UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`TELEBRANDS CORP.,
`Petitioner
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner
`_______________________
`
`Case PGR2016-00030
`U.S. Patent 9,242,749
`_______________________
`
`DECLARATION OF BARRY M. KUDROWITZ
`
`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`1 of 67
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`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`TELEBRANDS CORP.,
`Petitioner
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner
`_______________________
`
`Case PGR2016-00030
`U.S. Patent 9,242,749
`_______________________
`
`DECLARATION OF BARRY M. KUDROWITZ
`
`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`1 of 67
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`1.
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`I, Barry M. Kudrowitz, have been retained as an expert in this
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`proceeding by counsel for Patent Owner Tinnus Enterprises, LLC and ZURU Ltd.
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`(collectively “Patent Owner” or “Tinnus”).
`
`2.
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`I have been asked to provide this declaration in rebuttal of arguments
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`made by Petitioner Telebrands Corp. in its Petition for Post-Grant Review Pursuant
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`to 35 U.S.C. §§ 312-328 and C.F.R. §42.200 et seq., (Paper 1, “Pet.”). I have been
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`asked to offer my opinion regarding the validity of certain claims of United States
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`Patent No. 9,242,749 (the “’749 patent”), entitled “System and Method for Filling
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`Containers with Fluids.”
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`3.
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`In connection with preparing this declaration, I have reviewed the
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`materials listed in Exhibit A, attached hereto.
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`QUALIFICATIONS
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`4.
`
`I have a Ph.D. of Mechanical Engineering from the Massachusetts
`
`Institute of Technology (MIT). Prior to that I received a Masters of Mechanical
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`Engineering from MIT and a Bachelor of Science in Mechanical Engineering from
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`the University of Central Florida, graduating Summa Cum Laude. My Masters
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`Thesis, entitled An Exploration of Concepts for Projectile Toys, was specifically
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`on the process of designing conceptual foam and water projectile toys. I worked
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`closely with Hasbro Inc. for two years developing new technologies for Nerf brand
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`and Super Soaker brand products. I am listed as an inventor on US Patent Number
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`
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`7,673,625 Toy Projectile Launching Device as a result of this work with Hasbro.
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`This technology was implemented in the Nerf Atom Blaster toy, which was on the
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`market in 2006. I am also a listed inventor on an unrelated patent application for
`
`an Endoscopic Biopsy Needle Design. I have developed a course called Toy
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`Product Design, which I have taught for twelve years at both the Massachusetts
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`Institute of Technology and the University of Minnesota. In this class, I teach a
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`toy design process to students in engineering, design and business disciplines. I
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`regularly speak nationally and internationally about creative product design and
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`designing for play. I am currently an Assistant Professor and the Director of
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`Product Design at the University of Minnesota in the College of Design. A copy
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`of my curriculum vitae is attached as Exhibit B.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`5.
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`I have been informed that a validity analysis of patent claims must be
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`undertaken from the perspective of what would have been known or understood by
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`someone of ordinary skill in the art at the time the application for the patent-in-suit
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`was filed.
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`6.
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`I have also been informed that factors that may be considered in
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`determining level of ordinary skill in the art include the education level of the
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`inventor, the type of problems encountered in the art, prior art solutions to those
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`problems, the rapidity with which innovations are made, the sophistication of the
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`technology, and the educational level of active workers in the field.
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`7.
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`Petitioner has suggested that a person of ordinary skill in the art
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`(“POSA”) would have been “a person having a general knowledge about and
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`experience with expandable containers, including without limitation balloons, and
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`at least an associate’s degree in a technical science or engineering.” (Pet., Paper 1,
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`at 12; Ex. 1027 at ¶¶ 13-14.) I disagree with Petitioner’s assessment of a person
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`having ordinary skill in this field of art because the minimum level of skill is too
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`low, and it sets forth no maximum level of skill.
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`8.
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`The ’749 patent describes several possible fields of application
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`including toy and medical applications. It is my opinion that in each of these fields
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`a POSA would have some experience designing mechanical devices rather than
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`merely “general knowledge about and experience with expandable containers.”
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`Under Petitioner’s proposed definition, anyone who has interacted with a balloon
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`would have a “general knowledge about and experience with expandable
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`containers.” Thus any layman (children included) would be considered a POSA,
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`given this component of Petitioner’s definition.
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`9.
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`I have taught interdisciplinary university classes, specifically in toy
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`product design, for 12 years. The students in this course are typically
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`upperclassmen representing dozens of different 4-year bachelor degree programs.
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`Developing an invention of this nature would not come easily to the students who
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`are not in the mechanical engineering degree program. Students in other science
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`and engineering disciplines outside of mechanical engineering such as electrical
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`engineering or chemistry typically have difficulty understanding and designing
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`mechanical product concepts. This invention involves an understanding of fluids,
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`forces, and mechanical design. A POSA with regards to this invention would
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`require a 4-year Bachelor’s Degree or equivalent industrial experience in
`
`mechanical engineering, physics, or a similar engineering discipline.
`
`10. While I have heard of designers of medical device technology being
`
`inspired by design elements from past experience with toys, I have never heard of a
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`toy designer without medical device design experience, in either academia or
`
`elsewhere, using medical technology design elements to develop toys.
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`11. Petitioner’s level of ordinary skill is unreasonable for the additional
`
`reason that it does not limit the level to that of ordinary skill. Petitioner’s proposed
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`level of ordinary skill would include individuals with Ph.Ds in the sciences,
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`geniuses, and Nobel laureates. These individuals would not have ordinary skill but,
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`rather, extraordinary skill in the art, thus Petitioner’s definition requires limitation.
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`It should be understood that the level of skill I define in the preceding paragraphs,
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`and apply throughout this declaration, falls within the broad definition provided by
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`Petitioner.
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`LEGAL PRINCIPLES
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`A. Obviousness
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`12.
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`I have been informed by counsel that a patent claim is invalid for
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`obviousness only if each and every element of the claimed invention is found in a
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`combination of prior art references and the differences between the claimed
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`invention and the prior art are such that the subject matter as a whole would have
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`been obvious to one of ordinary skill in the art at the time of the invention.
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`13.
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`I have been informed by counsel that a combination of prior art
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`references may be obvious if, in the combination, the prior art references merely
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`perform their established functions. However, I have also been informed by
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`counsel that if a combination of prior art references would result in a prior art
`
`device being unsatisfactory for its intended purpose, there is no motivation to
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`combine the references. I have also been informed that if prior art teaches away
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`from a combination, then such teaching away shows that the combination is
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`nonobvious.
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`B.
`
`Inherency in an Obviousness Analysis
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`14.
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`I have been informed by counsel that, to rely on inherency to establish
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`the existence of a claim limitation in the prior art in an obviousness analysis, the
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`limitation must necessarily be present or the natural result of the combination of
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`elements explicitly disclosed by the prior art. I have also been informed that the
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`mere possibility that the limitation could be met by the proposed combination of
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`teachings in the prior art is insufficient to establish a limitation via inherency.
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`C.
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`Indefiniteness and Enablement
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`15.
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`I am informed that a patent may be found invalid for indefiniteness
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`only if its claims, read in light of the rest of the specification of the patent, and the
`
`prosecution history, fail to inform, with reasonable certainty, those skilled in the art
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`about the scope of the invention.
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`16.
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`I am also informed that a patent meets the enablement requirement
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`when one skilled in the art, after reading the specification, could practice the
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`claimed invention without undue experimentation.
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`D.
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`Prior Art
`
`17.
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`I am informed that “prior art” refers to information that was known
`
`before the effective filing date of the patent application and that therefore can
`
`establish that the claimed inventions were obvious. Prior art information
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`encompasses any printed publication in this or a foreign country as well as any
`
`public use or sale in the U.S. of the claimed subject matter. I am also informed
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`that a patent application may, in certain circumstances claim priority to an earlier
`
`filed provisional or non-provisional application and have as its effective filing date
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`the filing date of the earlier filed application. Accordingly, it is my understanding
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`that any reference that is not dated before the effective filing date of the patent
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`cannot be prior art to the patent for purposes of invalidating the patent.
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`18.
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`It is my understanding that the effective filing date of the ’749 Patent
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`is February 7, 2014.
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`19.
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`I am informed that if Petitioner did not rely on any prior art or issue
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`other than that which was considered by the USPTO examiner, Petitioner has the
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`added burden of overcoming the deference that is due to a qualified government
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`agency presumed to have properly done its job. In the present case, I understand
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`that each prior art reference serving as a basis for trial institution except the Air
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`Force 4 Inflator reference was previously considered by the examiner. (Ex. 1001,
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`p. 2.)
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`CLAIM CONSTRUCTION
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`A.
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`“Common Face”
`
`Claim Term
`common face
`
`Petitioner Construction
`“a planar portion of an object
`bounded by an edge or other
`geometric transition”
`
`
`
`Patent Owner Construction
`Plain and ordinary meaning
`without any planar limitation, but
`if the Board believes a
`construction is necessary, it
`should be “a shared outer surface
`of the housing”
`
`20. A POSA would have readily discerned the meaning of “common
`
`face,” and the language of the claim itself most accurately conveys the meaning the
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`term would have had to such a person. Patent Owner’s proposed construction, “a
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`shared outer surface of the housing,” correctly captures the meaning “common
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`face” would have had to a POSA. The scope, though broad, is not unlimited,
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`however. “Common face” conveys the idea that the holes extend through a shared
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`outer surface of the housing and that the hollow tubes extend from the housing in
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`the same general direction. If the Board deems a construction of this term to be
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`necessary, Patent Owner’s proposed construction accurately reflects the plain and
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`ordinary meaning of the term as it would have been understood by a POSA. Patent
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`Owner’s proposed construction is also consistent with the specification, which
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`expressly discloses non-planar (conical, etc.) embodiments of a common face of
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`the housing. (Ex. 1001 at 6:17-22.)
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`21. There are several problems with Petitioner’s proposed construction.
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`First, a POSA would not have understood “common face” to require that it be
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`planar or that it be bounded by an edge or other geometric transition. Petitioner’s
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`construction is overly geometrical/mathematical, in the context of the ’749 Patent.
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`In everyday usage, “face” is often used to mean something other than a planar
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`surface bounded by an edge or other geometric transition. For example, a mountain
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`is often referred to as having a “face” (e.g., the North Face of Mt. Everest).
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`Second, Petitioner’s construction is inconsistent with the specification and
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`represents an attempt to read into claim 1 a specific embodiment shown in FIGS. 1
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`and 2 that happens to have a planar common face. As discussed above, the
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`specification discloses other embodiments in which the housing has a non-planar
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`(conical, etc.) common face.
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`22.
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`I also disagree with Petitioner’s interpretation of the prosecution
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`history of the ’066 Patent relative to the Boise reference. The holes in Boise do not
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`lie in the horizontal plane that Telebrands indicates in its annotated drawing (Pet.
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`at 18). Rather, the holes actually lie in a vertical plane, as shown in the following
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`annotated reproduction of Boise, FIG. 5 (the holes at the ends of the tubes on the
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`opposite sides of the cylindrical housing lie in a similar vertical plane):
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`In that vertical plane, there is not a plurality of holes extending through a common
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`face of the cylindrical housing at a second end of the housing. Therefore, Patent
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`Owner’s proposed construction of “common face” is, in my opinion, consistent
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`with the Examiner’s comments in connection with the Examiner’s amendment that
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`distinguished Boise. (See Ex. 1019 at 111-12.)
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`B.
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`“Second End”
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`Claim Term
`second end
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`Petitioner Construction
`none
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`
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`Patent Owner Construction
`“an outer surface of the housing
`distinct from the first end”
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`23. Claim 1 recites, “a housing comprising an opening at a first end and a
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`plurality of holes extending through a common face of the housing at a second
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`end.” Thus, claim 1 recites a “first end” that has “an opening” and a separate
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`“second end”—a portion of the housing that includes the recited “common face”
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`(shared outer surface of the housing) and the “holes” that extend through it. The
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`specification consistently identifies the “second end” as being an outer surface of
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`the housing that is distinct from the “first end” (the end having an opening for
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`connection with a hose or other filling apparatus). (See Ex. 1001 at 2:5-15, 31-35,
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`39-41; Id. at 4:28-31, FIGS. 1-2.)
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`24.
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`In the context of the ’749 Patent’s claims and specification, a POSA
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`would have understood “second end” in accordance with Patent Owner’s proposed
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`construction: “an outer surface of the housing distinct from the first end.”
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`C.
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`“Elastic Fastener”
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`Claim Term
`elastic fastener
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`
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`Petitioner Construction
`its ordinary and customary
`meaning, i.e., an elastic
`element for attaching
`things together
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`Patent Owner Construction
`“an elastic element for attaching
`things together”
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`25.
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`It is my opinion that a POSA would have readily understood the
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`meaning of “elastic fastener,” and Patent Owner’s proposed construction captures
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`that meaning. Patent Owner’s proposed construction is also consistent with how
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`the term “elastic fastener” is used in the specification: “. . . each elastic fastener
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`clamping each container to a corresponding hollow tube.” (Ex. 1001, Abstract.) I
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`understand that Petitioner has proposed a similar construction.
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`D.
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`“At Least Partially Filling”
`
`Claim Term
`at least
`partially filling
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`Petitioner Construction
`none
`
`
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`Patent Owner Construction
`Plain and ordinary meaning, but
`if the Board decides that a
`construction is necessary, it
`should be “adding an amount of
`fluid”
`
`26.
`
`It is my opinion that a POSA would have readily understood “at least
`
`partially filling” a container to mean “adding at least some fluid” to the container,
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`and that meaning is reflected in Patent Owner’s proposed construction. Patent
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`Owner’s proposed construction is also consistent with passages in the specification
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`discussing containers that, though they contain an amount of fluid, are not
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`necessarily filled to their maximum capacity (i.e., they are not “full”). (See Ex.
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`1001 at 3:39-42, 3:63-65, 4:21-22, and 4:52-57.)
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`E.
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`“Sufficiently Limited”
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`Claim Term
`sufficiently
`limited
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`Petitioner Construction
`none
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`
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`Patent Owner Construction
`“the restriction of the elastic
`fastener is such that the container
`detaches upon at least partially
`filling, shaking, or both”
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`27.
`
`It is my opinion that a POSA would have interpreted “sufficiently
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`limited” as reflected in Patent Owner’s proposed construction because of the
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`express claim language that immediately follows it: “to permit its respective
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`container to detach from its respective tube upon one or more of (1) at least
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`partially filling the container with a fluid and (2) shaking the housing.” In my
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`opinion, that meaning would have been clear to a POSA. Patent Owner’s
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`construction is also consistent with the specification’s discussion of different ways
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`in which the containers detach, depending on the particular embodiment. (See Ex.
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`1001 at 3:50-65.)
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`28.
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`In the limitation “the restriction of each elastic fastener being
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`sufficiently limited to permit its respective container to detach from its respective
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`tube upon one or more of (1) at least partially filling the container with fluid and
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`(2) shaking the housing,” the word “upon” is important because it would have
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`indicated to a POSA that detachment occurs in response to and at the instant that
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`one or both of the recited conditions are satisfied. Therefore, in my opinion, a
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`restriction of the elastic fastener that requires something in addition to partially
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`filling and/or shaking would not fall within the scope of claim 1 because
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`detachment would, in that case, not occur “upon” partially filling and/or shaking,
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`as the claim requires.
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`F.
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`All Other Claim Terms
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`29.
`
`It is my opinion that all other terms in claim 1 of the ’749 Patent
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`should be given their respective plain and ordinary meanings as they would have
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`been understood by a POSA.
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`ANALYSIS
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`A. Claim 1 Is Not Indefinite (Ground 1)
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`
`
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`1.
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`“Sufficiently Limited”
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`30.
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`I understand Petitioner argues that the following language in claim 1
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`(the “Sufficiently Limited Limitation”) is indefinite: “each elastic fastener
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`configured to restrict detachment of its respective container from its respective
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`tube . . ., the restriction of each elastic fastener being sufficiently limited to permit
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`its respective container to detach from its respective tube upon one or more of (1)
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`at least partially filling the container with a fluid and (2) shaking the housing.”
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`(Pet. at 23.) I disagree. In my opinion, the above limitation is sufficiently bounded
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`to inform a POSA about the scope of the invention with reasonable certainty.
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`31. First, regarding “at least partially filling,” that phrase is sufficiently
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`bounded. A POSA—a layperson, even—would readily have understood that “at
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`least partially filling” means adding at least some fluid to the container up to and
`
`including its maximum capacity. In the case of an expandable container like a
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`balloon, that maximum capacity is the point just prior to the container bursting.
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`That meaning is captured in Patent Owner’s proposed construction, “adding an
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`amount of fluid.”
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`32. The recited conditions for detachment are also sufficiently bounded to
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`inform a POSA which apparatuses would infringe and which would not. Below, I
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`consider some specific scenarios.
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`33. First, if a container detaches from its tube upon being at least partially
`
`filled, the limitation is met. As I mentioned above, the word “upon” is important,
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`in this context, because it conveys that detachment occurs in response to and at the
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`instant the condition is met.
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`34. Second, if a container detaches from its tube in response to the
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`housing being shaken (i.e., an acceleration is applied to the housing), regardless of
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`whether the container has had any fluid added to it or not, the limitation is met.
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`35. Third, if a container detaches from its tube in response to the housing
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`being shaken while it is in a condition of being at least partially filled (refer to
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`Patent Owner’s construction of “at least partially filling” above), the limitation is
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`met.
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`36. On the other hand, the limitation would not be met where a container
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`detaches from its tube without being at least partially filled and without the
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`housing being shaken. In other words, if neither the “at least partially filling”
`
`condition nor the “shaking the housing” condition is met, yet the container
`
`detaches anyway, there would be no infringement. In this situation, the
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`“restriction” provided by the elastic fasteners is less than the lower bound for
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`infringement.
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`37. The limitation also would not be met where the container does not
`
`detach from its tube despite being filled with fluid up to and including its
`
`maximum capacity (a point just prior to bursting, for an expandable container) and
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`the maximally filled container still does not detach in response to the housing
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`being shaken. In such a scenario, the container may cling to its tube in spite of the
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`shaking, or one of the components (for example the container, the fastener, or the
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`tube) may be destroyed, thereby preventing the container from detaching from its
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`tube. Under this scenario, the “restriction” provided by the elastic fasteners is
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`greater than the upper bound for infringement.
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`38. For at least the above reasons, it is my opinion that the Sufficiently
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`Limited Limitation does not render claim 1 indefinite.
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`2.
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`“Shaking”
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`39.
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`I understand that Petitioner also argues that the recited “shaking”
`
`renders claim 1 indefinite. (Pet. at 24-28.) “Shaking” has a clear meaning
`
`(“applying an acceleration”) that would have been well understood by a POSA.
`
`This term is also discussed in the specification, and Patent Owner’s proposed
`
`construction is consistent with how the term is used there. (See Ex. 1001 at 3:50-
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`53.)
`
`40. Petitioner’s arguments appear to boil down to the idea that, since the
`
`claim does not specify the exact measure of acceleration (sometimes called g-
`
`force) to be applied, Petitioner cannot tell whether or not a hypothetical elastic
`
`fastener is strong enough. In my opinion, the question is really whether the
`
`containers can be detached by shaking, consistent with the other recited limitations.
`
`Elastic fasteners configured to hold their containers onto their tubes in spite of
`
`extreme shaking would not meet the limitation. Elastic fasteners that break as a
`
`result of extreme shaking would not meet the limitation. An apparatus employing
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`containers or tubes that break due to extreme shaking also would not meet the
`
`limitation.
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`41.
`
`It is my opinion that the recited “shaking” does not render claim 1
`
`indefinite.
`
`B. Claim 1 Is Not Obvious Over the Cited Prior Art (Grounds 2-6)
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`1.
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`Cooper in View of Saggio and Lee or Donaldson (Grounds 2 and
`3)
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`42.
`
`It is my opinion that neither proposed combination (Cooper in view of
`
`Saggio and Lee nor Cooper in view of Saggio and Donaldson) renders claim 1
`
`obvious because neither combination teaches or suggests all of the limitations
`
`recited in claim 1.
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`43. The proposed combinations do not meet the following limitation
`
`recited in claim 1 (the “Sufficiently Limited Limitation”): “the restriction of each
`
`elastic fastener being sufficiently limited to permit its respective container to
`
`detach from its respective tube upon one or more of (1) at least partially filling the
`
`container with a fluid and (2) shaking the housing.”
`
`44.
`
`I disagree with Petitioner that Saggio’s internal membrane 18 is
`
`equivalent to Lee’s rubber band or Donaldson’s O-ring because Saggio’s internal
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`membrane 18 is not an “elastic fastener.” It does not “attach things together.”
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`Saggio also does not disclose that the containers detach upon being at least
`
`partially filled (in response to and at the instant that condition is met) and does not
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`disclose detachment of the balloons by shaking Saggio’s filling apparatus (the
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`alleged “housing”).
`
`45. Lee does not teach detachment of the containers upon at least partially
`
`filling or shaking. Instead, Lee teaches that an additional force different from
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`“shaking the housing” is applied via mechanical actuation. Specifically, Lee
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`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`18 of 67
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`
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`
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`teaches that an outer guide pipe 4 is used to push an air-filled balloon and rubber
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`band off of inner guide pipe 3, detaching and sealing the balloon. (Ex. 1010 at ¶
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`[0033].) I disagree with Petitioner that the application of this mechanically
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`actuated force is equivalent to the recited “shaking” because claim 1 requires that
`
`the housing be shaken. The force applied via outer guide pipe 4 acts on the balloon
`
`and rubber band, not the housing (the structure to which the balloon and rubber
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`band are attached). Therefore, the force applied in Lee and the recited “shaking”
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`are not equivalent.
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`46. Donaldson teaches that an air-filled balloon is forced off of its tube
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`through mechanical actuation (the movement of two housing portions relative to
`
`one another). (Ex. 1011 at 4:53-5:6.) Donaldson does not teach or suggest
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`detachment upon at least partial filling, nor does it teach or suggest detachment
`
`upon the housing being shaken. In fact, shaking would be unlikely to succeed with
`
`an air-filled balloon due to the low mass of the fluid.
`
`47.
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`I have been informed by counsel that, to rely on inherency to establish
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`the existence of a claim limitation in the prior art in an obviousness analysis, the
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`limitation must necessarily be present or the natural result of the combination of
`
`elements explicitly disclosed by the prior art. I have also been informed that the
`
`mere possibility that the limitation could be met by the proposed combination of
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`teachings in the prior art is insufficient to establish a limitation via inherency.
`
`
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`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`19 of 67
`
`
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`
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`48. Based on my understanding of the standard for establishing the
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`presence of a limitation via inherency, Petitioner’s arguments regarding Lee and
`
`Donaldson relative to the Sufficiently Limited Limitation fail to meet that standard.
`
`49. Combining the teachings in Cooper, Saggio, and Lee would not
`
`naturally result in the Sufficiently Limited Limitation being met. Lee discloses a
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`rubber band that is intended to be difficult to dislodge without the deliberate
`
`application of a force to push the balloon and rubber band free of inner guide pipe
`
`3: “A rubber band 2 having a high elastic force is provided in the pipe for fixing a
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`balloon thereto.” (Ex. 1010 at ¶ [0031] (emphasis added).) Since Lee is directed to
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`an endoscopic surgical apparatus, there are potentially grave consequences if the
`
`rubber band securing the balloon to inner guide pipe 3 is inadvertently detached.
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`Accordingly, the rubber band is specifically disclosed as having a “high elastic
`
`force” that can only be detached by mechanical actuation of a pushing mechanism.
`
`For Lee’s rubber band to meet the Sufficiently Limited Limitation, it would have
`
`to be specifically engineered to supply the correct amount of restriction—at least
`
`within an acceptable range, as discussed above. Such engineering would not
`
`naturally result from combining the teachings in Cooper, Saggio, and Lee.
`
`50. Similarly, combining the teachings in Cooper, Saggio, and Donaldson
`
`would not naturally result in the Sufficiently Limited Limitation being met. Like
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`Lee’s rubber band, Donaldson’s O-ring would have to be specifically engineered to
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`
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`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`20 of 67
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`supply the correct amount of restriction—at least within an acceptable range—to
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`meet the Sufficiently Limited Limitation. Such engineering would not naturally
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`result from the proposed combination.
`
`51.
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`In my opinion, a POSA would not have been motivated to combine
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`the teachings in Cooper, Saggio, and Lee or Donaldson. Cooper teaches a lawn
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`sprinkler whose purpose is to spray water over an area of ground. There is no
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`disclosure in Cooper regarding containers. Combining Saggio’s balloons with
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`Cooper’s sprinkler would involve both covering Cooper’s tubes with balloons and
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`inverting Cooper’s sprinkler. Those modifications would render Cooper’s sprinkler
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`unsatisfactory for its intended purpose; therefore, there would have been no
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`motivation for a POSA to make the proposed combination.
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`52. Even if a POSA had somehow been motivated to combine Cooper and
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`Saggio, such a person would not have been motivated to add a rubber band (Lee)
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`or O-ring (Donaldson) to the combination. Saggio teaches a purportedly self-
`
`sealing balloon. A POSA in possession of such self-sealing balloons would not
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`have been motivated to add an external elastic fastener because it would be
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`redundant (unnecessary) and would actually increase the parts count and possibly
`
`require additional labor and/or manufacturing processes to install the elastics.
`
`53.
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`In my opinion, based on my experience with toy design and the toy
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`industry, it is also unlikely that a POSA seeking to solve a problem concerning
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`
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`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`21 of 67
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`how to attach water balloons to a filling apparatus would have looked to a
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`reference from the field of medicine like Lee.
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`2.
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`Saggio (Ground 4)
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`54.
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`It is my opinion that Saggio does not render claim 1 obvious because
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`Saggio does not teach or suggest all of the limitations recited in claim 1. In the
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`analysis that follows, I will refer to the following reproduction of Saggio’s FIGS. 2
`
`and 7:
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`
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`
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`55.
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`I understand that Petitioner argues that inner membrane 18 in Saggio’s
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`purportedly self-sealing balloon meets the recited “elastic fasteners.” (Pet. at 53,
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`58-60.) I disagree that inner membrane 18 is an “elastic fastener.”
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`56. Saggio discloses a self-sealing balloon 10 that, based on Saggio’s
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`prosecution history, I understand is not enabled. That purportedly self-sealing
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`balloon includes an inner membrane 18. Patent Owner’s proposed construction of
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`
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`Tinnus Exhibit 2010
`Telebrands v. Tinnus
`PGR2016-00030
`22 of 67
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`
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`
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`“elastic fastener” is “an elastic element for attaching things together.” I understand
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`that the Board applied a similar construction in the PGR of related U.S. Patent No.
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`9,051,066 (PGR2015-00018). The inner membrane 18 in Saggio does not “attach[]
`
`things together.” Instead, according to Saggio’s description, a distal portion of it
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`referred to as “closure member 24” presses against the inside of the wall 12 of
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`balloon 10 to seal the balloon after it has been filled with water. (Ex. 1009 at ¶
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`[0019].) Saggio thus teaches that the inner membrane 18, under certain conditions,
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`presses against the wall 12 of balloon 10, but there is no teaching or suggestion in
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`Saggio that inner membrane 18 “attach[es] things together,” as required by claim
`
`1.
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`57.
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`I also disagree with Petitioner’s assertion that the inner membrane 18
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`in Saggio acts as an “elastic fastener” because it allegedly exerts a clamping force
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`to help hold the neck of a balloon 10 onto the tip 37 of its lateral conduit 36 while
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`the balloon is being filled. (Pet. at 58-60.) Referring once again to FIGS. 2 and 7
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`from Saggio above, if one imagines the neck of balloon 10 being stretched over a
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`tip 37 of a lateral conduit 36, the tip 37 would then be inside the neck of the
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`balloon and occupy that space. That means the portion of inner membrane 18
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`within the neck of the balloon 10 would be pressed flush against the inside wall of
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`the neck of the balloon by the tip 37, preventing wa
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