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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD., LLP
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`Petitioner
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`v.
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`TOYOTA MOTOR CORPORATION
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`Patent Owner
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`Case: IPR2018-01194
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`Patent No. 9,193,873 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
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`INTRODUCTION
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`Petitioner respectfully submits this Reply to Patent Owner’s Preliminary
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`Response (Paper 7 – “POPR”). Patent Owner’s argument under 35 U.S.C. § 325(d)
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`is belied by evidence of record and contrary to Patent Owner’s own representations
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`to the Office during prosecution of the’873 Patent. This Reply demonstrates that
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`Ground 1A in the petition for this inter partes review does not set forth “… the same
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`or substantially the same prior art or arguments previously … presented to the
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`Office.” 35 U.S.C. § 325(d). As explained below, all the relevant Becton Dickinson
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`factors favor institution. See Trial Practice Guide Update (August 2018) at 12
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`(listing factors). Accordingly, the Board should decline Patent Owner’s request to
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`deny institution of Ground 1A on the basis U.S.C. § 325(d).
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`I. Section 325(d) Argument is Contradicted by Evidence of Record
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`A. Selvig Does Not Teach an “Organic Solvent-Free” Polymer Resin
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`In an attempt to construct a basis for its § 325(d) argument, Patent Owner
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`seeks to create overlap between the prior art and arguments previously presented to
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`the Office during prosecution and that of Ground 1A. POPR at 25-26. To this end,
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`Patent Owner asserts that the relevant materials of Selvig “contain no organic
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`solvents” and are “organic solvent-free resin formulations.” POPR at 26, 29. Patent
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`Owner proffers two datasheets as purported evidence of this alleged fact. POPR at
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`10 (citing Ex. 2003 (“Bondo”) and Ex. 2002 (“Devcon’s 5 Minute Epoxy”)). Neither
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`proves Patent Owner’s point.
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`1
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`The Bondo datasheet shows “Polyester Polymer” and “Styrene Monomer” as
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`ingredients and designates the styrene monomer as corresponding to C.A.S. No. 100-
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`42-5. Ex. 2003, 3. McDaniel discloses “[a]n aromatic hydrocarbon typically
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`possesses a greater solvency property … aromatic hydrocarbon include … styrene
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`(CAS No. 100-42 5).” Ex. 1004, ¶0581; see also ¶¶0560-0569. In the context of a
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`“solvent-borne coating,” McDaniel discloses that a liquid component thereof can
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`comprise a “solvent, thinner, diluent” and that the liquid component can comprise a
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`“liquid organic compound” and that the liquid organic compound can be an aromatic
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`hydrocarbon (i.e., a solvent) that comprises “styrene.” Ex. 1004, ¶¶0051, 0069,
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`0488; 0071; see also Ex. 1025, 10:54-55. Thus, Bondo includes a mixture
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`comprising a non-aqueous organic solvent (styrene monomer) and a polymer resin
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`(polyester polymer).1
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`Likewise, Patent Owner’s assertion that Devcon’s 5 Minute Epoxy
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`(“Devcon”) contains no solvent is similarly contradicted by its own datasheet.
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`Patent Owner misconstrues the datasheet statement of “no solvent’ as relating to the
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`unmixed separate material of the epoxy including no solvent. In the context of “no
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`solvent,” however, the Devcon datasheet clearly states that the materials forming the
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`1 Through use of such material, Selvig discloses “direct dispersion” of alpha-
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`amylase. Ex. 1005, 12:7-32.
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`2
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`epoxy are “100% reactive” and in a “cured” state are “100% solids by volume,” but
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`when uncured have a “mixed viscosity” (i.e., are liquid). Ex. 2002, 1. Neither Patent
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`Owner nor its expert have come forward with evidence that the uncured constituent
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`materials forming Devcon’s Epoxy includes no solvent.
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`For these reasons, Selvig’s Bondo and Devcon Epoxy do not support a finding
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`that the Board should reject Ground 1A under § 325(d).
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`B. Ground 1A Prior Art and Arguments are Materially Distinguishable
`from the Prior Art and Arguments Already Considered by the Office
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`Patent Owner incorrectly asserts that “Ground 1A raises prior art and
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`arguments that are materially indistinguishable from those already considered by the
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`Office.” POPR at 29 (caps omitted). During prosecution, Patent Owner overcame
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`obviousness rejections by arguing that Russell teaches “materials that are water-
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`borne” and that “water-borne systems are ideal for immobilization of enzymes,
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`which would lead one away from solvent-borne systems.” Ex. 1010, 5-6. In
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`contrast, Patent Owner has made no assertion that the relied upon disclosures of
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`McDaniel or Selvig – neither of which was considered by the Examiner during
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`prosecution (See Petition at 20) – are directed to waterborne systems or resins.2 In
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`fact, contrary to the proffered datasheets, Patent Owner has based its § 325(d)
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`2 Selvig teaches away from use of water-borne polymer systems and resins (e.g.,
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`“Free water interferes with the solidification …”). Ex. 1005, 9:54-60; 7:19-21.
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`3
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`argument on the erroneous premise that both the Bondo and Devcon Epoxy materials
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`disclosed in Selvig contain “no solvent.” See POPR at 10. As explained above, the
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`relied upon portions of McDaniel and Selvig are directed to non-aqueous organic
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`solvent-borne polymer systems and resins thereof.3 Further, the Bondo datasheet
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`does not list water as an ingredient and states this material’s “Solubility in Water”
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`to be “Negligible,” and the Devcon datasheet makes no mention of water as a
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`component of Devcon’s Epoxy. Ex. 2003, 3, 6; Ex. 2002, 1-2. Selvig teaches
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`dispersion of amylase in non-aqueous organic solvent-borne polymer systems and
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`resins thereof. Ex. 1005, 10:18-20 (“In each case the liquid enzymes proved
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`amenable to use in the epoxy resin formulation.”).
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`This consideration alone demonstrates that Ground 1A raises prior art and
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`arguments that are materially distinguishable from those already considered by the
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`Office – which were prior art and arguments directed to water-borne systems and
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`water-borne polymer resins, not non-aqueous organic solvent-borne polymer resins.
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`3 Non-aqueous organic solvent-born polymer resin (“NOSPR”) is not defined in the
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`’873 Patent specification and the scope of such term was not clarified during
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`prosecution in rebutting indefiniteness rejections (See Petition at 16-19; see also Ex.
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`1012, 4 (“solvent-borne resins are known” sets forth scope of NOSPR being a
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`polymer resin itself – e.g., “hydroxyl-functionalized acrylate resin” )).
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`4
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`C. Patent Owner Misconstrues Scope of Original Prosecution
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`During prosecution Patent Owner characterized the prior art cited by the
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`Office as directed to “water-borne systems, not solvent-borne systems.” Ex. 1010,
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`6. For example, Patent Owner stated that “Russell is submitted to motivate one of
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`ordinary skill in the art to use water-borne systems instead of solvent-borne
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`systems.” Ex. 1010, 7. Indeed, Patent Owner’s rebuttal during prosecution was
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`limited to distinguishing over water-borne systems and never even touched upon the
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`subject of “organic solvent-free” materials or systems.
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`Thus, Ground 1A is materially different than the prior art of record and is not
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`cumulative of the art considered, whereby there is no overlap between Ground 1A
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`and the prosecution.
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`Conclusion
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`Patent Owner’s §325(b) argument is predicated on a mischaracterization of
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`the prior art and prosecution history. Moreover, Ground 1A does not set forth “the
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`same or substantially the same prior art or arguments previously … presented to the
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`Office.” Therefore, the Board should decline Patent Owner’s request to deny
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`institution of Ground 1A on the basis U.S.C. § 325(d).
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`Dated: October 5, 2018
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`/s/ David O. Simmons
`David O. Simmons, Reg. No. 43,124
`Email: dsimmons@ivcpatentagency.com
`Counsel for Petitioner, Reactive Surfaces Ltd., LLP
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`5
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) and 42.105(b), the undersigned hereby
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`certifies that a copy of this PETITIONER’S REPLY TO PATENT OWNER’S
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`PRELIMINARY RESPONSE for inter partes review of U.S. Patent No. 9,193,873
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`was served on October 5, 2018 by email on the following counsel of record for Patent
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`Owner:
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`Joshua A. Lorenz (joshua.lorentz@dinsmore.com)
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`Richard H. Schabowsky (richard.schabowsky@dinsmore.com)
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`John D. Luken (john.luken@dinsmore.com)
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`Oleg Khariton (oleg.khariton@dinsmore.com)
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`/s/ David O. Simmons
`David O. Simmons, Reg. No. 43,124
`Email: dsimmons@ivcpatentagency.com
`Counsel for Petitioner, Reactive Surfaces Ltd., LLP
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`6
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