Trials@uspto.gov
`571-272-7822
`
` Paper 10
`Entered: May 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BASF CORPORATION,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2019-00202
`Patent RE38,844 E
`____________
`
`Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`571-272-7822
`
` Paper 10
`Entered: May 13, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BASF CORPORATION,
`Petitioner,
`
`v.
`
`INGEVITY SOUTH CAROLINA, LLC,
`Patent Owner.
`
`____________
`
`Case IPR2019-00202
`Patent RE38,844 E
`____________
`
`Before DONNA M. PRAISS, CHRISTOPHER L. CRUMBLEY, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`IPR2019-00202
`Patent RE38,844 E
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`
`I. INTRODUCTION
`BASF Corporation filed a Petition requesting an inter partes review of
`claims 1–8, 11, 12, 14–16, 18–21, 24, 25, 27–29, 31–33, 36, 37, 39–41, 43–
`45, 48, 49, and 51–53 of U.S. Patent No. RE38,844 E (Ex. 1001, “the ’844
`patent”). Paper 2 (“Pet.”). Ingevity South Carolina, LLC, identified as a
`real party in interest to the ’844 patent (Paper 5, 1)1, filed a Preliminary
`Response to the Petition. Paper 6 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless the information presented in the Petition and Preliminary
`Response shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Taking into account the parties’ arguments, we conclude that the information
`presented does not establish a reasonable likelihood that BASF will prevail
`in challenging the patentability of claims 1–8, 11, 12, 14–16, 18–21, 24, 25,
`27–29, 31–33, 36, 37, 39–41, 43–45, 48, 49, and 51–53 of the ’844 patent.
`We, therefore, decline to institute an inter partes review.
`
`II. BACKGROUND
`A. Related Matters
`BASF and Ingevity identify the following related proceedings
`currently or previously pending in District Court: Ingevity Corp. et al. v.
`BASF Corp., Case No. 1:18-cv-01391 (D. Del.); Ingevity Corp. et al. v.
`MAHLE Filter Sys. North America, Inc., Case No. 1:18-cv-06158 (N.D. Ill.);
`
`
`1 Ingevity’s Mandatory Notices also list Ingevity Corporation as a real party
`in interest, but only Ingevity South Carolina, LLC is named as a party in this
`proceeding. Paper 5, 1.
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`Ingevity Corp. v. BASF Corp., Case No. 1:18-cv-01072 (D. Del.); and
`Ingevity Corp. v. MAHLE Filter Sys. North America, Inc., Case No. 1:18-cv-
`04920 (N.D. Ill.). See Pet. 81; Paper 5, 1. Ingevity also identifies a related
`matter pending before the International Trade Commission: In the matter of
`Certain Multi-Stage Fuel Vapor Canister Systems and Activated Carbon
`Components Thereof, Inv. No. 337-TA3351. Paper 5, 1.
`
`B. The ’844 Patent
`The ’844 patent, entitled Method For Reducing Emissions From
`Evaporative Emissions Control Systems, reissued October 25, 2005 from
`U.S. Patent No. 6,540,815, originally issued April 1, 2003. Ex. 1001, (10),
`(45), (54), (64). The ’844 patent claims priority to provisional application
`60/335,897, filed November 21, 2001. Id. at (60).
`The ’844 patent is directed to reducing air pollution caused by
`gasoline evaporation from automotive fuel tanks, and in particular so-called
`“diurnal breathing loss” (DBL). Id. at 2:35–47. DBL occurs when a car has
`been parked for several days and experiences natural heating and cooling
`during diurnal temperature cycles. Id. According to the ’844 patent, DBL
`was traditionally addressed through the use of a canister attached to the fuel
`tank that contains activated carbon to adsorb any gasoline vapor released
`from the tank. Id. at 1:32–34; Fig. 1. The adsorbed hydrocarbons were
`periodically removed from the carbon while the car was in operation, by
`redirecting engine air through the canister and burning the desorbed vapor in
`the engine, resulting in regenerated carbon in the canister that can then
`adsorb additional DBL hydrocarbon. Id. at 1:34–39.
`The carbons used in traditional evaporative emissions canisters may
`be characterized by their ability to adsorb butane, quantified in a number of
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`measurements including bed packing density, saturation capacity, and
`purgeability. Id. at 2:1–7. Multiplying these measures together results in a
`measure of the carbon’s “butane working capacity,” which the ’844 patent
`describes as a good predictor of the canister working capacity for gasoline
`vapors. Id. at 2:8–12. Carbons used in traditional canister systems typically
`have “high incremental capacity as a function of increased vapor”; in other
`words, a large increase in the mass adsorbed by the carbon as a result of
`increased gasoline vapor concentration. Id. at 2:16–20; Fig. 3.
`According to the ’844 patent, traditional canister systems have proven
`unable to meet the stricter emissions standards enacted in recent years. Id. at
`2:46–61. The ’844 patent proposes addressing these standards through the
`use of a staged system in which traditional, prior art canisters are modified
`to have a secondary adsorption volume containing carbon having specific
`adsorption properties. Id. at 3:43–51; Fig 2. In particular, the carbon used
`in the secondary volume is said to have “relatively low incremental capacity
`at high concentration vapors compared to the fuel source-side” primary
`canister. Id. at 3:51–53. The ’844 patent defines a measure of “incremental
`adsorption capacity” (IAC), and states that preferred carbons for use in its
`secondary volume should have an IAC at 25º C of less than 35 g n-butane/L
`between vapor concentrations of 5 vol % and 50 vol% n-butane, whereas the
`carbon in the primary canister should have an IAC above that level. Id. at
`9:33–42. Figure 3 of the ’844 patent, reproduced below, compares the
`capacity of two prior art carbons, BAX 1100 and BAX 1500, with that of
`three example carbons prepared according to the invention:
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`Figure 3 depicts the relationship between n-butane vapor
`concentration and the mass of n-butane adsorbed by the various carbons at
`25º C. As can be seen, the prior art BAX carbons exhibit a greater increase
`in adsorption at higher vapor concentration than the example carbons. The
`’844 patent reports that the IAC at 5–50% vapor concentration for BAX
`1100 is 52 g/L and BAX 1500 is 80 g/L, whereas the exemplary carbons
`have IACs that range from 16 to 24 g/L. Id. at 8:5–60.
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`
`C. Illustrative Claim
`Of the challenged claims, claims 1, 18, 31, and 43 are independent.
`
`Claim 1 is illustrative of the subject matter at issue and reads as follows:
`1. A method for reducing fuel vapor emissions in automotive
`evaporative emissions control systems comprising the steps of
`contacting the fuel vapor with an initial adsorbent volume
`having incremental adsorption capacity at 25 C. of greater than
`35 g n-butane/L between vapor concentrations of 5 vol% and
`50 vol% n-butane and at least one subsequent adsorbent
`volume having an incremental adsorption capacity of less than
`35 g n-butane/L between vapor concentrations of 5 vol% and
`50 vol% n-butane.
`Ex. 1001, 10:36–44 (emphasis added). All challenged independent
`claims—and, therefore, all challenged claims—contain a limitation
`substantially similar to that emphasized above. See id. at 11:52–58
`(claim 18); 13:6–11 (claim 31); 14:14–19 (claim 43).
`
`D. Asserted Grounds of Unpatentability
`BASF challenges claims 1–8, 11, 12, 14–16, 18–21, 24, 25, 27–29,
`
`31–33, 36, 37, 39–41, 43–45, 48, 49, and 51–53 of the ’844 patent on the
`grounds of unpatentability set forth in the table below. Pet. 4–5.
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`
`Basis2 Claims
`Reference(s)
`Meiller,3 Park,4 and AAPA5 § 103(a) 1, 2, 6, 8, 11, 12, 14–16, 18, 20,
`21, 24, 25, 27–29, 31–33, 36, 37,
`39–41, 43–45, 48, 49, and 51–53
`§ 103(a) 1, 2, 6, 8, 11, 12, 14–16, 18, 20,
`21, 24, 25, 27–29, 31–33, 36, 37,
`39–41, 43–45, 48, 49, and 51–53
`Meiller, Park, and Tennison7 § 103(a) 3–5, 7, and 19
`
`Abe,6 Park, and AAPA
`
`
`BASF asserts that Abe, Park, and Tennison are prior art to the ’844
`
`patent under 35 U.S.C. § 102(b), while Meiller is prior art under 35 U.S.C.
`§ 102(e). Pet. 3–4. Ingevity does not, at this stage of the proceeding,
`challenge the prior art status of any cited reference. On this record, the
`references asserted by BASF appear to qualify as prior art to the challenged
`claims of the ’844 patent.
`
`
`2 The relevant sections of the Leahy-Smith America Invents Act (“AIA”),
`Pub. L. No. 112–29, took effect on March 16, 2013. Because the application
`to which the ’844 patent claims priority was filed before that date, our
`citations to Title 35, Chapter 10 are to its pre-AIA version.
`3 U.S. Patent No. 6,896,852 B1 to Meiller et al., filed Oct. 26, 2000, issued
`May 24, 2005 (Ex. 1016).
`4 U.S. Patent No. 5,914,294 to Park et al., issued June 22, 1999 (Ex. 1010).
`5 BASF refers to statements made in the specification of the ’844 patent
`regarding certain prior art carbons as “Applicant Admitted Prior Art” or
`“AAPA.” Pet. 4; see also id. at 23–25.
`6 Japanese Patent Application Publication JP 10–37812 to Abe et al.,
`published Feb. 13, 1998 (Ex. 1008). An English-language translation of the
`reference is provided as Exhibit 1009.
`7 PCT International Application WO 92/01585 to Tennison et al., published
`Feb. 6, 1992 (Ex. 1011).
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`III. ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claims by applying the broadest
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.100(b)
`(2016).8 Under that standard, we interpret claim terms using “the broadest
`reasonable meaning of the words in their ordinary usage as they would be
`understood by one of ordinary skill in the art, taking into account whatever
`enlightenment by way of definitions or otherwise that may be afforded by
`the written description contained in the applicant’s specification.” In re
`Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Only those terms that are in
`controversy need to be construed and only to the extent necessary to resolve
`the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor
`Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); see also U.S. Surgical Corp. v.
`Ethicon, Inc., 103 F.3d 1554, 1568 (Fed. Cir. 1997) (holding claim
`construction is not necessary when it is not “directed to, or has been shown
`reasonably to affect, the determination of obviousness”).
`BASF asserts that the terms of the challenged claims should be given
`their plain meaning, and that no terms require an explicit construction to
`resolve the question of whether to institute trial. Pet. 13–14. Ingevity does
`not address claim construction in its Preliminary Response. Upon review,
`
`
`8 The broadest reasonable construction standard applies to inter partes
`reviews filed before November 13, 2018. 77 Fed. Reg. 48727 (Aug. 14,
`2012) (codified at 37 C.F.R. § 42.100(b)), as amended at 81 Fed. Reg. 18766
`(Apr. 1, 2016); see also 83 Fed. Reg. 51340 (Oct. 11, 2018) (changing the
`standard for interpreting claims in inter partes reviews filed on or after
`November 13, 2018). BASF filed its Petition on November 5, 2018.
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`we agree with BASF that no claim terms require explicit construction at this
`stage of the proceeding.
`
`B. Obviousness over Meiller, Park, and AAPA
`BASF contends that claims 1, 2, 6, 8, 11, 12, 14–16, 18, 20, 21, 24,
`25, 27–29, 31–33, 36, 37, 39–41, 43–45, 48, 49, and 51–53 of the ’844
`patent are unpatentable because their subject matter would have been
`obvious over the combined disclosures of Meiller, Park, and the Applicant
`Admitted Prior Art. Pet. 14–58. BASF submits the testimony of James M.
`Lyons to support its contentions. Ex. 1003. In response, Ingevity argues
`that BASF’s proposed combination would not result in a method or
`apparatus that meets the so-called “low IAC adsorbent volume limitation”
`present in each of the challenged independent claims. Prelim. Resp. 30–60.
`Ingevity does not separately argue the challenged dependent claims. Id. In
`support of its arguments, Ingevity supplies the testimony of Dr. James A.
`Ritter. Ex. 2001.
`1. Meiller
`Meiller is directed to addressing the same problem as that faced by the
`’844 patent, namely, evaporative emissions from fuel tanks through DBL.
`Ex. 1016, 1:38–65. Meiller notes that it was known to reduce bleed
`emissions by employing an auxiliary canister system in series with the
`primary canister, but that traditional auxiliary canisters caused airflow
`restrictions that reduced the ability to purge adsorbed hydrocarbons from the
`canister carbon. Id. at 2:6–23. Meiller proposes the use of a “scrubber”
`connected to the primary canister that contains a scrubber element
`constructed of a sorbent material such as activated carbon, wherein the
`scrubber element has a honeycomb-like structure. Id. at 4:36–54. Meiller
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`states that the structure of the scrubber element makes the scrubber less
`restrictive to airflow. Id. at 2:61–67. As BASF observes, however, Meiller
`does not provide details on how to create its disclosed honeycomb. Pet. 29.
`2. Park
`Park describes an adsorptive monolith having a plurality of passages
`therethrough, to form a honeycomb structure. Ex. 1010, Abstract. Park’s
`monolith is said to be useful to remove volatile organic compounds from
`fluid streams, for example in automobile engine air intake systems. Id. Park
`states that monoliths for use in automotive air intake systems must have high
`axial crushing strength (1200–1600 psi), and that such strength depends on
`the relative amounts of carbon and ceramic used to form the material. Id. at
`9:1–15. Park describes the preparation of four exemplary formulations A–
`D, which were then each fired at four temperatures ranging from 1400–
`2000º F, resulting in sixteen example monoliths. Id. at 9:20–10:10. The
`axial crushing strengths of these monoliths are reported in Park’s Figure 3,
`reproduced below:
`
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`Figure 3 of Park reports compressive strength for various formulations
`as a function of calcination temperature. In particular, BASF directs our
`attention to Formulation D of Park, which when fired at 2000º F results in a
`monolith having a compressive strength of 1295 psi. Id. at Fig. 3. Mr.
`Lyons testifies that Formulation D of Park, when fired at 2000º F, is the only
`recited embodiment that meets the carbon content and crushing strength
`requirements for use in automotive air intake applications. Ex. 1003 ¶ 105.
`3. Applicant Admitted Prior Art9
`BASF relies on the ’844 patent’s description of BAX 1100 and BAX
`1500, summarized above, as applicant admitted prior art (“AAPA”).
`Pet. 23–26.
`4. The Proposed Combination
`BASF argues that a person of ordinary skill in the art at the time of the
`invention would have used known activated carbons in the “initial volume”
`canister of Meiller, for example the BAX 1100 or BAX 1500 carbons recited
`in the AAPA. Pet. 22. According to BASF, this would have resulted in a
`system that meets the claimed IAC of the initial volume. Id. at 22–26.
`As to the secondary “scrubber” of Meiller, BASF observes that
`Meiller does not describe how to create its scrubber element. Id. at 29. As a
`result, BASF argues, a person of ordinary skill in the art would have been
`
`
`9 Because we determine that the Petition is deficient on other bases, we need
`not reach the questions of whether the portions of the ’844 patent BASF
`relies upon are indeed “admitted prior art,” or whether we may rely on such
`material as the basis for a ground of unpatentability in an inter partes
`review. We note that Ingevity has not argued that the BAX 1100 and BAX
`1500 carbons relied on by BASF as AAPA were not known in the art at the
`time of the ’844 invention.
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`motivated to use the methods described in Park to create a monolith for use
`as the honeycomb scrubber element of Meiller. Id. In particular, BASF
`asserts, the skilled artisan would have selected Park’s Formulation D
`because of its high axial crushing strength, which Park reports is desirable in
`automotive air intake applications. Id. at 33. According to BASF, this
`would result in a honeycomb with an apparent density of about 0.35 g/mL
`that has an open frontal area of about 73.8%. Id. at 35–36.
`Relying on the testimony of Mr. Lyons, BASF then asserts that the
`honeycomb structure of Park, when used in the scrubber of Meiller, would
`necessarily have an IAC below 35 g/L as claimed in the ’844 patent. Pet. 37
`(citing Ex. 1003 ¶ 109). Mr. Lyons first compares the honeycomb of Park as
`used in Meiller (which Mr. Lyons terms “POSITA’s honeycomb”) with
`Example 2 of the ’844 patent, reproduced below, which the patent reports
`has an IAC of 16 g/L:
`
`Example 2 of ’844 patent POSITA’s honeycomb
`Cell density
`200 cpsi
`200 cpsi
`% open frontal
`65%
`73.8%
`area
`
`
`Carbon content
`Ceramic material
`Flux material
`Water
`Apparent density
`
`present
`present
`present
`present
`0.355 g/mL
`
`30 parts
`60 parts
`12.8 parts
`75 parts
`0.35 g/mL
`
`Ex. 1003 ¶ 107. Mr. Lyons testifies that “the apparent densities of the
`Meiller-Park honeycomb is very close to the apparent density of Example 2
`of the ’844 patent, as the table above shows. This suggests they have a
`similar composition.” Ex. 1003 ¶ 111.
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`Mr. Lyons also reasons that a honeycomb carbon having the 73.8%
`voidages disclosed in Park would have been expected to have 40.3% of the
`adsorption capacity per liter of the same carbon in a packed bed. Id. ¶ 110.
`Using the BAX 1500 carbon—the highest-IAC carbon disclosed in the ’844
`patent—in the honeycomb would, in Mr. Lyons’ analysis, result in an IAC
`of no more than 32 g/L. Id. Mr. Lyons testifies that the honeycomb created
`using the Park process “would have an IAC of less than 35 g/L even if it was
`created exclusively with the activated carbon of the highest possible IAC
`known at the time of the ’844 patent,” apparently a reference to the BAX
`1500 carbon. Id. ¶ 111.
`Based on this analysis, BASF contends that the honeycomb monolith
`of Park, if used in the Meiller scrubber, would have necessarily resulted in a
`“subsequent adsorbent volume” having an IAC below 35 g/L as claimed in
`the ’844 patent. Pet. 37.
`5. Use of Inherency in an Obviousness Analysis
`BASF concedes that neither Meiller nor Park explicitly disclose a
`secondary adsorbent volume having an IAC below 35 g/L. Pet. 28. This is
`not surprising, BASF argues, “because the IAC metric was developed by
`[Ingevity] and was not (and is not today) a term of art in the evaporative
`emissions field.” Id. at 22. Nevertheless, BASF contends that an IAC below
`35 g/L would have been inherent in the honeycomb monolith of Park when
`used in the scrubber of Meiller. Id. at 28. BASF cites Par Pharmaceutical,
`Inc. v. TWI Pharmaceutical, Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 2014),
`for the proposition that inherency may be used to supply a missing claim
`limitation in an obviousness analysis.
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`Ingevity disagrees that it is proper in this circumstance to rely on a
`theory of inherency to supply the low-IAC limitation of the claims. Prelim.
`Resp. 31. Citing Honeywell International v. Mexichem Amanco Holding,
`865 F.3d 1348 (Fed. Cir. 2017), Ingevity contends that the use of inherency
`in an obviousness analysis must be “carefully circumscribed because that
`which may be inherent is not necessarily known and that which is unknown
`cannot be obvious.” Prelim. Resp. 31 (quoting Honeywell, 865 F.3d at
`1354). According to Ingevity, inherency cannot be used to supply a claim
`limitation in an obviousness analysis “without establishing that the alleged
`‘inherent’ element was either known or expected.” Id. at 34. Because the
`specification of the ’844 patent reflects that it was known at the time of the
`invention that high IAC carbon would lead to lower emissions, Ingevity
`argues that a low IAC carbon would not have been expected to lead to an
`improved system for controlling DBL. Id. at 32–33.
`The use of inherency in an obviousness analysis is not as limited as
`Ingevity contends. In Honeywell, the Federal Circuit held that it was error to
`“rely[] on inherency to dismiss evidence showing unpredictability in the art
`. . . in order to reject Honeywell’s argument that one of ordinary skill would
`not have been motivated to combine the references with a reasonable
`expectation of success.” 865 F.3d at 1354 (emphasis added). In other
`words, because a person of skill in the art must have had reason at the time
`of the invention to make the combination, properties that are inherent—and,
`therefore, possibly unknown—cannot be used as the basis for this motivation
`unless they were expected. But Honeywell does not prohibit the use of
`inherency in other aspects of the obviousness analysis; namely, to show that
`the prior art, as properly combined, necessarily would have exhibited a
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`certain property. Indeed, the Federal Circuit recognized this proposition in
`Honeywell, stating that “[a]ll properties of a composition are inherent in that
`composition.” Id. at 1355; see also Par Pharm., 773 F.3d at 1196 (“the
`limitation at issue necessarily must be present, or the natural result of the
`combination of elements explicitly disclosed by the prior art”).
`Here, BASF’s theory of obviousness does not rely on the allegedly-
`inherent IAC property to provide a reason to combine the prior art
`references. Rather, BASF argues that a person of ordinary skill in the art
`would have looked to Park because of Meiller’s silence as to the method of
`making its scrubber element, and that the artisan would have selected Park’s
`Formulation D because of the strength of the resulting honeycomb when
`fired at 2000º F. Pet. 29, 33. Inherency is relied on only to argue that the
`honeycomb resulting from the combination would have had certain
`properties, including an IAC that is lower than 35 g/L. This type of analysis
`is consistent with prior applications of inherency in an obviousness context
`that have been approved by our reviewing courts:
`The board found that the Ruppe brake, when provided with
`Benini’s grooves, would inherently overcome the steam or vapor
`cause of the problem, relied on for patentability by appellants, as
`well as the cause recognized by Benini, namely, dust and
`overheating. Appellants have not denied that this is true. They
`are, in effect, arguing that a structure suggested by the prior art,
`and, hence, potentially in the possession of the public, is
`patentable to them because it also possesses an inherent, but
`hitherto unknown, function which they claim to have discovered.
`This is not the law.
`In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979).
`Here, if Meiller and Park would have been combined by a skilled
`artisan without knowledge of the benefits of a low IAC, and if the
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`combination necessarily would have resulted in a structure having a low
`IAC, we see no impediment to a conclusion of obviousness under Honeywell
`or other controlling precedent.
`6. Analysis of the Ground of Unpatentability
`In its Preliminary Response, Ingevity presents a raft of arguments
`why, even if an inherency theory is proper in this context, BASF has not
`shown that an IAC below 35 g/L was inherent in the combined prior art.
`Prelim. Resp. 34–58. Below, we address several of the arguments that we
`find persuasive, and explain why we conclude that BASF has not established
`a reasonable likelihood of prevailing on this ground of unpatentability.
`First, Ingevity challenges BASF’s contention that a person of ordinary
`skill in the art would have used Park’s Formulation D in Meiller’s scrubber,
`as opposed to other adsorptive monoliths disclosed in Park. Id. at 40–45.
`Ingevity notes that Park never states that its monoliths may be used in
`evaporative emissions control systems like the systems of Meiller and the
`challenged patent; as such, BASF’s contention that a person of skill in the
`art could use Park to develop a honeycomb “optimized for use in an
`evaporative emission system” (Pet. 37) is incorrect. Prelim. Resp. 40.
`We agree with Ingevity that Park is silent as to evaporative emission
`systems, but note that BASF relies on Park’s reference to the use of its
`honeycombs in automotive air intake systems. Pet. 33. As set forth above,
`BASF notes Park’s recitation of the high axial crushing strength
`requirements for honeycombs used in such applications, which allegedly
`would have led the person of ordinary skill to Formulation D and its strength
`of 1295 psi. Id. at 37. Ingevity disagrees, and argues that BASF has
`provided no reasons beyond conclusory statements why a person of ordinary
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`skill in the art would have considered Park’s discussion of air intake systems
`to be applicable to evaporative emission systems like those in Meiller.
`Prelim. Resp. 41. For example, Ingevity notes BASF’s assertion that
`“automotive engine air intake systems . . . [are] similar to Meiller’s
`disclosure of adsorbing fuel vapors from bleed emissions” is unsupported
`and conclusory. Id. (quoting Pet. 29).
`Upon reviewing the record, we agree with BASF that the goals of
`Park’s air intake systems and Meiller’s evaporative emissions systems are
`similar, in that both seek to remove volatile organic compounds. See Pet.
`29. But that is not the full extent of BASF’s argument. BASF also argues
`that the strength requirements recited in Park for air intake systems also
`apply to evaporative emissions systems, and would have led a person of skill
`in the art to use Park’s Formulation D. Pet. 33. We agree with Ingevity that
`this logical thread is unsupported by the record. Dr. Ritter testifies that
`evaporative emission systems and air intake systems are designed for use
`with different vapor concentrations and, more importantly, different flow
`rates. Ex. 2001 ¶¶ 43–44. Neither BASF nor Mr. Lyons provides any
`explanation why a person of skill in the art would have considered the
`strength requirements for air intake systems to apply to evaporative
`emissions systems. Mr. Lyons simply testifies that “Park discloses preferred
`embodiments specifically for adsorbing gasoline fuel vapor (the application
`in Meiller) in terms of both carbon content and axial crushing strength” (Ex.
`1003 ¶ 105), without explaining why the axial crushing strength requirement
`would have any applicability across all applications of “adsorbing gasoline
`fuel vapor.” For these reasons, we agree with Ingevity that BASF has failed
`to provide any evidence why a person of skill in the art would have been led
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`by Park’s strength requirement for an air intake system to select Formulation
`D for evaporative emissions systems.
`Second, Ingevity contends that even if a person of skill in the art
`would have selected Park’s Formulation D, BASF gives no reason to
`conclude that a honeycomb made from that formulation would have 73.8%
`voidages. Prelim. Resp. 38, 47, 51. Ingevity observes that Park does not
`report the voidages percentage of any of its exemplary compositions, and
`that the cited 73.8% figure is not associated with any specific honeycomb.
`Id. at 38. Nor has BASF provided any evidence that it is possible to use
`Formulation D to create a honeycomb with 73.8% voidages, Ingevity argues.
`Id. at 47.
`As discussed above, BASF and Mr. Lyons rely on Park’s 73.8%
`voidages figure to calculate the percentage reduction in IAC that would be
`expected between a pellet bed of carbon and a honeycomb made from the
`same material. Ex. 1003 ¶ 110. Mr. Lyons calculates that Park’s voidages
`figure would result in a reduction in IAC of 40.3% over a pelletized bed. Id.
`Thus, Park’s voidages percentage is central to BASF’s argument that a
`honeycomb structure would result in an IAC value below 35 g/L.
`Upon review of the record and BASF’s arguments, we agree with
`Ingevity that, even if we were to assume that a person of skill in the art
`would have selected Park’s Formulation D, there is no reason in the record
`to conclude that the resulting honeycomb would have voidages of exactly
`73.8%.10 While Park does state that an open frontal area of 73.8% is desired
`
`
`10 Mr. Lyons testifies that “[o]ther features of formulation D disclosed by
`Park include . . . an open frontal area of 70–85%, ‘and desirably about 73.8
`percent.’” Ex. 1003 ¶ 105 (quoting Ex. 1010, 7:15–18). But the cited
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`after drying and firing (Ex. 1010, 7:15–18), the reference does not give us
`any reason to conclude that voidages percentage is a property of the
`honeycomb that may be tuned to whatever value is desired. Nor does BASF
`or Mr. Lyons provide any argument to that effect.
`Absent any disclosure of the voidage percentage of a honeycomb
`made from Park’s Formulation D, or any evidence that a person of skill in
`the art would have been able to modify Formulation D to achieve Park’s
`preferred voidages of 73.8%, a key element of BASF’s unpatentability
`analysis is unsupported. As Ingevity demonstrates, even a slight
`modification in the voidages percentage—to 70%, still within Park’s broad
`preferred range (Ex. 1010, 7:15–18)—when applied to Mr. Lyon’s
`calculations, gives an IAC of 37 g/L, above the claimed IAC level for the
`subsequent absorption volume. Prelim. Resp. 51–52.
`Finally, Ingevity persuasively argues that BASF’s reliance on BAX
`1500 as a starting point for its IAC analysis is flawed. Id. at 45, 49. At the
`outset, we note that BASF does not argue that a person of ordinary skill in
`the art would have used BAX 1500 in Park’s Formulation D; rather, BASF’s
`argument is that even if BAX 1500 were to be used, it would not result in an
`IAC above the 35 g/L required by the claims. Pet. 39–40. Central to
`BASF’s argument is that BAX 1500 was the “highest-known capacity
`carbon” (id.)—in other words, if the voidages of Park’s honeycomb would
`be sufficient to bring BAX 1500’s IAC below 35 g/L, then it would be
`
`
`portion of Park is not specific to Formulation D, and in fact appears in
`Park’s specification well before the discussion of the Examples where
`Formulation D is first mentioned. Mr. Lyons’ testimony on this point
`appears to be in error.
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`sufficient for any other carbon that the skilled artisan would select. Mr.
`Lyons echoes this language, testifying that a “honeycomb would have an
`IAC of less than 35 g/L even if it was created exclusively with the activated
`carbon of the highest possible IAC known at the time of the ’844 patent,”
`apparently referring to BAX 1500. Ex. 1003 ¶ 111.
`The flaw with BASF’s argument on this point, as Ingevity observes
`(Prelim. Resp. 50), is that the record lacks any credible evidence11 that BAX
`1500 was the highest-IAC carbon known at the time of the invention. While
`BAX 1500 certainly has the highest IAC of any carbon disclosed in the ’844
`patent, on this record we cannot extrapolate beyond that disclosure to all
`activated carbons known at the time of the invention. We cannot conclude,
`therefore, than any activated carbon that a person of skill in the art would
`have selected to use in Park’s Formulation D necessarily would have had an
`IAC below that of BAX 1500.
`Each of the faults discussed above casts substantial doubt on BASF’s
`theory of obviousness; together, they are fatal to it. Even allowing for the
`fact that this is a preliminary proceeding and an incomplete record, the
`evidence provided with the Petition is wholly lacking in several key
`respects. We cannot conclude that BASF has established a reasonable
`likelihood that a skilled artisan attempting to create Park’s honeycomb from
`
`
`11 To the extent Mr. Lyons’ testimo
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