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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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS PRELIMINARY
`RESPONSE
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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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`PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS PRELIMINARY
`RESPONSE
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`I. To Avoid § 325(d), Petitioner Must Show That, Unlike Russell, Selvig
`Provides a Motivation and a Reasonable Expectation of Success for
`Dispersing Amylase in “Non-Aqueous Organic Solvent-Borne” Polymers.
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`Challenged claims 1-5 describe protein-polymer materials in which one or
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`more amylases are “dispersed in a two[-]component non-aqueous organic solvent-
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`borne polymer resin.” Patent Owner argued in its Preliminary Response that
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`Ground 1A (McDaniel in view of Selvig) is indistinguishable from the prior art
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`rejected during prosecution (Russell) in one crucial respect, specifically in its
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`failure to establish a motivation and a reasonable expectation of success for
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`dispersing amylase in “non-aqueous organic solvent-borne” polymers. Petitioner
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`now suggests that Ground 1A is “materially distinguishable” from Russell simply
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`because Russell used amylase in “water-borne” systems, while Selvig1 uses
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`amylase in materials that contain no aqueous solvent. (Reply at 3-5.) However,
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`what matters is not whether Selvig uses an aqueous solvent (like Russell) or no
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`aqueous solvent, but whether Selvig cures the deficiency of Russell and provides a
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`motivation and a reasonable expectation of success for dispersing amylase in
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`organic solvent-borne polymers, as claimed. As discussed below, it does not.
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`1 Petitioner concedes that McDaniel does not disclose amylase. (Pet. at 37.)
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`Petitioner relies on McDaniel for the other limitations of claims 1-5. McDaniel’s
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`failure to teach or suggest those limitations is an independent reason for denying
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`Ground 1A, separate and apart from the § 325(d) issue. (See PO Resp. at 16-25.)
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`1
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`During prosecution, the applicants successfully argued to a panel of
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`reviewers that the obviousness rejection over Russell should be withdrawn because
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`Russell lacked any teaching or suggestion for incorporating amylase into an
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`organic solvent-borne polymer. (Ex. 1012 at 1, 3-5.) In Russell’s particular case,
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`the proteins were incorporated in water-borne rather than organic solvent-borne
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`materials. (Ibid.) While Selvig’s materials are not water-borne (see Reply at 4),
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`Petitioner has still not shown that Selvig teaches organic solvent-borne
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`formulations, as discussed below. Nor has Petitioner explained why a reference
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`teaching the use of amylase in a solvent-free system (i.e., a system with no aqueous
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`or organic solvent) is any stronger than one teaching the use of amylase in a water-
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`borne system (i.e., a system with an aqueous, but no organic, solvent), where the
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`relevant issue is the existence of a motivation and a reasonable expectation of
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`success for dispersing amylase in organic solvent-borne polymers. Therefore, the
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`fact that Selvig’s materials are not water-borne cannot help Selvig overcome the
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`key deficiency identified in Russell during prosecution, namely the absence of any
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`teaching directed to the use of amylase in organic solvent-borne polymers.
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`II. Petitioner Has Not Shown That Selvig Teaches the Use of Amylase in
`“Non-Aqueous Organic Solvent-Borne” Polymers.
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`Petitioner also suggests that Selvig materially differs from Russell because,
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`unlike Russell, it teaches the use of amylase in organic solvent-borne materials.
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`(Reply at 1-3.) However, the record fails to support this suggestion.
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`2
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`In the portions of Selvig relied upon by Petitioner, amylase is mixed with
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`two different resin formulations: “Bondo” and “Devcon’s 5 Minute Epoxy.” (See
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`PO Resp. at 10-11.) The Safety Data Sheet for Bondo states that this material
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`consists of a polyester polymer, a styrene monomer, and silica. (Ex. 2003 at 3.)
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`Citing McDaniel, Petitioner suggests that a styrene monomer is an organic solvent.
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`(Reply at 2.) Petitioner misstates McDaniel’s teaching because at most, McDaniel
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`teaches only that an aromatic hydrocarbon like styrene can function as a solvent.
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`However, it also explicitly recognizes that the ability of a liquid component to act
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`as a solvent depends on several factors, including “the intermolecular interactions
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`between the solvent molecules, between the potential solute molecules, between
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`the solvent and the potential solute, as well as the molecular size of the potential
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`solute.” (Ex. 1004, ¶ 565; see also id., ¶ 561.) McDaniel specifically identifies
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`hydrocarbons as liquid components that may or may not function as a solvent
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`depending on these factors. (Id., ¶ 567.) Indeed, McDaniel notes that because
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`there are “exceptions to the ability of certain liquid components and potential
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`solute coating components to form solutions,” there is a need to “empirically
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`determin[e] the ability of a solute to dissolve in a solvent.” (Ibid.)
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`Petitioner has not offered even a threshold amount of evidence, much less
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`“empirical[]” proof, showing that the styrene monomer in Bondo functions as a
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`solvent. Notably, Petitioner identifies no disclosure in McDaniel that suggests that
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`3
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`styrene monomers are used as solvents in formulations that (like Bondo) include a
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`polyester polymer as the binder. Thus, Petitioner’s suggestion that Bondo
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`comprises a non-aqueous organic solvent-borne polymer is pure speculation.
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`Regarding Devcon’s 5 Minute Epoxy, the Technical Data Sheet (“TDS”)
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`explicitly states that it contains “no solvents.” (Ex. 2002 at 1.) Petitioner suggests
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`that because the components are said to have “a ‘mixed viscosity’(i.e., are liquid)”
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`before curing, the formulation could include a “solvent.” (See Reply at 2-3.)
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`However, Petitioner does not actually argue that 5 Minute Epoxy must include a
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`solvent as opposed to some other liquid component. In any event, the issue is not
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`whether this formulation includes a solvent or another liquid component, but
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`whether it includes specifically a non-aqueous organic solvent. The TDS is clear
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`that 5 Minute Epoxy contains “no solvents.” Crucially, there is no dispute that this
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`statement necessarily excludes the use of organic solvents, even if it arguably
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`could be read to not exclude some other type of liquid component.
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`In sum, the teachings of Selvig relied upon by Petitioner provide no
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`motivation or a reasonable expectation of success for dispersing amylase in non-
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`aqueous organic solvent-borne polymers.
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`III. The Board Should Reject Ground 1A Under § 325(d).
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`The Becton Dickinson factors strongly favor rejecting Ground 1A. See
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`Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at
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`4
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`17-18 (P.T.A.B. Dec. 15, 2017) (informative). For the reasons stated above,
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`Petitioner has not shown that Ground 1A is materially different from the prior art
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`and arguments previously considered by the Office. See ibid. (considering “the
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`similarities and material differences between the asserted art and the prior art
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`involved during examination” and “the extent of the overlap between the
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`arguments made during examination and the manner in which Petitioner relies on
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`the prior art or Patent Owner distinguishes the prior art”). Rather, the prior art
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`asserted in Ground 1A, particularly Selvig, is cumulative of the prior art (Russell)
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`already cited and extensively considered by the Office during prosecution,
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`including by a panel of reviewers. See ibid. (considering “the cumulative nature of
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`the asserted art and the prior art evaluated during examination” and “the extent to
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`which the asserted art was evaluated during examination, including whether the
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`prior art was the basis for rejection”). Furthermore, Petitioner has not even argued
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`that the Office erred in allowing claims 1-5 over Russell. See ibid. (considering
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`“whether Petitioner has pointed out sufficiently how the Examiner erred in its
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`evaluation of the asserted prior art”). Nor did it offer additional evidence (e.g.,
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`expert testimony) tending to distinguish Selvig from Russell and/or explain why
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`Selvig is a stronger reference. See ibid. (considering “the extent to which
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`additional evidence and facts presented in the Petition warrant reconsideration of
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`the prior art or arguments”). Thus, Ground 1A should be denied under § 325(d).
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`5
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`Dated: October 19, 2018
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owner
`Toyota Motor Corporation
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`6
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing PATENT
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`OWNER’S SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE
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`was served on October 19, 2018 by email on the following counsel of record for
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`Petitioner:
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`David O. Simmons (dsimmons@ivcpatentagency.com)
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`Jonathan D. Hurt (jhurt@technologylitigators.com)
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`Dated: October 19, 2018
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` /s/ Joshua A. Lorentz
`Joshua A. Lorentz
`Reg. No. 52,406
`Attorney for Patent Owner
`Toyota Motor Corporation
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