Trials@uspto.gov
`571.272.7822
`
`
`
`Paper No. 10
`Filed: February 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TELEBRANDS CORP.,
`Petitioner,
`
`v.
`
`TINNUS ENTERPRISES, LLC,
`Patent Owner.
`_______________
`
`Case PGR2017-00040
`Patent 9,682,789 B2
`_______________
`
`
`
`Before MICHAEL W. KIM, FRANCES L. IPPOLITO, and
`KEVIN W. CHERRY, Administrative Patent Judges.
`
`IPPOLITO, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Post-Grant Review
`37 C.F.R. § 42.208
`
`
`

`

`PGR2017-00040
`Patent 9,682,789 B2
`
`
`INTRODUCTION
`I.
`Telebrands Corp. (“Petitioner”) filed a Petition (Paper 1, “Pet.”) for
`post-grant review of claims 1–23 of U.S. Patent No. 9,682,789 B2
`(Ex. 1001, “the ’789 patent”). Tinnus Enterprises, LLC (“Patent Owner”)
`filed a Preliminary Response (Paper 6, “Prelim. Resp.”). We have authority
`under 35 U.S.C. § 324, which provides that a post-grant review may be
`instituted only if “the information presented in the petition . . .
`demonstrate[s] that it is more likely than not that at least 1 of the claims
`challenged in the petition is unpatentable.” See also 37 C.F.R. § 42.4(a)
`(“The Board institutes the trial on behalf of the Director”). We exercise our
`discretion and deny certain grounds under 35 U.S.C. § 325(d), and determine
`that for the remaining grounds, the information presented in the Petition
`does not demonstrate that it is more likely than not that Petitioner would
`prevail in showing that any of the challenged claims are unpatentable.
`Accordingly, we do not institute a post-grant review of any of the challenged
`claims (i.e., claims 1–23) of the ’789 patent.
`
`A. Related Proceedings
`Petitioner indicates that the ’789 patent is involved in Telebrands
`Corp. v. Zuru Ltd., Civil Action No. 2:17-cv-04522-CCC-MF (D.N.J.)
`(“Tinnus IV”). Pet. 2–3.
`In addition, Petitioner identifies the following related
`actions/proceedings:
`• Telebrands Corp. v. Tinnus Enterprises, LLC, No. PGR2015-00018,
`U.S. Patent No. 9,051,066 B1 (PTAB) (“the ’066 Patent PGR”);
`• Telebrands Corp. v. Tinnus Enterprises, LLC, No. PGR2016-00030,
`U.S. Patent No. 9,242,749 B2 (PTAB) (“the ’749 Patent PGR”);
`• Telebrands Corp. v. Tinnus Enterprises, LLC, No. PGR2016-00031,
`
`2
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`

`

`PGR2017-00040
`Patent 9,682,789 B2
`
`
`U.S. Patent No. 9,315,282 B2 (PTAB) (“the ’282 Patent PGR”);
`• Telebrands Corp. v. Tinnus Enterprises, LLC, No. PGR2017-00015,
`U.S. Patent No. 9,527,612 B2 (PTAB) (“the ’612 Patent PGR”);
`• Telebrands Corp. v. Tinnus Enterprises, LLC, No. PGR2017-00024,
`U.S. Patent No. 9,533,779 B2 (PTAB) (“the ’779 Patent PGR”);
`• Tinnus Enterprises, LLC et al. v. Telebrands Corp., Civil Action No.
`6:15-cv-00551-RWS-JDL (E.D. Tex.) (“Tinnus I”);
`• Tinnus Enterprises, LLC, et al. v. Telebrands Corp., Civil Action No.
`6:16-cv-00033-RWS-JDL (E.D. Tex.) (“Tinnus II”);
`• Tinnus Enterprises, LLC et al. v. Wal-Mart Stores, Inc., et al., Civil
`Action No. 6:16-cv-00034-RWS-JDL (E.D. Tex.)
`(“Retailer Action I”);
`• Tinnus Enterprises, LLC v. Wal-Mart Stores, Inc., et al., Civil Action
`No. 6:17-cv-00361-RWS-JDL (E.D. Tex.)
`(“Retailer Action II”);
`• Tinnus Enterprises, LLC, et al. v. Telebrands Corp., Civil Action No.
`6:17-cv-00170-RWS-JDL (E.D. Tex.) (“Tinnus III”);
`• Tinnus Enterprises, LLC, et al. v. Telebrands Corp., et al., No. 16-
`1410 (Fed. Cir.) (“Tinnus I PI”); and
`• Tinnus Enterprises, LLC, et al. v. Telebrands Corp., No. 17-1175
`(Fed. Cir.) (“Tinnus II PI”).
`
`Pet. 3–4.
`There are also two additional petitions for post-grant review currently
`pending—PGR2017-00051 and PGR2017-00052. PGR2017-00051
`challenges the ’612 patent (also the subject of PGR2017-00015). PGR2017-
`00052 challenges U.S. Patent No. 9,533,779 B2 (also the subject of the
`petition in PGR2017-00024).
`
`The ’789 Patent
`B.
`The ’789 patent, titled “SYSTEM AND METHOD FOR FILLING
`
`CONTAINERS WITH FLUIDS,” issued June 20, 2017, from U.S. Application
`
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`PGR2017-00040
`Patent 9,682,789 B2
`
`No. 14/713,146 (“the ’146 application”), filed May 15, 2015. Ex. 1001, at
`(54), (10), (21), (22). The ’146 application is a continuation of U.S.
`Application No. 14/492,487, filed on September 22, 2014, which issued as
`the ’066 patent. Id. at (63). The ’789 patent further claims the benefit of
`U.S. Provisional Application No. 61/942,193, filed on February 20, 2014,
`and U.S. Provisional Application No. 61/937,083, filed on February 7, 2014.
`Id. at 1:7–14.1
`The ’789 patent is directed generally to systems and methods for
`filling containers with fluids. Ex. 1001, Title. Figure 1 of the ’779 patent is
`reproduced below.
`
`
`
`
`1 Because the earliest possible effective filing date for the ’789 patent is after
`March 16, 2013 (the effective date for the first inventor to file provisions of
`the America Invents Act), and this petition was filed within 9 months of its
`issue date, the ’789 patent is eligible for post-grant review. See 35 U.S.C.
`§ 321(c).
`
`4
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`PGR2017-00040
`Patent 9,682,789 B2
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`Figure 1, reproduced above, is a simplified diagram illustrating an
`
`exemplary embodiment of system 10 for filling containers with fluids. Id. at
`1:49–51. As shown in Figure 1, system 10 includes housing 12 removably
`attached to hose 14 at end A and to a plurality of hollow tubes 16 at end B.
`Id. at 2:36–38. A plurality of containers 18, such as water balloons, may be
`clamped to plurality of tubes 16 using elastic valves 20, which may comprise
`elastic fasteners, such as O-rings. Id. at 2:53–61. In one embodiment,
`containers 18 may fall off under gravity; for example, when filled containers
`18 reach a threshold weight, they slip off tubes 16 due to gravity. Id. at 4:7–
`9. “The threshold weight may be based upon the tightness of elastic valves
`20, friction between tubes 16 and containers 18, and force from the weight
`of containers 18 (among other parameters).” Id. at 4:10–13 (emphasis
`omitted). Elastic valves 20 or fasteners may constrict the necks of
`containers 18, sealing them, when the containers slide off tubes 16. Id. at
`4:14–15. In another embodiment, the connecting force holding filled
`containers 18 to tubes 16 may be overcome by an upward acceleration on
`tubes 16, for example, when they are shaken. Id. at 3:55–58.
`
`Illustrative Claim
`C.
`Of the challenged claims, claims 1, 8, and 16 are independent.
`Independent claims 1 and 16, reproduced below, are illustrative of the
`claimed subject matter:
`
`1. An apparatus for simultaneously filling balloons,
`comprising:
`a fitting comprising an inlet and at least four outlets;
`and at least four branch assemblies coupled to the
`fitting, each branch assembly comprising:
`a tube extending from the fitting at a
`respective one of the at least four outlets;
`
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`PGR2017-00040
`Patent 9,682,789 B2
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`
`a balloon with a neck disposed around an end
`of the tube; and
`a fastener attaching the neck of the balloon to
`the end of the tube, the fastener configured to
`restrict detachment of the balloon from the tube and
`to automatically seal the balloon upon detachment
`of the balloon from the tube, the restriction of the
`fastener being limited such that the balloon, if filled
`with a sufficient amount of water, is detachable by
`gravity combined with a manually applied
`acceleration of the tube.
`
`16. An apparatus comprising:
`a fitting configured to couple to a pressurized
`supply of fluid; and
`at least three branch assemblies extending from the
`fitting, each branch assembly comprising:
`a tube coupled to the fitting at a first end;
`a balloon comprising a neck portion having a
`second end of the tube inserted therethrough; and
`a fastener comprising an opening having the
`second end of the tube inserted therethrough, the
`fastener configured to: removably couple the
`balloon
`to
`the
`tube, permit fluid from
`the
`pressurized supply of fluid to pass through the tube
`and into the balloon, and automatically restrict the
`fluid from exiting the balloon through the neck
`portion upon decoupling the balloon and fastener
`from the tube.
`
`D. The Asserted References
`Petitioner relies upon the following references (Pet. 16–19):
`
`Reference
`Cooper
`Saggio
`
`Patent or Pub. No.
`Date
`or Description
`Oct. 27, 1998
`US 5,826,803
`US 2013/0118640 A1 May 16, 2013
`
`Exhibit No.
`Ex. 1030
`Ex. 1012
`
`6
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`

`PGR2017-00040
`Patent 9,682,789 B2
`
`
`US 2005/0004430 A1
`Lee
`Donaldson US 5,014,757
`Weir
`US 6,478,651 B1
`Pomerantz US 5,509,540
`ZORBZ
`YouTube video
`Replicator
`showing prototype of
`video
`ZORBZ Replicator
`Mead
`US 600,967
`
`Jan. 6, 2005
`May 14, 1991
`Nov. 12, 2002
`Apr. 23, 1996
`
`Ex. 1013
`Ex. 1014
`Ex. 1016
`Ex. 1032
`
`Aug. 19, 2014
`
`Ex. 1033
`
`Mar. 22, 1898
`
`Ex. 1038
`
`Petitioner also relies on the Declaration of Dr. Ken Kamrin
`(Ex. 1021).
`
`E. The Asserted Grounds
`Petitioner challenges claims 1–23 of the ’789 patent on the following
`grounds (Pet. 15–17):
`
` Reference(s)
`
` Basis
`
`
`
`
`
`Saggio and Donaldson or
`Mead
`Saggio, Cooper, and
`Donaldson or Mead
`Saggio, Cooper or Weir, and
`Donaldson or Mead
`Saggio, Pomerantz, and
`Donaldson or Mead
`Saggio, Cooper or Weir,
`Pomerantz, and
`Donaldson or Mead
`Zorbz and Donaldson or Mead
`
`§ 112(a) for lack of
`written description
`§ 112(b) for
`indefiniteness
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`7
`
`Claims
`Challenged
`
`5, 12, and 13
`1–7, 12, 17, and
`18
`1, 2, 4, 6–9, 11,
`12, 14–20, 22,
`and 23
`5 and 13
`2, 9, 12, 19, and
`20
`3, 10, and 21
`
`3, 10, and 21
`
`1–23
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`PGR2017-00040
`Patent 9,682,789 B2
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`
`II. ANALYSIS
`
`A. Level of Skill in the Art
`Petitioner asserts that a person of ordinary skill in the art (“POSA”) at
`the time of the effective filing date of the ’789 patent was a person having
`general knowledge about, and experience with, expandable containers,
`including, without limitation, balloons, and at least an associate’s degree in a
`technical science or engineering. Pet. 17 (citing Ex. 102 ¶¶ 10–14).
`For purposes of this Decision, we determine that a POSA would have
`been a person having a general knowledge about, and experience with,
`expandable containers, including, without limitation, balloons, and an
`associate’s degree in mechanical engineering, or the equivalent. This level
`of skill is consistent with the types of problems and solutions described in
`the ’789 patent and cited prior art. For example, the ’789 patent describes a
`fluid inflatable system that uses elastic valve 20A (e.g., mechanical gasket,
`O-ring, etc.) for sealing fluid inside multiple containers (e.g., water
`balloons). See Ex. 1001, 1:18–20, 3:8–14.
`
`B. Claim Construction
`In a post-grant review, the Board gives claim terms in an unexpired
`patent their broadest reasonable interpretation in light of the specification of
`the patent in which they appear. 37 C.F.R. § 42.200(b).
`For the purposes of this Decision, none of our determinations
`regarding Petitioner’s proposed grounds of unpatentability requires us to
`interpret expressly any claim term.
`
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`PGR2017-00040
`Patent 9,682,789 B2
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`
` Basis
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`C. Petitioner’s Obviousness Challenges
`Petitioner presents several obviousness challenges relying on either
`Donaldson or Mead for the “fastener” limitation recited in challenged claims
`1–23. Pet. 15–17, 34–87. More specifically, Petitioner relies on various
`combinations of Saggio, Cooper, Weir, Pomerantz, and Zorbz with
`Donaldson or Mead. Id.
` Reference(s)
`Saggio and Donaldson or
`Mead
`Saggio, Cooper, and
`Donaldson or Mead
`Saggio, Cooper or Weir, and
`Donaldson or Mead
`Saggio, Pomerantz, and
`Donaldson or Mead
`Saggio, Cooper or Weir,
`Pomerantz, and
`Donaldson or Mead
`Zorbz and Donaldson or Mead
`
`Claims Challenged
`1, 2, 4, 6–9, 11, 12, 14–
`20, 22, and 23
`5 and 13
`
`2, 9, 12, 19, and 20
`
`3, 10, and 21
`
`3, 10, and 21
`
`§ 103
`
`Below we discuss Petitioner’s § 103 challenges based on Donaldson
`separately from alternative challenges based on Mead.
`
`1–23
`
`1. Discretion under 35 U.S.C. § 325(d) to Deny Institution
`of Review for Obviousness Challenges based on
`Donaldson
`Our discretion as to whether to institute a post-grant review is guided,
`in part, by 35 U.S.C. § 325(d), which provides: “[T]he Director may take
`into account whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were presented to
`the Office.” 35 U.S.C. § 325(d); see generally Cultec, Inc. v. Stormtech
`
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`Patent 9,682,789 B2
`
`LLC, Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7) (informative),
`Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27,
`2017) (Paper 16) (informative), Unified Patents, Inc. v. Berman, Case
`IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10) (informative); see also
`Neil Ziegmann N.P.Z., Inc. v. Stephens, Case IPR2015-01860, slip op. 6–14
`(PTAB Sept. 6, 2017) (Paper 13) (expanded panel) (explaining the rationale
`and purpose of § 325(d)).
`Our discretion under § 325(d) involves a balance between competing
`interests. See Hospira, slip op. at 18. “‘On the one hand, there are the
`interests in conserving the resources of the Office and granting patent
`owners repose on issues and prior art that have been considered
`previously.’” Id. (quoting Fox Factory, Inc. v. SRAM, LLC, Case IPR2016-
`01876, slip op. at 7 (PTAB Apr. 3, 2017) (Paper 8)). “‘On the other hand,
`there are the interests of giving petitioners the opportunity to be heard and
`correcting any errors by the Office in allowing a patent . . . .’” Id.
`With respect to Petitioner’s obviousness challenges that rely upon
`Donaldson, Patent Owner argues that all of the references asserted (i.e.,
`Saggio, Cooper, Weir, Pomerantz, Zorbz, and Donaldson) by Petitioner in
`the present Petition were considered during prosecution of the ’789 patent.
`See Prelim. Resp. 2–6. More particularly, Patent Owner asserts that the
`same or substantially the same arguments presented in the Petition regarding
`the “fastener” limitation were considered by the Examiner because the
`Examiner expressly discussed Donaldson’s O-ring in the Notice of
`Allowance. Id.
`We agree with Patent Owner that we should exercise our discretion in
`denying institution of review based on Petitioner’s § 103 challenges that rely
`
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`PGR2017-00040
`Patent 9,682,789 B2
`
`on Donaldson for the “fastener” limitations recited in the challenged claims.
`In particular, we agree with Patent Owner that the Examiner considered the
`same or substantially the same art and arguments during prosecution of the
`’789 patent.
`During prosecution of the ’789 patent, the Applicant cancelled
`original claims 1–25, and submitted new claims 26–52. Ex. 1009, 91–96. In
`the Notice of Allowance dated May 15, 2017, claims 26–31, 33–40, 42–45,
`47–50, and 52 were allowed, and issued as claims 1–23 in the ’789 patent.2
`Ex. 1009, 18.
`In allowing these claims, we find that the Examiner considered
`expressly the functional limitations of the recited “fastener,” and discussed
`the teachings of the prior art references, including the combination of Saggio
`and Donaldson. Id. at 21. For example, the Examiner reasoned that
`[l]ines 7-12 of claim 26 and lines 7-11 of claim 34 define the
`force applied by the fastener, and therefore manually holding a
`balloon onto a tube and then manually detaching the balloon by
`ceasing to hold it onto the tube does not fall within the scope of
`this language. Regarding the prior art, Billon (FR 2911512)
`teaches a balloon (2) with an elastic band (11) that automatically
`seals (see English translation). Lee (US 2005/0004430) and
`Donaldson (US 5,014,757) are cumulative with Billon in this
`regard.
`Id. at 20. Additionally, with regard to the inherent properties of elastic
`bands disclosed in the prior art references of record during prosecution of
`the ’789 patent, the Examiner explained that
`[b]ecause it is not true that all elastic bands have the same
`elastic force as an inherent property, it cannot be presumed that
`
`2 Prosecution claims 26, 24, and 43 issued as independent claims 1, 8, and
`16 in the ’789 patent, respectively.
`
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`PGR2017-00040
`Patent 9,682,789 B2
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`
`all elastic bands would function the same way. It is not clear
`that the balloons of Billon or Lee would detach and seal in the
`manner required by the claims even if such balloons were used
`on the device of Boise or Saggio. Although it is seems that, in
`such a combination, there could be some force applied to the
`housing that would be sufficiently large to cause the balloons to
`detach, it is not clear whether applying such a force would cause
`the balloon to detach and seal as required by the claims, or
`instead cause the balloon to rupture, or instead cause the balloon
`to detach from the elastic band in which case the balloon would
`not seal. Because it is not true that all elastic bands have the same
`elastic force as an inherent property, it cannot be presumed that
`all elastic bands would function the same way. The present
`record does not support a conclusion that a combination of the
`fillers of Boise or Saggio with the balloons of Billon, Lee, or
`Donaldson would be capable of functioning as recited in claims
`26 and 34.
`Id. at 21 (emphasis added). Moreover, the Examiner explained that other
`prior art references of record “further evidence that elastic force varies
`among rubber bands.” Id. at 20–21. Specifically, the Examiner found that
`[o]ther prior art discloses balloons with fasteners that are not
`configured to detach at all, such as Weigel (US l,703,463)(figure
`1) and Vanderschuit (US 2006/0291217)(figure 8 and paragraph
`0104). Lee teaches that the balloon is detached manually using
`the front end of the outer guide pipe (4)(paragraph 0033). Lee
`further teaches that the rubber band has a “high elastic force”
`(paragraph 0033), and thus it is clear that elastic force varies
`among rubber bands. Immel (US 6,053,816) at column 2, lines
`23-53 and Lee (US 2004/0159968) at paragraph 0032 further
`evidence that elastic force varies among rubber bands. Immel,
`Lee ’968, Weigel, and Vanderschuit support the conclusion that
`different elastic bands can function differently.
`Id. (emphasis added).
`In addition, the Examiner stated explicitly that “the pending claims
`are not anticipated and not obvious over the prior art of record” and “the
`
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`Examiner has considered all references of record in related applications by
`the same inventor.” Id. at 21 (emphasis added). In this regard, we are
`skeptical that we can come to any other conclusion, other than to find that
`the Examiner explicitly considered the prior art of record in the prosecution
`of the ’789 patent, which included Saggio, Cooper, Weir, Pomerantz, Zorbz,
`and Donaldson. Id. at 19–21, 31–33, 35, 38, 42.
`Further, we note that various documents from other related
`proceedings before the Board, including the Final Written Decision in
`PGR2016-00018, and the Decisions on Institution in PGR2016-00030 and
`PGR2016-00031, were submitted in an Information Disclosure Statement by
`the Applicant. Ex. 1009, 41, 43. These Decisions in PGR2016-00030 and
`PGR2016-00031 addressed obviousness challenges against claims of the
`’749 patent and the ’282 patent based on similar arguments and the same art
`(i.e., Saggio, Cooper, Weir, and Donaldson) at issue in the instant
`proceeding. See PGR2016-00031, Papers 2, 15. The Examiner indicates
`these Decisions were considered. See Ex. 1009, 43. Thus, we observe that
`the Examiner’s reasoning for allowance took into account the art and
`arguments of record, including the Decisions filed in PGR2016-00018,
`PGR2016-00030, and PGR2016-00031, and the disclosure in Saggio,
`Cooper, Lee, Donaldson, Zorbz, Weir, and Pomerantz. See Ex. 1009, 21.
`On the whole, the prosecution history of the ’789 patent reflects that
`the Examiner was presented with, and reviewed all the references relied
`upon for the obviousness challenges based on Donaldson in the instant
`Petition. Further, the Examiner also reviewed similar obviousness
`challenges based on the same art that was presented in PGR2016-00018,
`PGR2016-00030, and PGR2016-00031. Ultimately, we find the Examiner
`
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`determined that, after expressly reviewing all of the aforementioned
`evidence, including the prior art of record in related applications, “the
`pending claims are not anticipated and not obvious over the prior art of
`record.” Ex. 1009, 21. Thus, the interests of finality and conservation of
`resources weigh heavily in favor of denying reconsideration of those same
`references and very same issues.
`Petitioner’s arguments to the contrary are not persuasive. First,
`Petitioner argues that the present record is different from the one before the
`Examiner. Pet. 80. In particular, Petitioner contends that “one of the issues
`in this petition is inherency of the prior art references, which benefits from
`the consideration of expert testimony.” Id. at 88–89. Petitioner asserts that
`Dr. Kamrin’s testimony was not before the Examiner and should, therefore,
`be considered.
`Nonetheless, having reviewed the record, including Dr. Kamrin’s
`testimony, we disagree with Petitioner’s position that institution is
`warranted. During prosecution, the Examiner expressly considered the
`issues of inherency, and offered detailed findings why the functional
`limitations related to the elastic fastener were not necessarily present in the
`art at issue. See Ex. 1009, 19–21. Although not referred to expressly in the
`Examiner’s explanation, the Information Disclosure Sheet considered by the
`Examiner includes the Decisions on Institution in PGR2016-00030 and
`PGR2016-00031, which contain similar explanations of inherency to those
`at issue in this case. See PGR2016-00031, Paper 15, 26–31. Although the
`Examiner’s explanation does not refer to those papers expressly, the fact that
`those papers were listed on an IDS is, nevertheless, circumstantial evidence
`that Petitioner’s inherency arguments were considered when the Examiner
`
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`provided his explanation concerning inherency. See Ex. 1009, 21 (“Because
`it is not true that all elastic bands have the same elastic force as an inherent
`property, it cannot be presumed that all elastic bands would function the
`same way.”).
`Moreover, we are not persuaded that Dr. Kamrin’s testimony
`meaningfully distinguishes the record that is before us from the record that
`was before the Examiner. See, e.g., Ex. 1021 ¶¶ 90–108, 110–118, 175–190.
`For example, Dr. Kamrin testifies, among other things, that
`Figures 2-4 of Donaldson show the balloon as it is being inflated
`with a fluid. The figures indisputably show the balloon clamped
`to the outer surface of the outer-most tube. Figure 5 shows the
`balloon and O-ring detached from the tube, and the O-ring
`sealing the fluid in the balloon. A person of ordinary skill in the
`art, looking at Figures 2-5 would understand that Donaldson
`discloses an O-ring and balloon that detach from a hollow tube
`due to a force, in the form of a pressure differential. As shown
`in the Figures, the balloon and O-ring in Donaldson release from
`the tube before the balloon breaks. Therefore, Ftens > Fconnect.
`Accordingly, Donaldson teaches that the tensile strength of the
`balloon must be greater than the connecting force of the O-ring.
`Therefore, Donaldson’s O-ring is necessarily capable of
`permitting the same balloon to detach by at least partially filling
`the balloon with water. In that situation, Ftens = mass of water
`x gravity. It is simply a different application of the same force.
`Ex. 1021 ¶ 97 (emphasis added). Here Dr. Kamrin’s testimony relies on
`Figures 2–5 of Donaldson. Donaldson has two embodiments, one of which
`is illustrated by Figures 2–5. Figures 2–5 are the only figures that include
`O-ring 20, which is the only element of Donaldson that could plausibly be
`considered an equivalent of elastic band 11 of Billon, to which the Examiner
`found Donaldson “cumulative.” Ex. 1009, 20. Accordingly, we can come to
`no conclusion, other than that, during prosecution, the Examiner expressly
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`considered Donaldson’s O-ring 20 in determining it inherently disclosed the
`features of the claimed fasteners. See, e.g., Ex. 1009, 21 (“Because it is not
`true that all elastic bands have the same elastic force as an inherent property,
`it cannot be presumed that all elastic bands would function the same way.
`The present record does not support a conclusion that a combination of the
`fillers of Boise or Saggio with the balloons of Billon, Lee, or Donaldson
`would be capable of functioning as recited in claims 26 and 34.”).
`Of course, we acknowledge that Dr. Kamrin’s conclusion is different
`from the Examiner’s. We are also mindful that instituting trial on an already
`considered issue solely on the basis of the presence of competing
`conclusions has the potential to eviscerate Section 325(d). See Neil
`Ziegmann N.P.Z., Inc., slip op. at 26 (“To hold otherwise would allow
`Petitioner to make an end-run around Section 325(d) by merely submitting
`any piece of new evidence, no matter how minor or inconsequential.”).
`And, as noted above, policy considerations favor “‘conserving the resources
`of the Office and granting patent owners repose on issues and prior art that
`have been considered previously.’” Hospira, slip op. at 18. To that end,
`where, as here, the competing conclusions are with respect to O-ring 20 of
`Donaldson, the focus of the inquiry should be “on any errors allegedly made
`by the examiner with respect to the consideration of those previously
`presented prior art or arguments.” Neil Ziegmann N.P.Z., Inc., slip op. at 11.
`While Dr. Kamrin, of course, sets out, in great detail, his views on
`how O-ring 20 of Donaldson operates (Ex. 1021 ¶¶ 90–98), it is, at the end
`of the day, rooted in the exact same factual basis, Figures 2–5 of Donaldson,
`that was considered by the Examiner, with no other supporting evidence
`cited by Petitioner. And while Petitioner’s implication is, of course, that the
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`Examiner erred in his/her overall evaluation of O-ring 20, we are
`unpersuaded, on this record, that such an allegation of overall error is
`sufficient on the basis of differing opinions alone. We discern that this is
`especially true where, as here, the issue is one that is particularly limited and
`straightforward – the inherent properties of an O-ring – an issue on which
`we have an explicit and unequivocal determination by the Examiner.
`Second, Petitioner argues that the Examiner failed to consider the
`prior art combinations recited in this Petition. Pet. 89. However, for the
`reasons discussed above, we find that the Examiner expressly considered
`Donaldson with Saggio. Ex. 1009, 21 (“The present record does not support
`a conclusion that a combination of the fillers of Boise or Saggio with the
`balloons of Billon, Lee, or Donaldson would be capable of functioning as
`recited in claims 26 and 34.”). Moreover, the Examiner explicitly stated that
`“the pending claims are not anticipated and not obvious over the prior art of
`record.” Id. The “prior art of record” during prosecution included Saggio,
`Cooper, Weir, Pomerantz, Zorbz, and Donaldson (see Ex. 1001, [56]), some
`of which were, further, discussed in the Decisions for PGR2016-00030 and
`PGR2016-00031 regarding the elastic fastener limitations at issue in those
`proceedings. Thus, we are unpersuaded that these proposed combinations
`are enough to justify reconsidering what the Examiner concluded already.
`Accordingly, we determine that the facts of this case weigh in favor of
`us exercising our discretion and declining to institute on the obviousness
`grounds based on various combinations of references with Donaldson.
`
`2. Obviousness Challenges based on Mead
`Petitioner further presents obviousness challenges based on various
`combinations of references that rely upon Mead for the “fastener” limitation
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`recited in challenged claims 1–23. We deny institution of post-grant review
`on these obviousness grounds for the reasons discussed below.
`
`a. Summary of Mead (Ex. 1038)
`Mead is directed to a rebounding toy balloon. Ex. 1038, Title. Figure
`1 is reproduced below.
`
`
`Figure 1, reproduced above, shows balloon A with the mouth drawn over the
`end of a small tube or pipe at C. Id. at 2:58–60. At C, an elastic cord or
`band is tightly wound and fastened. Id. at 2:61–62. Rubber or elastic cord B
`is inserted in the tube to allow inflation by blowing through the tube or by
`forcing in gas. Id. at 2:63–66. After inflation, the rubber cord or band at C
`“easily permits the balloon to be slipped from the tube,” and it is left
`inflated, as shown in Figures 3 and 4 below. Id. at 2:66–70.
`
`
`Id. at Figs. 3–4. Figure 3 is a side view of the balloon inflated and slipped
`from the tube. Id. at 1:49–50. Figure 4 shows the balloon of Figure 3 in
`operation as a “rebounding toy balloon.” Id. at 1:52–2:2.
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`b. Discretion under 35 U.S.C. § 325(d)
`Mead was not prior art of record during the prosecution of the ’789
`patent. However, Patent Owner asserts that we should exercise our
`discretion under § 325(d) to deny Petitioner’s challenges based on Mead,
`because Mead is cumulative to Donaldson and/or Billon, which were
`considered by the Examiner during prosecution. Prelim. Resp. 30–31.
`In reviewing Mead, we observe first that the disclosure in Mead is
`notably similar to that considered by the Examiner during prosecution,
`including, at least, Billon and Donaldson. For example, the Examiner
`expressly determined that “Billon (FR 2911512) teaches a balloon (2) with
`an elastic band (11) that automatically seals.” Ex. 1009, 20. Mead provides
`a similar structure with fastener at C that is fastened around balloon A.
`Ex. 1038, Fig. 1.
`Additionally, turning to Donaldson, we note that Donaldson is
`directed to a balloon inflating device that includes a pressurized gas source
`for inflation of the balloon. Ex. 1014, Abstract. Figures 1, 4, and 5 of
`Donaldson are reproduced below:
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`According to the text of Donaldson, Figure 1, reproduced above, shows
`balloon 10 partially inflated by inflation device 12 that is attached to mouth
`14 of balloon 10. Id. at 2:36–41. Pressurized gas container 16 is attached to
`mouth 14 to allow pressurized gas to enter balloon 10. Id. A sealing device,
`such as O-ring 20, attaches mouth 14 to outer surface 18 of the device. Id.
`Balloon 50 is inflated by the release of gas from chamber 16 (as shown in
`Figure 4 reproduced above). See Ex. 1014, 2:33–50. With reference to
`Figure 5, reproduced above, when balloon 10 is inflated to a prescribed
`pressure, the further escape of pressurized gas from container 16 will apply
`force to the inner container bottom shown by arrow 74. Ex. 1014, 4:53–56.
`The downward pressure moves inner container 16 toward outer container
`wall upper edge 34, which causes the surface on which O-ring 20 is seated to
`disappear. Id. at 4:65–5:3. As shown in Figure 5, this releases the O-ring
`and pulls the balloon off the device. Id. at 5:3–6.
`Like Donaldson, Mead’s described device also includes: a balloon
`fitted over a tube or pipe structure; a gas source through rubber or elastic
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`cord B; and a fastener around the mouth of the balloon to allow for the
`release and sealing of the inflated balloon. See Ex. 1038, 2:58–66. In
`operation, Mead’s device also performs similarly to Donaldson’s in that,
`following inflation from a gas source, Mead’s inflated balloon is removed
`from the edge of the pipe/tube that the balloon is attached to by the fastener.
`This cannot be described as anything other than comparatively very similar
`to Donaldson’s release of an inflated balloon from an edge of the outer
`container wall. See Ex. 1014, Figs. 4–5.3
`
`Given the similar disclosure in Mead and Donaldson, it is not
`surprising that the