Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 11
`
`Entered: December 10, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01194
`Patent 9,193,873 B2
`____________
`
`
`Before SUSAN L.C. MITCHELL, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 11
`
`Entered: December 10, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-01194
`Patent 9,193,873 B2
`____________
`
`
`Before SUSAN L.C. MITCHELL, CHRISTOPHER M. KAISER, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`
`IPR2018-01194
`Patent 9,193,873 B2
`
` INTRODUCTION
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1–5 of U.S. Patent 9,193,873 B2 (the “’873
`patent”). Paper 2 (“Pet.”). Toyota Motor Corporation (“Patent Owner”)1
`filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”).
`We have authority under 35 U.S.C. § 314(a) to determine whether to
`institute an inter partes review. To institute an inter partes review, we must
`determine that the information presented in the Petition shows “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). On April 24, 2018,
`the Supreme Court held that a decision to institute under 35 U.S.C. § 314(b)
`may not institute review on less than all claims challenged in the petition.
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Also, in
`accordance with USPTO Guidance, “if the PTAB institutes a trial, the PTAB
`will institute on all challenges raised in the petition.” See Guidance on the
`Impact of SAS on AIA Trial Proceedings (April 26, 2018) (available at
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial).
`Applying those standards, and upon consideration of the information
`presented in the Petition and the Preliminary Response, we conclude that
`Petitioner has not established a reasonable likelihood that it would prevail in
`showing the unpatentability of any challenged claim of the ’873 patent.
`Therefore, we do not institute an inter partes review of claims 1–5 of the
`’873 patent.
`
`
`1 Patent Owner identifies the Regents of the University of Minnesota as a
`co-assignee of the subject patent. See Paper 6, 1.
`2
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`Patent 9,193,873 B2
`
`
`Related Proceedings
`Patent Owner identifies a declaratory judgment action filed by
`Petitioner against Patent Owner in district court concerning a declaration of
`rights with respect to the application that resulted in the ’873 patent. See
`Paper 6, 2 (citing Reactive Surfaces Ltd. LLP v. Toyota Motor Corporation,
`Case No. 1:14-CV-1009-LY (W.D. Tex.)). Patent Owner states that the
`complaint was dismissed without prejudice. Id. Petitioner identifies a
`second case that it filed against Patent Owner also seeking declaratory
`judgment with regard to certain rights in the ’873 patent: Reactive Surfaces
`Ltd. LLP v. Toyota Motor Corporation, Case No. 1:13-CV-1098-LY (W.D.
`Tex.). Pet. 2.
`Patent Owner also identifies three other petitions for inter partes
`reviews that Petitioner has filed concerning other patents owned or co-
`owned by Patent Owner: IPR2016-01462 (U.S. Patent No. 8,324,295 B2);
`IPR2016-01914 (U.S. Patent No. 8,394,618 B2); and IPR2017-00572 (U.S.
`Patent No. 8,252,571 B2), which Petitioner states the Board instituted.
`Paper 6, 2; Pet. 2.
`
`
`The ’873 Patent (Ex. 1001)
`The ’873 patent describes a protein-polymer composite material for
`removing bioorganic stains from a surface produced by mixing an aqueous
`solution containing bioactive proteins, such as amylases, with an admixture
`of a polymer resin, a surfactant, and a non-aqueous organic solvent.
`Ex. 1001, Abst., 1:33–56. The resulting emulsion from such a mixture is
`then mixed with a crosslinker producing a curable composition that, when
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`Patent 9,193,873 B2
`cured, produces a protein-polymer composite material that is useful for
`facilitating removal of bioorganic stains. Id.
`Figure 1B of the ’873 patent, shown below, illustrates a flow diagram
`of a process to manufacture a bioactive material according to an embodiment
`of the claimed invention.
`
`Figure 1B depicted above shows the creation of an emulsion with a
`
`bioactive protein to which a crosslinker is added, and the resulting mixture is
`
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`IPR2018-01194
`Patent 9,193,873 B2
`then cured to make the protein-polymer composite. See Ex. 1001, 9:48–56.
`The Specification of the ’873 patent further states:
`
`Curable protein-polymer compositions according to
`embodiments of the present invention include two-component
`solvent-borne (2K SB) compositions optionally where the two
`components are mixed shortly before use, for instance,
`application of the curable protein-polymer composition to a
`substrate to form a bioactive coating such as a bioactive clear
`coat. Generally described, the first component contains a
`crosslinkable polymer resin and the second component contains
`a crosslinker. Thus for example, referring to FIG. 1B, the
`emulsion 75 is a first component containing a crosslinkable
`resin and the crosslinker 80 is a second component, mixed
`together to produce the curable protein-polymer composition.
`Id. at 10:4–16.
`The Specification of the ’873 patent defines a “bioorganic stain” as “a
`stain mark, or residue left behind after an organic material contacts a
`surface.” Id. at 3:38–40. Some examples include food, such as starch
`containing foods; insect wings, legs, or other appendages; bird droppings;
`and fingerprints. Id. at 3:40–50.
`The Specification of the ’873 patent describes the active agent as one
`or more amylases or analogues thereof that can aid in removal of one or
`more starches. Id. at 3:50–54. Specifically, it is disclosed that:
`It was unexpectedly discovered that amylases are
`superior proteins for incorporation into protein-polymer
`materials. Amylases are both stable in polymeric materials and
`show unexpectedly high activity toward particular bioorganic
`stains such as stains from foods. More surprisingly, amylases
`show significant heat and time stability when incorporated into
`2K solvent borne (SB) coatings as compared to other coating
`types such as water borne (WB) coatings. This unexpectedly
`high stability is particularly observed in 2K solvent-borne
`polyurethane coatings.
`Id. at 3:55–64.
`
`5
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`Patent 9,193,873 B2
`
`
`Illustrative Claim
`Petitioner challenges claims 1–5 of the ’873 patent. Claim 1 is
`illustrative and reproduced below:
`1. A protein-polymer composite material, comprising:
`one or more amylases dispersed in a two component non-
`aqueous organic solvent-borne polymer resin, said amylase in
`the form of a particle with an average particle size, wherein said
`average particle size in the protein-polymer composite material
`is in the range of 10 μm (average diameter) or less.
`Ex. 1001, 20:8–14.
`
`Claim 1 is the only independent claim, and claims 2–5 directly depend
`from claim 1. Id. at 20:15–22.
`
`
`The Asserted Grounds of Unpatentability
`Petitioner contends that the challenged claims are unpatentable under
`35 U.S.C. §§ 102 and 103 based on the following grounds. Pet. 31.
`Reference[s]
`Basis
`Claims challenged
`McDaniel2 and Selvig3
`§ 103
`1–5
`
`Schneider4
`
` § 102(b)
`
`Schneider and Adams5
`
`§ 103
`
`1, 4, 5
`
`2, 3
`
`
`2 C. Steven McDaniel, US 2004/0109853 A1, published June 10, 2004
`(“McDaniel”). Ex. 1004.
`3 Thomas Allan Selvig, Richard Irwin Leavitt, Warren Paul Powers,
`U.S. Patent No. 5,919,689, issued July 6, 1999 (“Selvig”). Ex. 1005.
`4 Ib Schneider and Knud Allermann, US 2005/0147579 A1, published July
`7, 2005 (“Schneider”). Ex. 1006.
`5 Jerome T. Adams et al., US 2007/0282070 A1, published Dec. 6, 2007
`(“Adams”). Ex. 1007.
`
`6
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`IPR2018-01194
`Patent 9,193,873 B2
`Petitioner also relies on the Declaration of J. David Rozzell, Ph.D.
`(“Rozzell Declaration”). Ex. 1008; see generally Pet. 8–52.
`
` ANALYSIS
`
`Application of 35 U.S.C. § 325(d)
`Patent Owner asks that we use our discretion under 35 U.S.C.
`§ 325(d) to deny an inter partes review of the ground involving McDaniel
`and Selvig. Prelim. Resp. 2–3, 15–16, 25–28. Patent Owner disputes
`Petitioner’s conclusion that it would have been obvious to combine Selvig,
`which teaches the use of amylase, with McDaniel by dispersing an amylase
`in a two-component, non-aqueous, organic solvent-borne polymer resin.
`Prelim. Resp. 26. Patent Owner asserts that the portions in Selvig on which
`Petitioner relies teach the use of amylase in materials that contain no organic
`solvents. Id. Patent Owner asserts that we should exercise our discretion to
`deny an inter partes review based on the McDaniel and Selvig ground
`because the Office has considered already and was not persuaded by the
`argument “that the dispersion of amylase in non-aqueous, organic solvent-
`borne polymers would have been obvious over a prior art disclosure[, such
`as Selvig,] teaching the use of amylase only in organic solvent-free
`materials.” Id.
`In further briefing that we authorized, see Paper 8, Petitioner refutes
`Patent Owner’s assertion that Selvig does not teach a dispersion of amylase
`in non-aqueous organic solvent-borne polymer systems. Paper 9, 1–4.
`Patent Owner counters that
`While Selvig’s materials are not water-borne . . . , Petitioner has
`still not shown that Selvig teaches organic solvent-borne
`formulations . . . . Nor has Petitioner explained why a reference
`teaching the use of amylase in a solvent-free system (i.e., a
`system with no aqueous or organic solvent) is any stronger than
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`IPR2018-01194
`Patent 9,193,873 B2
`one teaching the use of amylase in a water-borne system (i.e., a
`system with an aqueous, but no organic, solvent), where the
`relevant issue is the existence of a motivation and a reasonable
`expectation of success for dispersing amylase in organic
`solvent-borne polymers.
`Paper 10, 2.
`We find that instead of analyzing whether there are differences
`between the art asserted in this Petition and that discussed during
`prosecution of the ’873 patent, it is more efficient to resolve our decision on
`institution on the merits presented in the Petition. Because we find that
`Petitioner has no reasonable likelihood of prevailing on any ground
`presented in the Petition and, therefore, deny institution, we decline to
`exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.
`
`Person of Ordinary Skill in the Art
`Petitioner’s declarant, Dr. Rozzell, asserts that a person having
`ordinary skill in the art (“POSITA”) at the time of the ’873 patent’s
`invention “would have at least a bachelor’s degree plus 5 or more years of
`experience, or a Masters or Ph.D. degree with 2 or more years of experience
`in chemistry, biochemistry, biochemical engineering, or a related
`discipline.” Ex. 1008 ¶ 30. Patent Owner disagrees with this definition “to
`the extent that it requires no specialized knowledge and training in the
`formulation of protein-polymer materials.” See Prelim. Resp. 12; Ex. 2001
`¶ 21.
`
`Dr. Dordick, Patent Owner’s declarant, states that “[t]he ’873 Patent is
`directed to enzyme-containing materials, and processes of preparing the
`same. . . . However, Dr. Rozzell’s definition of one [of] ordinary skill in the
`art could include a person without experience in preparing, characterizing
`and using enzyme-containing materials.” Ex. 2001 ¶ 22. Dr. Dordick
`
`8
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`IPR2018-01194
`Patent 9,193,873 B2
`concludes that such a “person lacking such experience would not be familiar
`with the complications and associated specialized techniques for distributing
`and stabilizing bioactive materials such as proteins (e.g., enzymes) or
`peptides in nonaqueous formulations, such as the bioactive materials
`involved in the claims of the ’873 Patent.” Id.; see Prelim. Resp. 12–13
`(stating that processing conditions under which a protein is immobilized
`may introduce structural changes that can diminish or deactivate the
`protein’s catalytic activity). Dr. Dordick’s definition of a POSITA requires
`experience in research and development of bioactive materials. Id.
`On this record and at this stage of the proceeding, we agree with
`Petitioner’s definition of a POSITA as Dr. Rozzell’s testimony supports.
`See Ex. 1008 ¶¶ 29–30. Dr. Rozzell testifies that when defining a POSITA,
`he considered the types of problems encountered by those working in the
`field and prior art solutions thereto, the sophistication of the technology in
`question, the rapidity with which innovations occur in the field, and the
`education levels of active workers in the field and of the inventors. Id. at
`¶ 29. We agree with Dr. Rozzell based on our assessment of these factors
`that a POSITA would have at least a bachelor’s degree plus 5 or more years
`of experience, or a Masters or Ph.D. degree with 2 or more years of
`experience in chemistry, biochemistry, biochemical engineering, or a related
`discipline, but would not necessarily have the years of experience in
`“research and development of bioactive materials” that Dr. Dordick states a
`POSITA must possess.
`The ’873 patent discloses that known methods of use for bioactive
`materials are employed, and such methods are not so unpredictable as to
`require such a single-minded focus by a POSITA in an area of research and
`development of bioactive materials. See Ex. 1001, 4:53–54 (“Methods of
`
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`IPR2018-01194
`Patent 9,193,873 B2
`screening for protein enzymatic activity are known and standard in the art.”),
`6:38–43 (“The importance of the hydropathic amino acid index in conferring
`interactive biologic function on a polypeptide is generally understood in the
`art. It is known that certain amino acids can be substituted for other amino
`acids having a similar hydropathic index or score and still result in a
`polypeptide with similar biological activity.”). Also, it is not clear from the
`record evidence what “complications and associated specialized techniques
`for distributing and stabilizing bioactive materials such as proteins in
`nonaqueous formulations” Dr. Dordick is referencing to require a POSITA
`to possess specific, sustained years of involvement in research and
`development of bioactive materials.
`At this stage of the proceeding and based on the record before us, we
`find that one of skill in the art “would have at least a bachelor’s degree plus
`5 or more years of experience, or a Masters or Ph.D. degree with 2 or more
`years of experience in chemistry, biochemistry, biochemical engineering, or
`a related discipline,” and also find on this record that Drs. Rozzell and
`Dordick are at least of ordinary skill under this standard. See Ex. 1008
`¶¶ 11–23; Ex. 1015; Ex. 2001 ¶¶ 8–19, Appendix A.
`We further note that the prior art itself demonstrates the level of skill
`in the art at the time of the invention. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding
`ordinary skill level are not required “where the prior art itself reflects an
`appropriate level and a need for testimony is not shown”) (quoting Litton
`
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`Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.
`1985)).
`
`
`Claim Construction
`In an inter partes review, the Board interprets claim terms in an
`unexpired patent according to the broadest reasonable construction in light
`of the specification of the patent in which they appear. 37 C.F.R.
`§ 42.100(b) (2016);6 Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (affirming applicability of broadest reasonable construction
`standard to inter partes review proceedings). “Under a broadest
`reasonable interpretation, words of the claim must be given their plain
`meaning, unless such meaning is inconsistent with the specification and
`prosecution history.” Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016). Any special definitions for claim terms must be set forth
`with reasonable clarity, deliberateness, and precision. See In re Paulsen,
`30 F.3d 1475, 1480 (Fed. Cir. 1994). Only terms in controversy must be
`construed and only to the extent necessary to resolve the controversy.
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner provides a proposed construction of the claim term “two
`component non-aqueous organic solvent-borne polymer resin,” which Patent
`Owner does not dispute at this stage of the proceeding. See Pet. 10–16;
`
`
`6 The Final Rule changing the claim construction standard to the federal
`court claim construction standard that is used to construe a claim in a civil
`action under 35 U.S.C. § 282(b) does not apply here, as the Petition was
`filed before the effective date of the Final Rule, November 13, 2018. See
`Changes to the Claim Construction Standard for Interpreting Claims in Trial
`Proceedings Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340,
`51,340, 51,344 (Oct. 11, 2018).
`
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`IPR2018-01194
`Patent 9,193,873 B2
`Prelim. Resp. 14. According to Petitioner, this claim term means “a non-
`aqueous organic solvent-borne polymer resin capable of being combined
`with another material composition to cause a change in the final composition
`of the polymer resin.” Pet. 16 (citing Ex. 1008 ¶¶ 80–83). Petitioner points
`to two disclosures in the Specification of the ’873 patent, the first describing
`two component solvent-borne compositions and the second describing
`amylase being dispersed within a polymer resin or a two component material
`composition comprising a polymer resin. See Pet. 12–15 (quoting Ex. 1001,
`Abst., 1:57–59, 9:37–63, 14:54–64, 2:10–11, 14:45–46, 9:9–14, 9:30–36,
`18:3–5).
`Based on the record before us and review of the cited teachings in the
`Specification of the ’873 patent, we agree with Petitioner that the term “two
`component non-aqueous organic solvent-borne polymer resin” means “a
`non-aqueous organic solvent-borne polymer resin capable of being
`combined with another material composition to cause a change in the final
`composition of the polymer resin.”
`We determine that we need not expressly construe any other terms for
`purposes of determining whether to institute an inter partes review in this
`case. See Vivid Techs., 200 F.3d at 803.
`
`
`Principles of Law
` To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference. Net
`MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008);
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). “A reference anticipates a claim if it discloses the claimed invention
`‘such that a skilled artisan could take its teachings in combination with his
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`own knowledge of the particular art and be in possession of the invention.’”
`In re Graves, 69 F.3d 1147, 1152 (Fed. Cir. 1995) (internal citation and
`emphasis omitted). Moreover, “it is proper to take into account not only
`specific teachings of the reference but also the inferences which one skilled
`in the art would reasonably be expected to draw therefrom.” In re Preda,
`401 F.2d 825, 826 (CCPA 1968); see Eli Lilly v. Los Angeles Biomedical
`Res. Inst., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and the prior art are such that
`the subject matter, as a whole, would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved on the basis of underlying
`factual determinations including: (1) the scope and content of the prior art;
`(2) any differences between the claimed subject matter and the prior art;
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“Both the suggestion and the expectation of success must be founded in the
`prior art, not in the applicant’s disclosure.” In re Dow Chemical Co., 837
`F.2d 469, 473 (Fed. Cir. 1988).
`In that regard, an obviousness analysis “need not seek out precise
`teachings directed to the specific subject matter of the challenged claim, for
`a court can take account of the inferences and creative steps that a person of
`ordinary skill in the art would employ.” KSR, 550 U.S. at 418; see
`Translogic, 504 F.3d at 1259. In KSR, the Supreme Court also stated that an
`invention may be found obvious if trying a course of conduct would have
`been obvious to a person having ordinary skill.
`
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`When there is a design need or market pressure to solve a
`problem and there are a finite number of identified, predictable
`solutions, a person of ordinary skill has good reason to pursue
`the known options within his or her technical grasp. If this leads
`to the anticipated success, it is likely the product not of
`innovation but of ordinary skill and common sense. In that
`instance the fact that a combination was obvious to try might
`show that it was obvious under § 103.
`550 U.S. at 421. “KSR affirmed the logical inverse of this statement by
`stating that § 103 bars patentability unless ‘the improvement is more than
`the predictable use of prior art elements according to their established
`functions.’” In re Kubin, 561 F.3d 1351, 135960 (Fed. Cir. 2009) (citing
`KSR, 550 U.S. at 417).
` We analyze the asserted grounds of unpatentability in accordance with
`the above-stated principles.
`
` Obviousness over McDaniel and Selvig
`Petitioner asserts that claims 1–5 of the ’873 patent are unpatentable
`as obvious over McDaniel and Selvig. Pet. 34–42. Patent Owner advances
`several arguments in response to Petitioner’s assertions. Prelim. Resp. 14–
`33.
`
`1. McDaniel (Ex. 1004)
`McDaniel “relates generally to the field of biological molecules as
`
`components of coatings conferring an activity or other advantage to the
`coating proteinaceous molecule related to the biological molecule.”
`Ex. 1004 ¶ 3. More specifically, McDaniel describes “compositions and
`methods for incorporating biological molecules into coatings in a manner to
`retain biological activity conferred by such biological molecule.” Id. ¶ 21.
`
`The coating that McDaniel teaches “comprises a bioactive molecule
`such as an enzyme composition that retains activity after being admixed with
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`paint” and “still retains activity after the paint is applied to a surface, and
`renders the surface bioactive.” Id. ¶ 23. McDaniel teaches that, in general,
`“the coating comprises a binder, a liquid component, a colorant, an additive,
`or a combination thereof.” Id. ¶ 46. In a detailed description of the
`invention, McDaniel offers a compendium of biomolecules, such as
`enzymes, and recombinant processes for producing such enzymes, as well as
`a compendium of the components of coatings using such biomolecules. See
`generally id.
`
`2. Selvig (Ex. 1005)
`Selvig relates to marine antifouling methods, paints, and
`compositions. Ex. 1005, 1:4–5. Selvig states the following:
`Compositions and/or paints according to the invention
`may include various hydrolytic enzymes, although it is possible
`to practice the invention without such hydrolytic enzymes.
`Examples of suitable enzymes include proteases, amylases, and
`other hydrolytic enzymes known in the art. The hydrolytic
`enzymes selected should act to prevent or reduce attachment by
`unwanted or undesirable marine organisms. The hydrolytic
`enzymes chosen should be able to survive and flourish in the
`marine environment to which they will be exposed.
`Id. at 6:8–17.
`
`Selvig provides examples of such marine coatings or paints using
`alpha-amylases. See id. at 6:65–8:15 (Example 1), 10:27–60 (Example 7);
`12:9–50 (Example 10).
`
`3. Analysis
`Petitioner provides an analysis of how each claim limitation of the
`challenged claims is met by the disclosure of McDaniel and Selvig. See Pet.
`32–42. For instance, Petitioner states that McDaniel teaches “one or more
`amylases dispersed in a two component non-aqueous organic solvent-borne
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`polymer resin” by pointing to coatings whose components are provided in a
`multi-pack format and admixed prior to or during application of the coating,
`and to a polymeric composition like paint that has a proteinaceous molecule,
`such as a hydrolase, dispersed therein by known methods. See id. at 35– 37
`(citing e.g., Ex. 1004, 32:5–7, 83:1–15, 100:1–18, 101:1–12, 359:28–34,
`299:2–7, 299:36–43).7
`Petitioner specifically points to McDaniel’s disclosure regarding a
`polyamide-epoxy coating, comprising a two-pack coating of polyamide resin
`and epoxy resin, as teaching a two component solvent-borne (2KSB)
`polymer resin composition. Id. at 22–23, 35 (citing Ex. 1004 ¶ 437:22–30).
`Petitioner also relies on McDaniel’s teaching concerning smaller particle
`size being conducive to a higher gloss property of a coating, along with
`Dr. Rozzell’s testimony that controlling particle size with dispersion of such
`particles was known, to teach the average claimed particle size for amylase.
`Id. at 38–39.
`Finally, Petitioner notes that although it may have been obvious from
`McDaniel’s disclosure that the enzyme would be amylase, McDaniel does
`not explicitly disclose that the enzyme in the protein-polymer composite
`material would be amylase or alpha amylase. Id. at 37. Petitioner, instead,
`relies on Selvig for such an explicit teaching of alpha amylase. Id. at 37–38.
`Petitioner proposes that a POSITA would have combined the
`teachings of McDaniel and Selvig to arrive at the claimed invention because
`“Selvig teach[es] that enzymes used within a protein-polymer composition
`thereof, which can be alpha-amylase, are useful in marine antifouling
`
`
`7 Petitioner’s citations to McDaniel refer to the particular paragraph and line
`numbers of that paragraph.
`
`16
`
`
`
`IPR2018-01194
`Patent 9,193,873 B2
`compositions and McDaniel similarly teach[es] that examples of uses of
`protein-polymer compositions thereof include marine coatings that resist
`fouling.” Id. at 38 (citations omitted). Petitioner also asserts that such a
`reason to combine the teachings of McDaniel and Selvig is shown by
`Dr. Rozzell’s testimony that “it was known prior to the time of filing of the
`’873 patent that ‘Amylases are within the sub-category of hydrolases,’ the
`‘hydrolases are well known and have been extensively studies,’ and that an
`amylase would be expected to function under conditions similar to those
`under which other hydrolases are able to function.” Pet. 38 (citing Ex. 1008
`¶¶ 55–57, 70).
`Patent Owner first asserts that McDaniel does not teach the claimed
`polymer composite material and that it never teaches dispersing proteins in a
`two-component, non-aqueous, organic solvent-borne polymer resin. Prelim.
`Resp. 18–25. We agree with Patent Owner that McDaniel’s description of
`the three-pack coating does not identify a component other than a
`“microorganism based particulate material,” and the two-pack example does
`not specify any protein. See Ex. 1004 ¶¶ 299, 437; Prelim. Resp. 19. We
`also agree with Patent Owner that Petitioner fails to show where McDaniel
`discloses a “non-aqueous organic solvent” as a component of the cited multi-
`pack coating. See Pet. 35–38; Ex. 1004 ¶¶ 299, 437; Prelim. Resp. 19; see
`also Ex. 1008 ¶ 48 (Dr. Rozzell stating that the “solvent-borne coatings
`disclosed by McDaniel are broad in scope. In his description of solvent-
`borne coatings, McDaniel discloses liquid components that may be water or
`non-aqueous, and may include both water and non-aqueous components.”).
`We also agree that Petitioner falls short of identifying where McDaniel
`teaches that proteins are dispersed in a two-component non-aqueous organic
`
`17
`
`
`
`IPR2018-01194
`Patent 9,193,873 B2
`solvent-borne polymer resin. See Prelim. Resp. 21–25; Ex. 1008 ¶¶ 47–48,
`51–53 (discussing two-component solvent-borne coatings and resins).
`Patent Owner also asserts that in addressing whether McDaniel
`teaches dispersing enzymes in a two-component non-aqueous organic
`solvent-borne polymer resin,
`Petitioner merely picks and chooses individual coating
`components from McDaniel’s 115-page disclosure while
`appearing to suggest that these components could somehow be
`combined together to achieve the ‘dispersion’ of enzymes in a
`‘two-component non-aqueous organic solvent-borne polymer
`resin.’ But Petitioner completely fails to explain either how a
`person of ordinary skill in the art would actually implement
`such a combination or why the PHOSITA would even pursue it.
`Prelim. Resp. 1–2.
`
`We agree with Patent Owner that Petitioner fails to provide a
`persuasive explanation as to why one of skill in the art would have combined
`the teachings from disparate portions of McDaniel, and then added the use of
`amylase as Selvig teaches, to arrive at the claimed invention. For instance,
`in demonstrating whether McDaniel teaches “one or more amylases
`dispersed in a two component non-aqueous organic solvent-borne polymer
`resin,” Petitioner relies on McDaniel’s teaching of a three-pack coating
`“wherein the first container and the second container contain coating
`components separated to reduce[] film formation during storage and a third
`container comprises microorganism based particulate material and wherein
`the components of such a multi-pack coating are admixed prior to and/or
`during application.” Pet. 35 (citations and emphasis omitted). Petitioner
`then cites to a more specific disclosure concerning a polyamide-epoxy
`coating comprising a two-pack coating with the polyamide resin in one
`container and the epoxy resin in the other ostensibly to show a teaching of a
`
`18
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`
`
`IPR2018-01194
`Patent 9,193,873 B2
`two-component, non-aqueous, solvent-borne polymer resin. Id. (citing
`Ex. 1004 ¶ 437:22–30); Ex. 1008 ¶¶ 48, 66.
`
`Petitioner then points to the general disclosure in McDaniel that “the
`biomolecular composition such as a microorganism based particulate
`material used in coating thereof can be a biomolecule and that proteinaceous
`molecules such as a protein and enzymes are examples of such a
`biomolecule[, and] that the protein can be a hydrolase . . . having a glycosyl
`released/transferred moiety.” Pet. 36 (citing Ex. 1004, 32:5–7, 90:1–4,
`91:1–4, 27–7, 23:1–6, 1216:1–13, 289:1–18, 125:9–12, 129:1–6). And, with
`regard to the dispersal of amylases in the required resin, Petitioner states that
`McDaniel discloses that ‘microorganism derived particulate
`material will also be a source of particulate material in a
`coating’ and ‘any technique used in the preparation of a coating
`that comprises a pigment, extender or any other form of
`particulate material described herein or would be known to one
`of ordinary skill in the art may be applied in the preparation of a
`coating comprising the microorganism derived particulate
`material of the present invention.
`
`Id.
`Finally, with regard to the claimed average particle size of the
`
`amylase dispersed in the resin, Petitioner points to McDaniel’s teaching that
`the size of particulate matter in a coating can affect gloss, and that smaller
`particle sizes are generally more conducive for a higher gloss property of a
`coating or film. Pet. 39. Petitioner relies on Dr. Rozzell’s testimony
`concerning the particle size of alpha-amylase and larger aggregates of alpha-
`amylase, and that “controlling bioactive protein size in a manner consistent
`with ‘dispersion’ of such bioactive protein particles was known prior to the
`filing date of the ’873 Patent.” Id. at 39 (citing Ex. 1008 ¶¶ 35–46).
`
`19
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`IPR2018-01194
`Patent 9,193,873 B2
`
`We agree with Patent Owner that Petitioner does not provide a
`sufficient rationale as to why one of skill in the art would have looked to
`these dispar
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