Trials@uspto.gov
`571-272-7822
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` Paper 8
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`Entered: October 2, 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 IPR2018-00863
`Patent 9,464,207 B2
`____________
`
`
`
`Before JAMES T. MOORE, KRISTINA M. KALAN, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. §§ 314(a)
`
`
`
`
`
`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`Johns Manville Corporation and Johns Manville, Inc. (collectively,
`
`“Johns Manville” or “Petitioner”) filed a Petition (Paper 2, “Pet.”) seeking
`
`inter partes review of claims 1–3, 5, 6, 8–10, 12, 14, 16, 17, 19–23, 30–32,
`
`44–54, 56–61, and 66–71 (the “challenged claims”) of U.S. Patent
`
`No. 9,464,207 B2 (Ex. 1001, “the ’207 patent”). Knauf Insulation, Inc. and
`
`Knauf Insulation SPRL (collectively, “Knauf” or “Patent Owner”) filed a
`
`Preliminary Response. Paper 6 (“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, and upon
`
`consideration of the information presented in the Petition and the
`
`Preliminary Response, 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.
`
`A.
`
`Related Matters
`
`I. BACKGROUND
`
`The parties identify the following civil action as involving
`
`the ’207 patent: Knauf Insulation, Inc. v. Johns Manville Corp., No. 1:15-
`
`cv-00111-WTL-MJD (S.D. Ind., filed Jan. 27, 2015). Pet. 1; Paper 7, 2.
`
`The ’207 patent was issued October 16, 2016, and was asserted by Patent
`
`Owner subsequent to the filing date of the civil action. Ex. 1001, at (45);
`
`Prelim. Resp. 2–3. Patent Owner does not assert a time bar under 35 U.S.C.
`
`§ 315(b).
`
`2
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`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`
`
`The following administrative and judicial matters involve patents that
`
`are either related to the ’207 patent and/or are identified by Petitioner
`
`(Pet. 1–2) as sharing subject matter with the ’207 patent:
`
`U.S. Patent No. 7,888,445 (“the ’445 patent”)1
`
`Reexamination Control No. 90/013,029; PTAB Appeal
`
`No. 2016-006341; Federal Circuit Appeal Nos. 2017-1317, 2017-
`
`1323, 2017-1324;
`
`Reexamination Control No. 95/000,672; PTAB Appeal
`
`Nos. 2015-001313 and 2017-004826; Federal Circuit Appeal
`
`No. 2018-1810;
`
`U.S. Patent No. 7,772,347 (“the ’347 patent”)2
`
`Reexamination Control 90/013,030; PTAB Appeal No. 2016-
`
`006368; Federal Circuit Appeal Nos. 2017-1317, 2017-1323, 2017-
`
`1324;
`
`Reexamination Control No. 95/000,675; PTAB Appeal
`
`Nos. 2015-001256 and 2017-004910; Federal Circuit Appeal
`
`No. 2018-1811;
`
`
`
`1 The ’207 patent asserts the benefit of an earlier-filed grandparent
`application that issued as the ’445 patent.
`
`2 The ’207 patent and the ’347 patent both assert the benefit of an earlier-
`filed application that issued as the ’445 patent.
`
`3
`
`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`U.S. Patent No. 7,854,980
`
`Reexamination Control No. 90/013,156; PTAB Appeal
`
`No. 2016-006369; Federal Circuit Appeal Nos. 2017-1317, 2017-
`
`1323, 2017-1324; and
`
`Reexamination Control No. 95/000,674; PTAB Appeal
`
`No. 2015-001824; Federal Circuit Appeal No. 2016-1184;
`
`U.S. Patent No. 7,807,771 (“the ’771 patent”)3
`
`Reexamination Control No. 95/000,673.
`
`The following inter partes review proceedings and appeal involve
`
`Johns Manville as Petitioner and Knauf as Patent Owner:
`
`Case IPR2015-01402, involving U.S. Patent No. 8,114,210 B2
`
`(“the ’210 patent”);4 Federal Circuit Appeal No. 2017-1433;
`
`Case IPR2015-01453, involving U.S. Patent No. D631,670 S;
`
`Case IPR2016-00130, involving U.S. Patent No. D631,670 S;
`
`Case IPR2015-01527, involving U.S. Patent No. 8,940,089 B2;
`
`Case IPR2015-01569, involving U.S. Patent No. 8,940,089 B2;
`
`Case IPR2015-01598, involving U.S. Patent No. 8,940,089 B2;
`
`Case IPR2015-01633, involving U.S. Patent No. 9,039,827 B2;
`
`Case IPR2015-01673, involving U.S. Patent No. 9,039,827 B2;
`
`Case IPR2015-01683, involving U.S. Patent No. 9,039,827 B2;
`
`Case IPR2018-00805, involving U.S. Patent No. 9,469,747 B2;
`
`
`
`3 The ’207 patent and the ’771 patent both assert the benefit of an earlier-
`filed application that issued as the ’445 patent.
`
`4 Petitioner contends that the ’207 patent shares subject matter with the ’210
`patent. Pet. 2. U.S. Patent Nos. 8,940,089, 9,039,827, and 9,469,747 are
`related to the ’210 patent.
`
`4
`
`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`Case IPR2018-00827, involving U.S. Patent No. 9,828,287 B2; and
`
`Case IPR2018-00879, involving U.S. Patent No. 9,926,464 B2 (“the
`
`’464 patent”).5
`
`B.
`
`Petitioner’s Asserted Grounds of Unpatentability
`
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103(a):
`
`Claims 1–3, 5, 6, 8–10, 12, 14, 16, 17, 19–23, 30–32, 44–54, 56–61,
`
`and 66–71 as obvious in view of Strauss,6 Tutin,7 and Worthington;8 and
`
`Claims 1, 3, 5, 6, 12, 14, 16, 17, 19–21, 30–32, 44–52, 54, 56–61,
`
`66-77, and 69–71 as obvious in view of Strauss, Tutin, and Gogek.9 Pet. 6.
`
`Petitioner supports its challenges with a Declaration of Dr. Frederick
`
`J. Hirsekorn. Ex. 1008.
`
`C.
`
`The ’207 Patent (Ex. 1001)
`
`The ’207 Patent relates to fiberglass insulation made using binders,
`
`and more particularly, to methods of manufacturing insulation products
`
`using binders. Ex. 1001, 3:63–66, 4:24–32, 47:50–48:26 (claim 1). The
`
`claimed method involves manufacturing a fiberglass insulation product
`
`having a specified concentration of glass fibers by spraying an aqueous
`
`binder solution onto a mat of glass fibers such that the residual heat from the
`
`
`
`5 The ’464 patent issued on a continuation of the application that issued as
`the ’207 patent.
`
`6 US 5,318,990, issued June 7, 1994, Ex. 1003.
`
`7 US 2004/0038017 A1, published February 26, 2004, Ex. 1004.
`
`8 US 3,513,001, issued May 19, 1970, Ex. 1005.
`
`9 US 2,965,504, issued December 20, 1960, Ex. 1006.
`
`5
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`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`fibers and flow of air through the mat evaporates water from the binder
`
`solution, transferring the binder coated mat to and through a curing oven,
`
`heating the mat and curing the binder, and compressing the product for
`
`packaging and shipping. Id. at 14:65–15:10, 23:25–24:20 (Example 8),
`
`47:50–48:26 (claim 1). The binder solution comprises “Maillard reactants”
`
`including an amine reactant and a carbohydrate reactant, and the curing step
`
`consists of a Maillard reaction between these reactants. Id. at 2:30–67, 4:2–
`
`12, 10:33–11:4, 47:62–64, 48:22–23, Figs. 1, 2.
`
`D.
`
`Illustrative Claim
`
`The ’207 patent includes 71 claims, and claim 1 is the sole
`
`independent claim. The Petition challenges claims 1–3, 5, 6, 8–10, 12, 14,
`
`16, 17, 19–23, 30–32, 44–54, 56–61, and 66–71. Claim 1 is illustrative of
`
`the challenged claims and is reproduced below, with paragraphs adjusted
`
`and bracketed notations added to correspond with Petitioner’s identification
`
`of the claim elements:
`
`1. [1p1] A method of making a thermal or acoustical
`fiberglass insulation product, wherein the thermal or acoustical
`fiberglass insulation product comprises glass fibers,
`
`[1p2] said glass fibers being present in the fiberglass
`insulation product in the range from about 80% to about 99%
`by weight, wherein the method comprises:
`
`[1a] spraying an uncured aqueous binder solution onto a
`mat of glass fibers during production of the fiberglass insulation
`product such that,
`
`[1b] once the aqueous binder solution is in contact with
`the glass fibers, residual heat from the glass fibers and flow of
`air through the mat evaporates water from the aqueous binder
`solution,
`
`6
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`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`[1c] the aqueous binder solution comprising: Maillard
`reactants including (i) an amine reactant and (ii) a carbohydrate
`reactant,
`
`[1d] wherein the carbohydrate reactant is selected from
`one or more carbohydrate reactants having one or more
`reducing sugars, one or more carbohydrate reactants which
`yield one or more reducing sugars in situ under thermal curing
`conditions, and combinations thereof,
`
`[1e] wherein the percent by dry weight of the reducing
`sugar from the carbohydrate reactant with respect to the total
`weight of reactants in the aqueous binder solution ranges from
`about 73% to about 96%;
`
`[1f] transferring the binder coated mat to and through a
`curing oven;
`
`[1g] heating the binder coated mat in the curing oven and
`curing the binder so as to produce the thermal or acoustical
`fiberglass insulation product, wherein
`
`[1h] i) heated air is passed through the mat to cure the
`binder in contact with the glass fibers,
`
`[1i] ii) flights above and below the mat slightly compress
`the mat to give the fiberglass insulation product a
`predetermined thickness and surface finish, and
`
`[1j] iii) fibrous glass having a cured, rigid binder matrix
`emerges from the curing oven so as to produce the fiberglass
`insulation product in the form of a batt; and
`
`[1k] compressing the batt for packaging and shipping to a
`thickness of less than about 90% of its end of line thickness,
`
`[1l] wherein curing of the binder consists essentially of a
`Maillard reaction,
`
`[1m] and wherein the cured binder is a formaldehyde-
`free, water resistant, thermoset binder comprising nitrogen-
`containing polymers that attach the glass fibers of the mat
`together.
`
`Ex. 1001, 47:50–48:26; see also Pet. 24–32.
`
`7
`
`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`A.
`
`Claim Construction
`
`II. DISCUSSION
`
`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
`
`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—
`
`“consists essentially of” and “amine reactant.” Pet. 8–13. After considering
`
`the Petition and the Preliminary Response, 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 had a Ph.D. in Chemistry and 3–5 years of
`
`industry experience in binder development for insulating or analogous
`
`products, or be someone with a Bachelor’s 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. 7 (citing
`
`Ex. 1008 ¶ 37).
`
`8
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`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`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 is meant by “analogous products,” and the phrase, “insulating
`
`or analogous products,” is broader than the field of art to which the claimed
`
`method pertains. As Dr. Hirsekorn explains, “[t]he ’207 Patent relates to
`
`fiberglass insulation made using binders (in particular, methods of
`
`manufacturing insulation products using binders).” Ex. 1008 ¶ 39. That
`
`testimony is consistent with the preamble of claim 1 of the ’207 patent,
`
`which recites: “[a] method of making a thermal or acoustical fiberglass
`
`insulation product.” Ex. 1001, 47:50–51.
`
`Accordingly, on this record and consistent with the expert testimony
`
`and the language of the ’207 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. 1008 ¶¶ 37, 39.
`
`C. Overview of Prior Art References
`
`1.
`
`Strauss (Ex. 1003)
`
`Strauss discloses a binder for fibrous glass insulation products.
`
`Ex. 1003, 1:6–15. According to Strauss, fibrous glass insulation
`
`manufacturers have long desired an alternative to phenol-formaldehyde
`
`binders, which are used throughout the fibrous glass insulation industry. Id.
`
`at 1:21–22, 1:52–54. Strauss discloses a non-phenol formaldehyde binder,
`
`9
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`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`which has low viscosity when uncured and structural rigidity when cured, so
`
`as to provide a fibrous glass batt having excellent compression recovery
`
`characteristics. Id. at 1:6-10, 1:66–68; see also id. at 1:41–51 (phenol-
`
`formaldehyde binders are widely used because of these properties); id. at
`
`2:17–23 (disclosed binder behaves similarly to well-known phenol-
`
`formaldehyde binders). The disclosed binder is an aqueous solution of a
`
`polycarboxy polymer, a monomeric trihydric alcohol crosslinking agent, and
`
`a catalyst. Id. at [57], 2:3–19.
`
`Petitioner relies on Strauss’s disclosure of fiberglass insulation
`
`manufacturing procedures. In this regard, Strauss discloses:
`
`In operation, the inventive binder is applied to glass
`fibers as they are being produced and formed into a mat, water
`is volatilized from the binder, and the high-solids binder-coated
`fibrous glass mat is heated to cure the binder and thereby
`produce a finished fibrous glass bat which may be used as a
`thermal or acoustical insulation product, a reinforcement for a
`subsequently produced composite, etc.
`
`It is generally well-known in the art to produce a porous
`mat of fibrous glass by fiberizing molten glass and immediately
`forming a fibrous glass mat on a moving conveyor. Glass is
`melted in a tank and supplied to a fiber forming device such as
`a spinner or a bushing. Fibers of glass are attenuated from the
`device and are blown generally downwardly within a forming
`chamber. . . . The glass fibers are deposited onto a perforated,
`endless forming conveyor. The binder is applied to the glass
`fibers as they are being formed by means of suitable spray
`applicators so as to result in a distribution of the binder
`throughout the formed mat of fibrous glass. The glass fibers,
`having the uncured resinous binder adhered thereto, are
`gathered and formed into a mat on the endless conveyor within
`the forming chamber with the aid of a vacuum drawn through
`the mat from below the forming conveyor. The residual heat
`contained in the glass fibers as well as the air flow through the
`
`10
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`

`

`IPR2018-00863
`Patent 9,464,207 B2
`
`
`mat causes a majority of the water to volatilize from the mat
`before it exits the forming chamber.
`
`As the high-solids resin-coated fibrous glass mat emerges
`from the forming chamber, it expands vertically due to the
`resiliency of the glass fibers. The expanded mat is then
`conveyed to and through a curing oven wherein heated air is
`passed through the mat to cure the resin. Flights above and
`below the mat slightly compress the mat to give the finished
`product a predetermined thickness and surface finish. . . . The
`fibrous glass having a cured, rigid binder matrix emerges from
`the oven in the form of a bat which may be compressed for
`packaging and shipping and which will thereafter substantially
`fully recover its as-made vertical dimension when
`unconstrained.
`
`Ex. 1003, 3:59–4:43; see also id. at 1:13–40 (describing process for
`
`manufacturing fibrous glass insulation using phenol-formaldehyde binder).
`
`2.
`
`Tutin (Ex. 1004)
`
`Tutin discloses a polyester-type formaldehyde free binder for making
`
`fiberglass insulation. Ex. 1004, at (57), ¶ 2. Tutin characterizes phenol-
`
`formaldehyde (PF) resins and PF resins extended with urea (PFU resins) as
`
`“the mainstays of fiberglass insulation binder technology.” Id. ¶ 3.
`
`According to Tutin, these resins have a drawback of formaldehyde emissions
`
`during manufacturing of fiberglass insulation. Id. ¶ 4. Tutin identifies a
`
`need for formaldehyde-free curable aqueous compositions that have
`
`viscosity, dilutability, and a cure time/cure temperature profile similar to PF
`
`and PFU resins and that yield a cured fiberglass insulation product with
`
`equivalent physical properties. Id. ¶¶ 5, 15.
`
`Tutin discloses a polyester binder composition and a method of its use
`
`for making glass fiber insulation products. Ex. 1004 ¶ 16. More
`
`particularly, Tutin discloses an aqueous polyester binder composition
`
`11
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`

`IPR2018-00863
`Patent 9,464,207 B2
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`containing a substantially infinitely water-dilutable or water-dispersible
`
`thermosetting adduct of a monomeric polycarboxylic acid component
`
`(polybasic acid) and a monomeric polyol component. Id. Tutin’s binder is
`
`applied as a dilute aqueous solution to a mat of glass fibers and cured by
`
`heat. Id. ¶ 17.
`
`3. Worthington (Ex. 1005)
`
`Worthington discloses thermosetting compositions for use as binders
`
`in the making of shell moulds 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. 1005, 1:29–35.
`
`Worthington’s objective is to provide a substitute for phenolic resins and
`
`other binders conventionally used in the shell mould 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 a 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.
`
`Ex. 1005, 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 moulded products or of shell moulds or cores. Ex. 1005,
`
`3:55–58. Worthington identifies advantages of the disclosed binders over
`
`12
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`

`IPR2018-00863
`Patent 9,464,207 B2
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`phenol-formaldehyde resins and other materials previously used in the art.
`
`Id. at 7:12–24.
`
`4.
`
`Gogek (Ex. 1006)
`
`Gogek relates to moisture resistant refractory blocks having high
`
`hardness for use in insulating furnaces. Ex. 1006, 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:
`
`
`
`Ex. 1006, 2:10–18. 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.
`
`13
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`

`IPR2018-00863
`Patent 9,464,207 B2
`
`D.
`
`Petitioner’s Ground 1: Strauss, Tutin, and Worthington
`
`Petitioner contends that Strauss and/or Tutin teach the fiberglass
`
`insulation manufacturing process limitations of independent claim 1, i.e.,
`
`limitations 1p1, 1p2, 1a, 1b, and 1f–1k, and that Worthington teaches the
`
`binder composition, i.e., limitations 1c, 1d, 1e, 1l, and 1m. Pet. 24–33, 57.
`
`Petitioner relies on Strauss and/or Tutin to teach the additional limitations of
`
`dependent claims 12, 14, 16, 17, 19, 44, 57–61, 69, and 70; Worthington to
`
`teach the additional limitations of dependent claims 2, 3, 5, 6, 8–10, 20–23,
`
`30–32, 46–54, 56, 68, and 71; and a combination of these references to teach
`
`the additional limitations of dependent claims 45, 66, and 67. Id. at 33–52.
`
`Petitioner contends that a skilled artisan would have had several reasons to
`
`combine the teachings of Strauss, Tutin, and Worthington. Id. at 21–23.
`
`Patent Owner argues that Petitioner does not point to any prior art
`
`example of Maillard-based binders for fiberglass insulation (Prelim.
`
`Resp. 14–18), that Petitioner does not identify the differences between the
`
`prior art and the challenged claims (id. at 23–28), and that Petitioner does
`
`not provide a valid rationale to combine Strauss, Tutin, and Worthington (id.
`
`at 28–32).
`
`After considering the Petition, the Preliminary Response, and the
`
`record as it stands as a whole, we determine Petitioner has not shown a
`
`reasonable likelihood of prevailing on its contention that the challenged
`
`claims are unpatentable as obvious in view of Strauss, Tutin, and
`
`Worthington. Our reasoning is two-fold. First, Petitioner’s contentions
`
`regarding Worthington are not adequately supported by the disclosure of that
`
`reference. Second, Petitioner’s arguments and evidence are not sufficient to
`
`establish that a skilled artisan would have had reason to combine the
`
`14
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`

`IPR2018-00863
`Patent 9,464,207 B2
`
`teachings of Strauss, Tutin, and Worthington to achieve the claimed
`
`invention. We address each of these deficiencies below:
`
`1.
`
`Deficiencies in Worthington
`
`Petitioner contends that Worthington’s binder composition “includes
`
`water and is thus an aqueous binder solution.” Pet. 21 (citing Ex. 1005,
`
`3:11–16, 5:14–31; Ex. 1008 ¶ 92). Petitioner additionally contends that
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`“Worthington describes the use of an aqueous binder solution comprising an
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`amine reactant and a carbohydrate reactant.” Id. at 26 (citing Ex. 1008
`
`¶ 103). We find that Petitioner’s contentions are not adequately supported
`
`by Worthington.
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`Worthington teaches a binder composition in powdered form, not an
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`aqueous binder solution, as claimed. More particularly, Worthington
`
`teaches that the constituents of the binder composition should be in
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`“powdered form” and that any liquid constituents should be used in small
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`amounts and dispersed among and absorbed by the powders. Ex. 1005,
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`2:62–3:3; see also id. at 4:19–27, 4:59–13 (disclosing method of mixing
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`powdered binder composition with granular refractory material).
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`Petitioner directs us to passages in columns 3 and 5 of Worthington as
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`support for its contention that Worthington teaches an aqueous binder
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`solution. Pet. 21. Petitioner’s first cited passage discloses:
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`The presence of water in the composition materially
`alters the course of the resinification reaction so the ingredients
`of the composition are preferably anhydrous. If the water
`content of the composition is not carefully controlled variable
`products may be obtained.
`
`Ex. 1005, 3:11–16. The foregoing passage teaches that water has deleterious
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`effects on the formation of a resin and, therefore, the binder composition is
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`IPR2018-00863
`Patent 9,464,207 B2
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`“preferably anhydrous” and any water content must be “carefully
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`controlled.” Id. The first cited passage thus fails to teach an aqueous binder
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`solution.
`
`The second passage cited by Petitioner discloses:
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`The whole or a part of the amine constituent and a part of
`the carboxylic acid constituent of the binder is advantageously
`added to the remainder of the constituents, after they have been
`mixed with the refractory material, in the form of an aqueous
`solution of a water soluble precondensate of the carboxylic acid
`and the amine. The precondensate may be made by dissolving
`60 to 90 parts by weight of the carboxylic acid, preferably a
`tannin, and 40 to 10 parts by weight of the amine, preferably
`melamine or dicyandiamide or a mixture thereof in water and
`distilling off sufficient of the water to leave a solution in which
`the concentration of the precondensate is within the range of 40
`to 60% by weight, calculated on the solution. If desired, the
`solution may be refluxed for a period to complete the reaction
`prior to distilling off some of the water. When a precondensate
`is added to the binder the proportion added is generally about
`half a pint of solution to each 1 cwt. of sand.
`
`Ex. 1005, 5:14–31.
`
`The foregoing passage also fails to teach an aqueous binder solution,
`
`as claimed, for two reasons. First, this passage teaches that two of the binder
`
`constituents—the carboxylic acid and the amine—may be added “in the
`
`form of an aqueous solution of a water soluble precondensate of the
`
`carboxylic acid and the amine.” Id. at 5:14–20; see also id. at 1:53–65
`
`(describing thermosetting composition). The cited passage teaches an
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`aqueous solution, but the solution does not contain a reducing sugar or a
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`reducing sugar precursor, as required by claim 1 of the ’207 patent.
`
`Ex. 1001, 47:61–48:2. Instead, Worthington’s aqueous solution contains
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`only two of the binder constituents—the carboxylic acid and the amine. Id.
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`IPR2018-00863
`Patent 9,464,207 B2
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`at 5:14–27. Although Worthington discloses a thermosetting composition
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`comprising a carbohydrate (id. at 1:53–55), which may be a mono- or
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`disaccharide (id. at 2:5–6), the carbohydrate is in powdered form (id. at
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`2:59), not an aqueous solution. Accordingly, Worthington does not disclose
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`an aqueous binder solution comprising a carbohydrate reactant selected from
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`a reducing sugar, a carbohydrate reactant that yields a reducing sugar in situ,
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`and combinations thereof, as recited in claim 1. Ex. 1001, 47:61–48:2.
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`Second, the cited passage of Worthington teaches adding the aqueous
`
`solution of water soluble precondensate “to the remainder of the
`
`constituents, after they have been mixed with the refractory material.”
`
`Ex. 1005, 5:16–18. Worthington further teaches that, “[w]hen a
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`precondensate is added to the binder[,] the proportion added is generally
`
`about half a pint of solution to each 1 cwt. of sand.” Id. at 5:29–31.
`
`Worthington does not, however, disclose or suggest that the addition of an
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`aqueous solution of water soluble precondensate to the remainder of the
`
`constituents and refractory material results in an aqueous binder solution, as
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`recited in claim 1 of the ’207 patent.
`
`On the contrary, Worthington teaches that the aqueous solution of
`
`water soluble precondensate is added “to the remainder of the constituents,
`
`after they have been mixed with the refractory material,” where the
`
`proportion of these constituents is “generally about half a pint of solution to
`
`each 1 cwt. of sand.” Id. at 5:16–18, 5:29–31. In other words, Worthington
`
`teaches that the aqueous solution is added to a mixture of refractory material,
`
`e.g., sand, and the remaining binder constituents, i.e., the carbohydrate and
`
`mineral acid or salt (id. at 1:53–65, 4:48–73). According to Worthington,
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`these binder constituents are in “powdered form.” Id. at 2:62–64; see also
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`IPR2018-00863
`Patent 9,464,207 B2
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`id.at 5:6–8 (“powdered binder is uniformly distributed throughout the
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`granular refractory material”).10 Petitioner has not shown that adding a half
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`pint of aqueous solution to a “cwt.,” i.e., a hundredweight (100 pounds), of
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`sand containing 2–10 pounds of carbohydrate and other powdered binder
`
`ingredients, as taught by Worthington (id. at 5:10–31), would result in an
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`aqueous solution containing a carbohydrate, as recited in claim 1 of the ’207
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`patent. Petitioner’s second cited passage thus fails to teach an aqueous
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`binder solution, as claimed.
`
`The cited paragraphs of the Hirsekorn Declaration (Ex. 1008 ¶¶ 92,
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`103) are substantially the same as the Petition (Pet. 21, 26–27) and not
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`sufficient to remedy the deficiencies in Petitioner’s contentions regarding
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`Worthington, as discussed above.
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`2.
`
`Deficiencies in Reasons to Combine
`
`Petitioner contends that a skilled artisan would have had several
`
`reasons to combine the teachings of Strauss, Tutin, and Worthington.
`
`Pet. 21–23 (citing Ex. 1008 ¶¶ 93–97).
`
`
`
`10 See also Ex. 1005, 4:19–23 (“the powdered composition must be mixed
`with a granular refractory material such as silica sand”); id. at 4:24–27
`(“mixing together the refractory materials and powdered compositions”); id.
`at 4:59–61 (step (1) is “[m]ixing together the powdered carbohydrate, the
`amine, the organic acid and the inorganic acid, or salt liberating such acid on
`heating”); id. at 4:74–5:6 (“previously mixed powdered composition is
`added” to refractory material); id. at 5:10–13 (“powdered constituent [is]
`added to . . . the granular refractory material”); id. at 7:11–23 (advantages
`over prior art binders include: “the ingredients are relatively cheap and are
`commercially available in powdered form” and “the powdered composition
`is clean and non-sticky”).
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`Patent 9,464,207 B2
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`First, Petitioner argues that Worthington is analogous prior art to
`
`the ʼ445 patent (the grandparent of the ʼ207 patent), relevant to the
`
`manufacture of fiberglass products, and compatible with fiberglass product
`
`references such as Strauss and Tutin. Pet. 21–22 (citing the Board’s
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`decision regarding the ’445 patent). 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 a POSITA 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. Glob. Tel*Link Corp., 701 F.
`
`App’x 971, 977 (Fed. Cir. July 14, 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, 994 (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”).
`
`Petitioner’s argument also lacks factual support in the record.
`
`Petitioner relies on Strauss and Tutin to teach fiberglass insulation
`
`manufacturing process steps, including “spraying an uncured aqueous binder
`
`solution onto a mat of glass fibers.” Ex. 1001, 47:56–57; Pet. 25. As
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`discussed in the preceding section, however, Wort