throbber

`Trials@uspto.gov
`571-272-7822
`
`
`
`Paper No. 10
`Entered: April 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SCHUL INTERNATIONAL COMPANY, LLC,
`Petitioner,
`
`v.
`
`EMSEAL JOINT SYSTEMS, LTD.,
`Patent Owner.
`____________
`
`Case PGR2017-00053
`Patent 9,528,262 B2
`
`____________
`
`
`
`Before GEORGE R. HOSKINS, JAMES A. WORTH, and
`SCOTT C. MOORE, Administrative Patent Judges.
`
`HOSKINS, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Post-Grant Review
`35 U.S.C. § 324(a) and 37 C.F.R. § 42.208
`
`
`
`
`
`

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`PGR2017-00053
`Patent 9,528,262 B2
`
`
`INTRODUCTION
`I.
`Schul International Company, LLC (“Petitioner”) has filed a Petition
`(Paper 1, “Pet.”) pursuant to 35 U.S.C. §§ 321–329 to institute a post-grant
`review of claims 1–43 of U.S. Patent No. 9,528,262 B2 (“the ’262 patent”).
`Emseal Joint Systems, Ltd. (“Patent Owner”) has filed a Preliminary
`Response (Paper 9, “Prelim. Resp.”). Institution of post-grant review
`requires the information presented in the Petition to demonstrate, if not
`rebutted, it is more likely than not that at least one challenged claim is
`unpatentable. 35 U.S.C. § 324(a). Applying that standard on behalf of the
`Director (37 C.F.R. § 42.4(a)), we institute a post-grant review to determine
`whether claims 1–43 of the ’262 patent are unpatentable on some but not all
`of Petitioner’s proposed grounds, as described further below.
`
`BACKGROUND
`II.
`Real Parties in Interest and Related Proceedings
`A.
`Petitioner identifies Schul International Company, LLC as the real
`party in interest for this proceeding, with Steven R. Robinson being its
`member. Pet. 6. Patent Owner identifies Emseal Joint Systems, Ltd. as the
`real party in interest for this proceeding, and indicates Emseal Joint Systems,
`Ltd. was recently acquired by SIKA AG. Paper 6, 2; Paper 8, 2. The parties
`identify two consolidated U.S. District Court litigations as matters that might
`affect, or be affected by, a decision in this proceeding. Pet. 6–7; Paper 6, 2.
`
`The ’262 Patent
`B.
`The ’262 patent discloses a fire and water resistant expansion joint
`system. Ex. 1001, (54), 1:20–25. Figures 1 and 1A of the ’262 patent, for
`example, are reproduced below.
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`Patent 9,528,262 B2
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`Figure 1 illustrates expansion joint system 10 installed between concrete
`substrates 50, to accommodate thermal and/or seismic movements of
`substrates 50 relative to each other. Id. at 1:29–33, 4:36–52. The
`accommodation is provided by open celled foam 12, illustrated in the detail
`view of Figure 1A. Id. at 4:46–55. The accommodation is additionally
`provided by the bellows-type profile of waterproof elastomer coating 14, and
`fire-resistant intumescent material coating 16, on foam 12. Id. at 5:21–22,
`5:49–52, 5:59–67.
`Elastomer 14 resists the passage of water in one direction of
`system 10, from the top to the bottom in Figure 1. Id. at 3:26–33, 5:21–22,
`6:4–8. Intumescent material 16, and fire retardant material 60 infused into
`foam 12, resist the passage of fire in the opposite direction of system 10,
`from the bottom to the top in Figure 1. Id. at 4:55–58, 6:4–8. In an alternate
`embodiment illustrated in Figure 3, expansion joint system 30 provides fire
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`PGR2017-00053
`Patent 9,528,262 B2
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`resistance in both directions, by providing intumescent material 16 on both
`sides of foam 12. Id. at 3:36–41, 6:35–48.
`Additional disclosures of the ’262 patent are discussed below in
`connection with Petitioner’s various written description challenges to the
`’262 patent claims.
`
`The Parent Applications to the ’262 Patent
`C.
`The ’262 patent issued from U.S. Patent Application Serial
`No. 14/540,514 (“the ’514 application”). Ex. 1001, (21). The
`’514 application was a continuation of U.S. Patent Application Serial
`No. 14/278,210 (“the ’210 application”). Id. at (63).
`The parent ’210 application was a continuation of U.S. Patent
`Application Serial No. 13/721,855 (“the ’855 application”), and issued as
`U.S. Patent No. 9,644,368 B1. Ex. 1013, (10), (21), (63).
`The parent ’855 application was a continuation of U.S. Patent
`Application Serial No. 12/622,574 (“the ’574 application”), and issued as
`U.S. Patent No. 8,739,495 B1 (“the ’9,495 patent”). Ex. 1015, (10), (21),
`(63).
`
`The parent ’574 application asserted priority to U.S. Provisional
`Application Serial No. 61/116,453 (“the ’453 application”), and issued as
`U.S. Patent No. 8,365,495 B1 (“the ’5,495 patent”). Ex. 1014, (10), (21),
`(60); Ex. 1010.
`
`The Challenged Claims of the ’262 Patent
`D.
`The ’262 patent contains 43 claims, all of which are challenged by
`Petitioner. Claim 1 illustratively recites:
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`Patent 9,528,262 B2
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`1. An expansion joint system, comprising:
`foam;
`a fire retardant material included in the foam; and
`the expansion joint system accommodates movement when
`installed between substrates, and
`wherein the foam including the fire retardant material has a
`density when installed in a range of about 200 kg/m3 to about
`700 kg/m3, and
`the expansion joint system has an ability to withstand
`exposure to a temperature of about 540°C. at about five
`minutes, and
`the foam including the fire retardant material is configured to
`pass testing mandated by UL 2079.
`Ex. 1001, 7:62–8:6 (some line breaks added). Claims 2–12 each depend
`directly from claim 1. Id. at 8:7–47.
`Claim 13 is an independent claim, and recites a system identical to the
`system of claim 1, except claim 13 adds “a water resistant layer,” and
`specifies “an ability to withstand exposure to a temperature of about 1010°C.
`at about two hours” instead of 540°C. and five minutes. Id. at 8:48–60.
`Claims 14–23 each depend directly from claim 13. Id. at 8:61–9:32.
`Claim 24 is an independent claim, and recites a system identical to the
`system of claim 1, except claim 24 uses “consisting of” rather than
`“comprising” as the transition. Id. at 9:33–44. Claims 25–32 each depend
`directly from claim 24. Id. at 9:45–10:11.
`Claim 33 is an independent claim, and recites a system identical to the
`system of claim 24, except claim 33 adds “a water resistant layer.” Id. at
`10:12–24. Claims 34–43 each depend directly from claim 33. Id. at 10:25–
`64.
`
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`PGR2017-00053
`Patent 9,528,262 B2
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`
`Proposed Grounds of Unpatentability
`E.
`Petitioner challenges all claims 1–43 of the ’262 patent on each of the
`following proposed grounds.1 Pet. 20–21.
`
`Statute
`
`§ 112(a)
`
`§ 112(a)
`
`§ 112(a)
`
`§ 112(a)
`
`§ 112(b)
`
`Challenge
`Lack of written description for “the foam including the
`fire retardant material is configured to pass testing mandated
`by UL 2079”
`Lack of written description for claims which do not
`require an intumescent material applied to a surface of the
`foam
`Lack of written description for “the foam including the
`fire retardant material has a density when installed in a
`range of about 200 kg/m3 to about 700 kg/m3”
`Lack of written description for “the expansion joint
`system has an ability to withstand exposure to a temperature
`of about 540°C. at about five minutes” or “about 1010°C. at
`about two hours”
`Indefiniteness of “the expansion joint system has an ability
`to withstand exposure to a temperature of about 540°C. at
`about five minutes” or “about 1010°C. at about two hours”
`
`
`1 We have re-stated Petitioner’s proposed written description grounds to
`focus on the claim limitations at issue, rather than the bases for Petitioner’s
`contentions. Our analysis below considers all of Petitioner’s contentions as
`to lack of written description.
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`Patent 9,528,262 B2
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`
`§ 112(a)
`
`Lack of enablement for a system that “accommodates
`movement” between substrates, and further “has an ability
`to withstand exposure to a temperature of about 540°C. at
`about five minutes” or “about 1010°C. at about two hours,”
`and has “foam including the fire retardant material is
`configured to pass testing mandated by UL 2079”
`§ 102(a)(1) Anticipation by Hensley2
`
`
`
`Citation to Exhibits in the Record
`F.
`The Preliminary Response was accompanied by several Exhibits
`which appear to be duplicative of Exhibits already submitted with the
`Petition. As one example, Petitioner’s Exhibit 1001 and Patent Owner’s
`Exhibit 2001 appear to be identical copies of the ’262 patent. For
`consistency and ease of understanding, in all such instances, we will cite to
`Petitioner’s corresponding Exhibit number. We direct the parties’ counsel to
`do the same in all documents filed hereafter in this proceeding, unless there
`is a specific reason why doing so would be improper. Such a specific reason
`might be, as non-limiting examples, that one of Petitioner’s Exhibits is not a
`faithful representation of the original document, or is not clearly reproduced
`in some material respect.
`
`III. PATENT OWNER’S PROCEDURAL OBJECTIONS TO
`INSTITUTION OF REVIEW
`Patent Owner objects that Petitioner failed to serve the Petition’s word
`count certification (Paper No. 4) on Patent Owner, as required by 37 C.F.R.
`
`
`2 Ex. 1011, U.S. Patent No. 8,341,908 B1 to Hensley and Witherspoon,
`issued January 1, 2013.
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`§§ 42.6 & 42.205. Prelim. Resp. 6–7. It is apparent that Patent Owner
`nonetheless was aware of Petitioner’s certification before filing the
`Preliminary Response, and could have obtained a copy via the Board’s
`electronic filing system if desired. See id. We are unable to discern any
`harm which might have resulted from Petitioner’s failure to serve the
`certification. We, therefore, waive the requirement for Petitioner to serve
`Paper No. 4. See 37 C.F.R. § 42.5(a)–(b).
`Patent Owner also objects that the Petition fails to “certify” the
`’262 patent “is available for post-grant review,” as required by 37 C.F.R.
`§ 42.204(a). Prelim. Resp. 7–8, 24–25. This argument is not persuasive.
`The Petition sets forth, in Sections III and IV, a detailed analysis in support
`of Petitioner’s assertion that the ’262 patent is available for post-grant
`review. Pet. 9–20. This analysis, and citation to legal authority in support,
`satisfies the certification requirement of 37 C.F.R. § 42.204(a). Petitioner’s
`failure to use the specific term “certify” (or some variant thereof) is not fatal,
`under the circumstances presented in this case.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Petitioner contends a person having ordinary skill in the art pertaining
`to the ’262 patent “would have: (i) a bachelor’s degree in mechanical
`engineering; and/or (ii) 3–5 years [of] relevant technical experience in the
`expansion joint field.” Pet. 27. Patent Owner disagrees, and contends a
`person having ordinary skill in the art:
`is a sophisticated, skilled artisan who has an informed
`understanding of expansion
`joint systems,
`joint sealing
`techniques and technologies including pre-compressed foam
`sealant technologies, fire retardant materials, as well as
`knowledge of standards for evaluating the performance aspects
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`PGR2017-00053
`Patent 9,528,262 B2
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`of such systems, techniques, and technologies, including
`movement and fire endurance testing under ASTM E-1399,
`ASTM E-119 and especially UL 2079.
`Prelim. Resp. 27–28.
`Based on the current record, Petitioner’s proposal appears to be too
`broad in contemplating that a bachelor’s degree in mechanical engineering,
`alone, is sufficient to achieve a level of ordinary skill in the art. At least
`some relevant technical experience in the expansion joint field, or a related
`field, would appear to be required. At the same time, Patent Owner’s
`proposal is vague in requiring a “sophisticated” artisan having an “informed
`understanding” of expansion joint systems and related technology. We
`determine, based on our review of the ’262 patent and other evidence
`presented at this preliminary stage of the proceeding, that a person of
`ordinary skill in the art would have a bachelor’s degree in mechanical
`engineering or a related academic discipline, in addition to 3–5 years of
`relevant technical experience in the expansion joint field or a related field.
`
`V.
`
`POST-GRANT REVIEW TIMELINESS AND ELIGIBILITY
`Timeliness of the Petition
`A.
`A petition for post-grant review of a patent “may only be filed not
`later than the date that is 9 months after the date of the grant of the patent.”
`35 U.S.C. § 321(c). The ’262 patent was granted on December 27, 2016.
`Ex. 1001, (45). The Petition’s filing on September 22, 2017, therefore, was
`timely. See Pet. 19; Paper Nos. 3–5.
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`Patent 9,528,262 B2
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`Legal Standards for Post-Grant Review Eligibility
`B.
`The post-grant review provisions of 35 U.S.C. §§ 321–329 apply only
`to patents subject to the first-inventor-to-file provisions of the Leahy-Smith
`America Invents Act3 (“the AIA”).4 See AIA § 6(f)(2)(A) (“The
`amendments made by subsection (d) [enacting 35 U.S.C. §§ 321–329] . . .
`shall apply only to patents described in section 3(n)(1).”). The
`first-inventor-to-file provisions of the AIA apply to any patent issuing from
`an application that contains or contained at any time a claim to a claimed
`invention that has an effective filing date on or after March 16, 2013. See id.
`§ 3(n)(1). As pertinent to the ’262 patent, the term “effective filing date” for
`a claimed invention means:
`(A) if subparagraph (B) does not apply, the actual filing date of
`the [’262] patent . . . ; or
`(B) the filing date of the earliest application for which the
`[’262] patent . . . is entitled, as to [the claimed] invention, to a
`right of priority under section 119 . . . or to the benefit of an
`earlier filing date under section 120 . . . .
`35 U.S.C. § 100(i)(1).5 Entitlement to the benefit of an earlier application’s
`filing date under sections 119 and 120 is premised on disclosure of the
`claimed invention “in the manner provided by [35 U.S.C.] section 112(a)” in
`the earlier application. See 35 U.S.C. §§ 119(e)(1), 120.
`
`
`3 Pub. L. No. 112-29, 125 Stat. 284 (2011).
`4 These statutory provisions also apply partially to reviews of covered
`business method patents under AIA § 18, but Petitioner does not contend the
`’262 patent is such a patent.
`5 The filing date priority benefits provided in the other statutory provisions
`identified in § 100(i)(1)(B) do not apply to the ’262 patent.
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`Patent 9,528,262 B2
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`A “transition application” is an application actually filed on or after
`March 16, 2013, but asserting the benefit of an earlier application’s filing
`date prior to March 16, 2013. See, e.g., MPEP § 2159.04. Pursuant to the
`statutes discussed above, a patent that issues from a transition application is
`available for post-grant review “if the patent contains . . . at least one claim
`that was not disclosed in compliance with the written description and
`enablement requirements of § 112(a) in the earlier application for which the
`benefit of an earlier filing date prior to March 16, 2013 was sought.” U.S.
`Endodontics, LLC v. Gold Standard Instruments, LLC, Case PGR2015-
`00019, Paper No. 54, at 7–8 (PTAB Dec. 28, 2016) (quoting Inguran, LLC
`v. Premium Genetics (UK) Ltd., Case PGR2015-00017, Paper No. 8, at 11
`(PTAB Dec. 22, 2015)).
`The test for sufficiency of a written description under 35 U.S.C.
`§ 112(a) is whether the earlier application’s disclosure “reasonably conveys
`to those skilled in the art that the inventor had possession of the claimed
`subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
`598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
`
`Post-Grant Review Eligibility of the ’262 Patent
`C.
`The ’514 application, from which the ’262 patent issued, was a
`transition application. The ’514 application was filed on November 13,
`2014, after the March 16, 2013 effective date of post-grant review
`proceedings. Ex. 1001, (22). However, the ’514 application was a
`continuation of the ’210 application filed on May 15, 2014, which was a
`continuation of the ’855 application filed on December 20, 2012, which was
`a continuation of the ’574 application filed on November 20, 2009, which
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`Patent 9,528,262 B2
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`asserted priority to the ’453 application filed on November 20, 2008.
`Ex. 1001, (60), (63); Ex. 1013, (21), (22), (63); Ex. 1015, (21), (22), (63);
`Ex. 1014, (21), (22), (60); Ex. 1010. Thus, the ’514 application asserts the
`benefit of a filing date prior to March 16, 2013, via the parent ’855, ’574,
`and ’453 applications.
`Petitioner contends the ’262 patent disclosure is representative of the
`respective disclosures of each of its parent ’210, ’855, ’574, and
`’453 applications, when assessing written description support for the
`’262 patent claims. Pet. 9–11 (asserting the parent applications each contain
`“nearly identical written descriptions” and “the same content” as the
`’262 patent, “varying only in the claims, assertions of priority, and minor,
`non-material corrections”). According to Petitioner, based on the
`representative ’262 patent disclosure, the effective filing date for the claimed
`inventions of the ’262 patent is the ’262 patent’s actual filing date of
`November 13, 2014. Id. Therefore, Petitioner asserts the ’262 patent is
`eligible for post-grant review, because that date is after March 16, 2013. Id.
`Patent Owner agrees with Petitioner’s contention that the ’262 patent
`disclosure is representative of the respective disclosures of each of its parent
`applications, when assessing written description support for the ’262 patent
`claims. Prelim. Resp. 11–12 (“The specification of the ‘262 Patent is
`referred to herein, however, the afore-referenced priority applications share a
`common specification. . . . Reference to any specification includes the
`specification of the ‘262 Patent and of any priority applications/
`patents . . . .”). According to Patent Owner, based on the representative
`’262 patent disclosure, the effective filing date for the claimed inventions of
`the ’262 patent is the parent ’453 application’s filing date of November 20,
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`2008. Id. Therefore, Patent Owner asserts the ’262 patent is not eligible for
`post-grant review, because that date is before March 16, 2013. Id. at 11–12,
`23–24.
`In deciding whether to institute post-grant review, we shall assume,
`pursuant to the parties’ agreement at this preliminary stage of the
`proceeding, that the ’262 patent disclosure is representative of the respective
`disclosures of each of the parent applications. For the following reasons, we
`determine, based on the present record, that the ’262 patent claims lack
`written description support in the ’262 patent disclosure — and, by proxy,
`the disclosures of the parent ’210, ’855, ’574, and ’453 applications. We
`thus conclude the ’262 patent is eligible for post-grant review, because the
`effective filing date of the patent’s claims is November 13, 2014, which is
`after March 16, 2013.
`
`Lack of Written Description for “the foam including the fire retardant
`1.
`material has a density when installed in a range of about 200 kg/m3 to about
`700 kg/m3”
`Petitioner contends the ’262 patent fails to provide written description
`support for a foam including fire retardant material, when installed, having a
`density within the range specified in each independent claim. Pet. 16–17,
`48–50. Patent Owner disagrees. Prelim. Resp. 63–66.
`Resolution of the parties’ dispute in this regard principally turns on
`the following disclosure in the ’262 patent:
`In each of the embodiments described herein, the infused
`foam laminate is constructed in a manner which insures that
`substantially the same density of fire retardant 60 is present in
`the product regardless of the final size of the product. The
`starting density of the infused foam is approximately 140 kg/m3.
`After compression, the infused foam density is in the range of
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`Patent 9,528,262 B2
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`200–700 kg/m3. After installation the laminate will cycle
`between densities of approximately 750 kg/m3 at the smallest
`size of the expansion joint to approximately 400–450 kg/m3 (or
`less) at the maximum size of the joint. This density of 400–450
`kg/m3 was determined through experimentation, as a reasonable
`minimum which still affords adequate fire retardant capacity,
`such that the resultant composite can pass the UL 2079 test
`program. The present invention is not limited to cycling in the
`foregoing ranges, however, and the foam may attain densities
`outside of the herein-described ranges.
`Ex. 1001, 6:54–7:3 (emphases added).
`Petitioner asserts the quoted ’262 patent disclosure fails to
`demonstrate possession of a foam including fire retardant material having a
`density, when installed, in a range of about 200–700 kg/m3. Pet. 16–17, 48–
`50. Petitioner contends the disclosed range of 200–700 kg/m3 applies to a
`compressed density, not to an installed density, and the disclosure quoted
`above distinguishes between those two densities. Id. According to
`Petitioner, the quoted ’262 patent disclosure demonstrates possession of an
`installed density having a minimum of 400 kg/m3, so there is no support for
`an installed density of 200–400 kg/m3. Id.
`Patent Owner asserts the ’262 patent disclosure quoted above
`demonstrates possession of a foam including fire retardant material having a
`density, when installed, in a range of about 200–700 kg/m3. Prelim. Resp.
`63–66. According to Patent Owner, Petitioner’s distinction between
`compressed density and installed density is not logical and is inconsistent
`with the ’262 patent, which discloses that the foam is installed in a
`compressed state. Id. at 63–64 (citing Ex. 1001, 4:36–52). Patent Owner
`also cites the ’262 patent’s disclosure that the installed density “is not
`limited to cycling in the foregoing ranges” having a minimum of 400 kg/m3,
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`“and the foam may attain densities outside of the herein-described ranges.”
`Id. at 64 (citing Ex. 1001, 6:60–7:3).
`Patent Owner further relies on the prosecution history of the
`’262 patent, as well as its parent ’855 application. Id. at 64–65. From the
`’262 patent prosecution history, Patent Owner cites an amendment which
`representatively made the following changes to claims 1 and 2:
`1.
`(Currently Amended) An expansion
`joint system,
`comprising:
`foam;
`a fire retardant material included in the foam; and
`the expansion joint system accommodates movement
`when installed between substrates, and wherein the foam
`including the fire retardant material has a density when installed
`in a range of about 200 kg/m3 to about 700 kg/m3, . . . .
`2.
`(Cancelled) The expansion joint system of claim 1,
`wherein the foam has a density when compressed in a range of
`about 200 kg/m3 to about 700 kg/m3.
`Ex. 1004, 3; Prelim. Resp. 65.6 The applicant’s remarks accompanying
`those claim amendments stated “the subject matter of [cancelled claim 2 is]
`incorporated into [amended claim 1].” Ex. 1004, 10. According to Patent
`Owner, this prosecution history, including changing “compressed” in
`claim 2 to “installed” in claim 1, establishes that “[t]he Examiner considered
`and approved these amendments and thus recognized that the claimed
`installed density range was also the compressed density range.” Prelim.
`
`
`6 Neither party has submitted the complete prosecution history of the
`’262 patent as an exhibit in this proceeding. Our understanding of the
`subject matter of claim 2 cancelled in the Amendment cited by Patent Owner
`(Exhibit 1004) is gleaned from our review of the publicly available
`prosecution history, particularly the Amendment filed on August 25, 2015.
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`Resp. 65 (emphasis omitted). From the parent ’855 application prosecution
`history, Patent Owner cites the Examiner’s statement of reasons for
`allowance, which described the invention as being a “system . . . to facilitate
`compression of the foam and water resistant layer when installed.” Id. at
`64–65 (quoting Ex. 2023, 3–4).
`We determine, based on the arguments and evidence presented at this
`stage of the proceeding, that the ’262 patent disclosure lacks written
`description support for a foam including fire retardant material having a
`density, when installed, in a range of about 200–700 kg/m3. We agree with
`Petitioner’s, rather than Patent Owner’s, reading of the disputed ’262 patent
`disclosure at column 6, line 54 through column 7, line 3. That disclosure
`indicates that “[a]fter installation the laminate” will have a “minimum”
`density of approximately 400–450 kg/m3, “at the maximum size of the
`joint.” Ex. 1001, 6:59–66. On the present record, the described “laminate”
`appears to refer to the “compressed laminations 13 of open celled
`polyurethane foam 12 . . . infused with a fire retardant material 60,” as
`reflected in claim 1. Id. at 4:46–51, 7:66–67. The disputed ’262 patent
`disclosure goes on to indicate that the minimum density was experimentally
`determined “as a reasonable minimum which still affords adequate fire
`retardant capacity, such that the resultant composite can pass the UL 2079
`test program,” a fire resistance safety standard which is also referenced in
`claim 1. Id. at 2:11–31, 6:63–67, 8:4–6; Ex. 1007, 1. Based on these
`disclosures, and the present preliminary record of argument and evidence
`concerning them, we determine the ’262 patent disclosure fails to
`demonstrate that the inventors had possession of an installed foam and fire
`retardant material density below approximately 400 kg/m3. Therefore, there
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`is no written description of such a density in the range of about 200–400
`kg/m3, which is covered by the ’262 patent claims.
`That determination is not inconsistent with the ’262 patent’s
`disclosure of a density “[a]fter compression” being “in the range of 200–700
`kg/m3.” Ex. 1001, 6:59–60. The ’262 patent generally reflects various
`states of compression, both before installation and after installation. See,
`e.g., id. at 3:55–67, 4:11–13, 5:15–22, 5:49–6:4, 6:54–67, 7:4–25. Thus,
`based on the present record, we are not persuaded by Patent Owner’s reading
`of the ’262 patent’s compression density disclosures necessarily relating to
`an installation density. See id. at 6:54–63. This is especially so given the
`specific disclosure concerning “a reasonable minimum” installation density
`being “adequate” to pass the UL 2079 test program. See id. at 6:63–67. The
`general disclosure of other possible installation densities, without specifying
`any particular densities, is similarly unpersuasive given the specific
`disclosure concerning a minimum installation density being needed to pass
`the UL 2079 test program. See id. at 6:67–7:3.
`The ’262 patent prosecution history cited by Patent Owner does not
`demonstrate that the inventors had possession at the time of the application’s
`filing of a foam including fire retardant material having a density, when
`installed, in a range of about 200–700 kg/m3. The ’262 patent issued from
`the ’514 application. The originally-filed claims of the ’514 application
`recited “the foam has a density when compressed” of about 200–700 kg/m3,
`as representatively recited in original claim 2. Ex. 1003, 11 (emphasis
`added). That limitation is consistent with the ’262 patent disclosure at
`column 6, line 54 through column 7, line 3, which as discussed above
`distinguishes between compressed and installed densities, and provides a
`
`17
`
`

`

`PGR2017-00053
`Patent 9,528,262 B2
`
`range of 200–700 kg/m3 only for a compressed foam. The later cancellation
`of claim 2 and concurrent amendment of claim 1 to recite “the foam has a
`density when installed” of about 200–700 kg/m3 (Ex. 1004, 3 (emphasis
`added)) does not demonstrate possession of such an installed density at the
`time the ’514 application was filed.
`We acknowledge Patent Owner’s representation, during prosecution
`of the ’514 application, that “the subject matter of [cancelled claim 2 was]
`incorporated into [amended claim 1].” Ex. 1004, 10. However, for the
`reasons provided above, we conclude on the present record that the
`statement was inaccurate. Further, the statement was not accompanied by
`any discussion of the specific subject matter cancelled with claim 2, or the
`specific subject matter added to claim 1 concerning the installed density. Id.
`Instead, the Patent Owner’s contemporaneous remarks focused on UL 2079
`testing, including, in contrast to the density limitation amendments, a
`detailed discussion of the claim language being added via amendment
`concerning UL 2079 testing. Id. at 3, 10–12. Based on this sparse record
`concerning the addition of the “when installed” density limitation to the
`claims, we conclude the written description issue presented by Petitioner
`here was not sufficiently “presented to the Office” (35 U.S.C. § 325(d)) to
`justify invoking our discretion to deny institution. See Prelim. Resp. 1–3, 8–
`11, 65 (urging application of § 325(d) to deny institution); infra
`Section VI.A.3 (discussing § 325(d) in more detail).
`Finally, Patent Owner’s citation to the stated reasons for allowance in
`the ’855 application prosecution history bears little, if any, relationship to
`the claims of the ’262 patent presently at issue. The Examiner therein
`merely stated the allowed claims were directed to a system “to facilitate
`
`18
`
`

`

`PGR2017-00053
`Patent 9,528,262 B2
`
`compression of the foam and water resistant layer when installed.”
`Ex. 2023, 3–4. There is no discussion of the specific density range recited in
`the ’262 patent claims. Indeed, it appears the allowed independent claims in
`the ’855 application did not refer to density at all. See Ex. 1015, (21), 7:46–
`56, 9:5–22, 10:8–23. It appears the allowed dependent claims did refer to
`density, but like the original claims of the ’514 application discussed above,
`they recited “the foam has a density when compressed” of about 200–700
`kg/m3. Id. at 8:14–16, 8:26–28, 9:27–29, 10:30–32 (emphasis added).
`We have performed a limited review of the parent applications to the
`’262 patent to determine, based on the present record, whether they differ
`materially from the key disclosure of the ’262 patent at column 6, line 54 to
`column 7, line 3. Based on the present record, it appears that each of the
`parent ’210, ’855, ’574, and ’453 applications does not materially differ
`from that key disclosure of the ’262 patent. See Ex. 1013, 6:54–7:3 (the
`’368 patent, which issued from the ’210 application); Ex. 2020 ¶ 36 (the
`’855 application); Ex. 1014, 6:38–53 (the ’5,495 patent, which issued from
`the ’574 application); Ex. 1010 ¶ 31 (the ’453 application).
`For the foregoing reasons, on the present record, we determine the
`’262 patent disclosure fails to demonstrate possession of a foam including
`fire retardant material having a density, when installed, in a range of about
`200–700 kg/m3. By agreed-upon proxy, each one of the parent applications
`to the ’262 patent also fails to demonstrate such possession. Therefore,
`35 U.S.C. § 100(i)(1)(B) does not apply here. Pursuant to 35 U.S.C.
`§ 100(i)(1)(A), the effective filing date of the claimed inventions in the
`’262 patent is the patent’s actual filing date of November 13, 2014. That
`
`19
`
`

`

`PGR2017-00053
`Patent 9,528,262 B2
`
`date is after March 16, 2013, so the ’262 patent is eligible for post-grant
`review.
`
`Other Claim Limitations
`2.
`Petitioner contends the ’262 patent disclosure fails to provide written
`description support for various other claim limitations as a basis for
`post-grant review eligibility. Pet. 11–16, 17–19. Our determination that the
`’262 patent disclosure fails to provide written description support for the
`claimed density range (see supra Section V.C.1) is a sufficient basis for
`post-grant review eligibility. We, therefore, need not address whether the
`’262 patent disclosure provides written description support for other claim
`limitations to establish the post-grant review eligibility of the ’262 patent.
`
`A.
`
`VI. PROPOSED GROUNDS OF UNPATENTABILITY
`Lack of Written Description for “the foam including the fire retar

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