & Haas Co. v. Brotech Corp., 127
`F.3d 1089, 1092 (Fed. Cir. 1997) (nothing in the Federal Rules of Evidence
`or Federal Circuit jurisprudence requires the fact finder to credit
`unsupported assertions of an expert witness).
`Third, Petitioner argues that “combining the teachings of the two
`references would have been well within the skill” of an ordinarily skilled
`artisan, who would have had a “reasonable expectation of success in
`fabricating materials based on the teachings of Srinivasan in view of
`Worthington.” Pet. 18 (citing Ex. 1005 ¶ 69). Obviousness, however,
`requires “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Moreover,
`it is Petitioner’s burden to demonstrate “that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention, and that the skilled artisan would have had a
`reasonable expectation of success in doing so.” Intelligent Bio-Sys., Inc. v.
`Illumina Cambridge Ltd., 821 F.3d 1359, 1367–1368 (Fed. Cir. 2016)
`(citations omitted). In this light, the extent of the modifications proposed by
`Petitioner, the reasons for such modifications, and whether there would be a
`reasonable expectation of success are not adequately supported. Petitioner
`merely makes the assertion that it would have been so, and cites to a largely
`duplicative paragraph of the Hirsekorn Declaration for support. Pet. 18
`(citing Ex. 1005 ¶ 69). An unsupported statement that combining the
`teachings of the two references would have been “well within the skill of a
`POSA,” because the results of reacting a reducing sugar with an amine
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`reactant “were well-known and predictable” does not meet Petitioner’s
`burden. Id.
`Finally, Petitioner mentions briefly that the claims of the ’445 patent
`subject to reexamination were found unpatentable, and that the ’287 patent
`overcame an obviousness-type double patenting rejection over the ’445
`patent claims by terminal disclaimer, and thus “it follows that the ’287
`Patent claims are similarly unpatentable.” Pet. 19 (citing Section III.C).
`This alone, without any analysis of the similarities and differences between
`the claims of those patents, does not permit us to reach the conclusion that
`“it follows” that the ’287 patent claims are unpatentable. See Prelim.
`Resp. 27–28.
`Although Petitioner attempts to establish reasons to combine the
`elements of Worthington and Srinivasan (Pet. 17–19), Petitioner does not
`expressly discuss whether one of ordinary skill in the art would have had a
`reason to combine the cited teachings in the context of a fiberglass insulation
`product. The cited paragraphs of the Hirsekorn Declaration (Ex. 1005
`¶¶ 67–69, 74–75) are substantially the same as the Petition (Pet. 17–19, 21)
`and are deficient for the same reasons as discussed above. Accordingly, we
`determine that Petitioner’s arguments and evidence, whether considered
`individually or as a whole, do not demonstrate a reasonable likelihood of
`prevailing on Petitioner’s contention that the challenged claims are
`unpatentable as obvious in view of Srinivasan and Worthington.
`E. Petitioner’s Grounds 2, 3, and 4
`We address Petitioner’s remaining three Grounds together, because
`Petitioner raises substantially similar arguments for all three Grounds, and
`because our discussion of these three Grounds addresses similar issues.
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`For Ground 2, Petitioner contends that Srinivasan and Gogek teach
`the limitations of independent claim 1, i.e., that Srinivasan teaches
`limitations 1.1, 1.2, 1.3, 1.6, 1.8, and 1.9, and that Gogek teaches limitations
`1.4 and 1.5 (optional limitation 1.7, Petitioner argues, carries no patentable
`weight). Pet. 38–40. Petitioner relies on Srinivasan and/or Gogek to teach
`the additional limitations of claims 4–8 and 16–17. Id. at 41–45. Petitioner
`contends that a skilled artisan would have had several reasons to combine
`the teachings of Srinivasan and Gogek. Id. at 36–38 (“Overarching Reasons
`to Combine Srinivasan and Gogek”) (citing Ex. 1005 ¶¶ 133–135).
`For Ground 3, Petitioner contends that Helbing, Worthington and
`Srinivasan teach the limitations of independent claim 1, i.e., that Helbing
`teaches limitations 1.1, 1.2, 1.3, and 1.6, that Worthington teaches
`limitations 1.4 and 1.5, and that Srinivasan teaches limitations 1.8 and 1.9
`(optional limitation 1.7, Petitioner argues, carries no patentable weight).
`Pet. 50–52. Petitioner relies on Helbing, Worthington, and/or Srinivasan to
`teach the additional limitations of claims 2–9 and 16–17. Id. at 52–60.
`Petitioner contends that a skilled artisan would have had several reasons to
`combine the teachings of Helbing with Srinivasan and Worthington. Id.
`at 47–50 (“Overarching Reasons to Combine Helbing with Srinivasan and
`Worthington”) (citing Ex. 1005 ¶¶ 180–183).
`For Ground 4, Petitioner contends that Helbing, Gogek and Srinivasan
`teach the limitations of independent claim 1, i.e., that Helbing teaches
`limitations 1.1, 1.2, 1.3, and 1.6, that Gogek teaches limitations 1.4 and 1.5,
`and that Srinivasan teaches limitations 1.8 and 1.9 (optional limitation 1.7,
`Petitioner argues, carries no patentable weight). Pet. 62–64. Petitioner
`relies on Helbing, Gogek, and/or Srinivasan to teach the additional
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`limitations of claims 4–8 and 16–17. Id. at 64–69. Petitioner contends that a
`skilled artisan would have had several reasons to combine the teachings of
`Helbing with Gogek and Worthington. Id. at 60–62 (“Overarching Reasons
`to Combine Helbing with Gogek and Worthington”) (citing Ex. 1005
`¶¶ 256–258).
`Patent Owner argues that, for each of the remaining three Grounds,
`Petitioner fails to adequately explain its theory of obviousness, and picks
`and chooses binder components without explanation. Prelim. Resp. 12–20.
`Patent Owner also argues that Petitioner fails to provide a valid rationale for
`combining the cited references. Id. at 20–27. More particularly, Patent
`Owner argues that being in the same field of endeavor or analogous does not
`establish obviousness; that using thermoset material is too broad to explain
`obviousness; that Petitioner fails to support its assertion that elements of the
`cited references could have been predictably combined; and that Petitioner
`improperly bases its obviousness grounds on the disclosure of the ’287
`patent and the reexamination of the ’445 patent. Id. at 21–27. Patent Owner
`also argues that compatibility does not mean obvious to combine (id. at 29)
`and that a need for formaldhyde-free binders is not a reason to modify
`Srinivasan or Helbing (id. at 31).
`First, for each Ground, Petitioner argues that each reference “is
`analogous prior art to the claimed subject matter” (Pet. 37, 48, 62). More
`particularly, Petitioner argues that Srinivasan and Gogek are both “directed
`to the manufacture of articles by thermosetting a binder composition mixed
`with loose matter,” (id. at 36), and that Helbing “is directed to the
`manufacture of articles by thermosetting a binder composition mixed with
`loose matter,” (id. at 47, 60). As discussed above, Petitioner’s argument is
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`IPR2018-00827
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`deficient in several respects. Analogous art is merely a threshold inquiry as
`to whether a reference can be considered in an obviousness analysis.
`Demonstrating that a reference is analogous art or relevant to the field of
`endeavor of the challenged patent is not sufficient to establish that one of
`ordinary skill would have had reason to combine its teachings with other
`prior art in the manner set forth in the claim. See Securus Techs., Inc., 701
`F. App’x at 977. Mere compatibility of the references is likewise not
`sufficient. Personal Web Techs., 848 F.3d at 994.
`Second, for Ground 2, Petitioner argues that Srinivasan “teaches
`methods lending themselves to the use of thermosetting compositions,” and
`that Gogek “discloses just such a composition.” Pet. 37 (citing Ex. 1005
`¶ 134). For Ground 3, Petitioner argues that Helbing teaches that its
`methods “lend themselves to the use of thermosetting compositions” and
`Worthington suggests that its teachings “are appropriate wherever a
`thermosetting composition may be used.” Id. at 48 (citing Ex. 1005 ¶ 181).
`For Ground 4, Petitioner also argues that Helbing and Srinivasan teach that
`their methods “lend themselves to the use of thermosetting compositions”
`and Gogek “discloses just such a composition.” Id. at 61 (citing Ex. 1005
`¶ 257). Petitioner argues that, as shown or described below, the challenged
`claims “represent nothing more than the predictable use of prior art elements
`from [the references] according to their established functions.” Id. at 36, 47,
`61. In its claim-by-claim analysis for Grounds 2 and 4, Petitioner asserts
`that it would have been obvious to one of ordinary skill in the art to seek
`various binder formulations that avoid formaldehyde emissions, such as
`Gogek’s binder, and use them in combination with Srinivasan’s or Helbing’s
`methods. Id. at 39 (citing Ex. 1005 ¶ 140), 63 (citing Ex. 1005 ¶ 264). In its
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`claim-by-claim analysis for Ground 3, Petitioner asserts that one of ordinary
`skill “would have recognized the benefits of Worthington’s thermosetting
`composition” and “found it obvious to use that composition in the method
`disclosed by Helbing for the reasons stated above.” Id. at 51 (citing
`Ex. 1005 ¶ 189).
`Petitioner’s argument assumes that all thermoset binders are useful in
`a fiberglass insulation product of the type disclosed in the respective primary
`reference (Srinivasan or Helbing)—an assumption that Petitioner fails to
`support. Petitioner does not compare the binder disclosed in any of the
`secondary references with the binder disclosed in the respective primary
`reference, nor does Petitioner attempt to show that one of ordinary skill in
`the art would have had a reason to substitute the binder of the secondary
`reference for the binder disclosed in the respective primary reference. See
`Pet. 39 (citing Ex. 1005 ¶ 140), 51 (citing Ex. 1005 ¶ 189), 63 (citing
`Ex. 1005 ¶ 264). As noted by Patent Owner, the cited references “teach
`considerably different binding systems.” Prelim. Resp. 19. Srinivasan
`teaches “a free radical polymerized adduct of a monomeric carboxylic acid
`component and a monomeric hydroxyl component, polymerized in the
`presence of a chain transfer agent,” for use in “making glass fiber products,
`especially fiberglass insulation.” Id.; Ex. 1009, at [57]. Helbing teaches
`“formaldehyde-free, thermally-curable, alkaline, aqueous binder
`compositions” relating to “thermally-curable, polyester binders for non-
`woven fibers.” Ex. 1008, at [57], ¶ 2. On the other hand, Worthington
`discloses thermosetting compositions for use as binders in the making of
`shell molds or cores and, for example, for the production of plastic articles in
`conjunction with a suitable filler, with the objective of providing a substitute
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`for phenolic resins and other binders conventionally used in the shell mold
`process. Ex. 1004, 1:29–35, 1:41–52. Gogek discloses a binder that uses
`clay, for use in “moisture resistant refractory blocks having high hardness
`suitable for use in insulating furnaces.” Ex. 1009, 1:14–16.
`Moreover, Petitioner does not support, in its claim-by-claim analysis,
`which elements of the cited references could be predictably combined. For
`example, in its discussion of claim 1, Petitioner indicates which of the
`references purportedly discloses each element of claim 1, but does not
`indicate which of the prior art elements allegedly has a known function,
`what that function is, and why that function is allegedly predictable.
`Pet. 38–40 (Ground 2), 50–52 (Ground 3), 62–64 (Ground 4); Prelim.
`Resp. 26. Petitioner and its declarant have not explained sufficiently why
`one of ordinary skill in the art would have selected the composition of the
`secondary reference in question for use as a binder in a fiberglass insulation
`material of Srinivasan or Helbing. Petitioner’s reliance on the t
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