UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`SCHUL INTERNATIONAL COMPANY, LLC.,
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`Petitioner,
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`
`v.
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`EMSEAL JOINT SYSTEMS, LTD.,
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`
`
`Patent Owner.
`
`______________________
`
`Case No. PGR2017-00053
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`U.S. Patent 9,528,262 B2
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`
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`PETITIONER’S REPLY
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`1
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`Table of Contents
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`
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`I.
`
`INTRODUCTION ............................................................................................... 8
`
`A. Petitioner’s Reply is Timely ....................................................................... 8
`
`B. Emseal’s Background Discussion is Misleading ....................................... 8
`
`C. Emseal Makes a Critical Misstatement Regarding Fire-Retardant
`Operation. .................................................................................................10
`
`II. 35 U.S.C. §325(d) Does Not Apply ..................................................................11
`
`III. The prosecution history is irrelevant as to providing written description support.
`
`12
`
`IV. Claim Construction ...........................................................................................12
`
`V. Ground 1 ............................................................................................................12
`
`A. Nothing in the ‘9,495 Patent provides support for foam, alone, being
`“configured to pass testing mandated by UL2079.” ................................13
`
`1. The original claims of the ‘9,495 patent do not support foam alone
`being “configured to pass testing mandated by UL2079” because a joint
`system having both fire retardant infused foam and a water resistant
`layer was claimed, and the functionality is discussed with respect to the
`joint system, not with respect to the foam. .......................................... 13
`
`2. The examiner did not consider functional abilities of the foam alone
`during prosecution of the ‘9,495 patent because only functional features
`of the expansion joint system as a whole were claimed. .................... 15
`
`B. Nothing in the common specification of the ‘262 patent or alleged priority
`documents provide the required support. .................................................15
`
`1. The fact that the foam is fire retardant and provides fire resistance does
`not mean the foam alone has the claimed functional features. ........... 16
`
`2. The “resultant composite” does not refer to the foam alone. .............. 17
`
`C. The claims of continuation applications cannot provide written description
`support because a continuation cannot add new matter. ..........................18
`
`
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`2
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`

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`VI. Ground 2 ............................................................................................................19
`
`A.
`
`ICU Medical applies to continuation applications which introduce claims
`unsupported by the written description at filing because written description
`is evaluated as of the filing date sought. ..................................................19
`
`B. The Board has agreed that the specification provides no support for the
`structure of an expansion joint which omits the intumescent layer. ........23
`
`C. Emseal advances multiple misleading arguments ....................................23
`
`VII. Ground 3 ............................................................................................................24
`
`A. Emseal opens with yet another misleading and irrelevant argument. ......25
`
`B. There is no inherent support provided by the specification .....................25
`
`C. Both Emseal and the Board cite to the UL2079 non-patent literature to
`provide written description support, demonstrating that it is essential
`material. ....................................................................................................26
`
`VIII.
`
`Ground 4 ...................................................................................................27
`
`A. Discussion of the joint being “compressed” is not necessarily the same as
`the joint “installed” because while the expansion joint is compressed when
`installed, it is compressed in other instances too. ....................................27
`
`B. The remainder of Emseal’s Response to Ground 4 is a series of flawed
`and/or misleading arguments and misstatements of law. .........................28
`
`IX. Ground 5 ............................................................................................................30
`
`A. The USPTO has found that this claim element is without written
`description support. ..................................................................................30
`
`B. The Board and Emseal improperly assume that these limitations are related
`to UL2079, rendering them superfluous...................................................31
`
`X. Ground 6 ............................................................................................................32
`
`A. The USPTO has found this claim term indefinite. ...................................32
`
`B. The Board and Emseal assume that these limitations are related to UL2079,
`rendering them superfluous. .....................................................................33
`
`C. Emseal again misleads. .............................................................................33
`
`XI. Ground 7 ............................................................................................................33
`
`XII. Ground 8. ...........................................................................................................34
`3
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`XIII.
`XIII.
`
`Conclusion ................................................................................................35
`Conclusion ................................................................................................ 35
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`4
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`PETITIONER’S UPDATED EXHIBIT LIST
`
`Exhibit Description
`
`1001
`1002
`
`1003
`
`1004
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`1005
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`1006
`
`1007
`
`1008
`
`1009
`
`1010
`1011
`1012
`
`U.S. Patent 9,528,262 B1
`US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-
`00019, Paper 54 (Dec. 28, 2016).
`U.S. Appl. S/N 14/540,514 Specification, Abstract, Claims and
`Drawings as filed November 13, 2014.
`U.S. Appl. S/N 14/540,514 Amendment and Response to Final Office
`Action Filed Concurrently with a Request for Continued Examination
`(August 31, 2016).
`U.S. Appl. S/N 14/540,514 Notice of Allowance and Fee(s) Due
`(November 3, 2016).
`American Heritage® Dictionary of the English Language, Fifth
`Edition. Copyright 2011 by Houghton Mifflin Harcourt Publishing
`Company (“withstand”).
`Underwriter Laboratories, Inc.’s UL 2079 Tests for Fire Resistance of
`Building Joint Systems, Fourth Edition of October 21, 2004, as revised
`through June 30, 2008.
`Original Complaint, Emseal Joint Systems, Ltd. v. Schul International
`Co., LLC and Steven R. Robinson; In the United States District Court
`for the District of New Hampshire (McAuliffe).
`Original Complaint, Cause No. 1:14-CV-00359; Emseal Joint
`Systems, Ltd. v. Willseal, LLC, Ion Management, LLC, Brian J. Iske,
`and Steven R. Robinson; In the United States District Court for the
`District of New Hampshire (Barbadoro).
`U.S. Provisional Patent Application 61/116,453.
`U.S. Patent 8,341,908, issued January 1, 2013 to Hensley et al.
`Amended Complaint, Cause No. 1:14-CV-00358; Emseal Joint
`Systems, Ltd. v. Willseal, LLC, Ion Management, LLC, Brian J. Iske,
`and Steven R. Robinson; In the United States District Court for the
`
`5
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`

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`District of New Hampshire (McAuliffe).
`U.S. Patent 9,644,368 to Witherspoon Issued on May 9, 2017.
`U.S. Patent 8,365,495 to Witherspoon Issued on February 5, 2013.
`U.S. Patent 8,739,495 to Witherspoon Issued on June 3, 2014.
`September 14, 2016 advisory action of Reexam No. 90/013,395,
`(Reexamination of ‘9,495 patent).
`Fallacy of division Dictionary.com visited April 23, 2018;
`http://www.dictionary.com/browse/fallacy-of-division.
`Fallacy of composition Dictionary.com visited September 14, 2018;
`http://www.dictionary.com/browse/fallacy-of-composition.
`December 12, 2014 Reexamination Order, Reexam No. 90/013,395
`(Reexamination of ‘9,495 patent)
`Dow Corning; Dow Corning 790 Silicone Building Sealant Data
`Sheet; 1999
`Iso Chemie; Iso-Flame Kombi F120, July 1, 2006; Data Sheet
`UL Online Certification System No. FF-D-1100 XHBN-FF-D-1100,
`September 24, 2012.
`U.S. Patent Application No. 09/989,794 of November 19, 2001,
`Medical Valve and Method of Use.
`Illbruck; Cocoband 6069, Data Sheet April 2007; Fire resistance test
`report 96-CVB-R0503 (referenced on p. 2 of data sheet) November
`1996; NEN 6069 Fire Test Standard, October 1991.
`Emseal Joint Systems, Horizontal Colorseal, Data Sheet June 1997.
`U.S. Patent 4,288,559 to Illger Issued September 8, 1981.
`Feb. 22, 2016 Amendment and Response to Office Action, Reexam
`No. 90/013,395.
`April 7, 2016 Final Rejection, Reexam No. 90/013,395.
`March 8, 2016 Amendment and Response to Office Action, Reexam
`No. 90/013,565. (‘5,495 Patent).
`April 8, 2016 Final Rejection, Reexam No. 90/013,565.
`U.S. Patent 8,365,495C1 Reexamination Certificate
`October 6, 2016 Intent to Issue Reexamination Certificate, Reexam
`
`6
`
`1013
`1014
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`1022
`
`1023
`
`1024
`
`1025
`1026
`1027
`
`1028
`1029
`
`1030
`1031
`1032
`
`
`
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`

`

`1033
`
`No. 90/013,395.
`October 7, 2016 Intent to Issue Reexamination Certificate, Reexam
`No. 90/013,655.
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`7
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`I.
`
`INTRODUCTION
`
`The Petition shows that all claims of the ‘262 Patent are invalid based on eight
`
`different grounds. The Patent Owner (“Emseal”) has submitted a Patent Owner’s
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`Response (“Response”) so replete with misleading arguments and misstatements of
`
`law that the credibility of the entire document is questionable. As a whole, the
`
`Response fails to demonstrate the patentability of the claims of the ‘262 patent, and
`
`its arguments are without merit. All claims of the ‘262 patent are invalid and should
`
`be canceled.
`
`
`
`A. Petitioner’s Reply is Timely
`
`On April 9, 2018, the Board issued a Scheduling Order setting a due date of
`
`September 20, 2018 for filing a Petitioner’s Reply to Patent Owner’s Response.
`
`Paper 11. Accordingly, this Reply is timely filed.
`
`
`
`B. Emseal’s Background Discussion is Misleading
`
`Emseal provides a self-serving background section. Notably, at Page 2, when
`
`discussing the procedural history, Emseal wrongly alleges that an attempt to
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`invalidate the ‘9,495 patent via ex parte reexamination was unsuccessful. In truth,
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`
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`8
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`

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`the original ‘9,495 patent claims were so resoundingly invalidated that only after
`
`substantial narrowing was a Reexamination Certificate issued. (Exh. 2007
`
`8,739,495C1 Reexamination Certificate).
`
`Emseal next proceeds to advance a misleading narrative of its alleged
`
`“innovations” at Response at 3-4, stating:
`
`EMSEAL’s fire-rated innovation went counter to many conventional beliefs as it
`
`was a broadly shared perspective of those familiar with polyurethane foam... that
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`this material is inherently and dramatically flammable (e.g., less than 300C).
`
`Response at 4 (emphasis omitted).
`
`Rather, fire-retardant polyurethane foams, including those used in expansion
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`joints, are notoriously well known. This is evidenced by Kombi F120 (Exh. 1021),
`
`and Cocoband 6069 (Exh. 1024), among others cited on the face of the ‘262 patent.
`
`Fire resistant expansion joints were decidedly not counter to conventional
`
`understanding as Emseal implies.
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`
`
`Emseal fails to note that Petitioner (“Schul”) has long sold fire-retardant
`
`impregnated foam expansion joint systems with an elastomeric coating on a side.
`
`Schul’s product did not have an intumescent layer disposed on the foam as taught in
`
`the patent specification. One of these products received a UL Listing, XHBN-FF-D-
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`1100, on September 24, 2012. (Exh. 1022).
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`9
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`Less than three months after the UL Listing, and apparently in response,
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`Emseal filed the application which matured into the 2014 ‘495 patent with claims
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`that sought to ensnare Schul’s UL listed product. (Exh. 1015). Emseal did not invent
`
`the subject matter of these claims, as evidenced by the fact that it is not disclosed in
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`the earlier-filed parent ‘5,495 patent or the 61/116,453 provisional application
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`(“provisional”).
`
`
`
`C. Emseal Makes a Critical Misstatement Regarding Fire-Retardant
`Operation.
`
`At page 16 of the Response, Emseal makes another incorrect statement
`
`regarding prior art foam sealants, stating:
`
`All Fire Endurance Testing passes through this first point, which is well beyond
`
`the flammability point (e.g., less than 300C) of conventional water resistant foam
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`sealants. Exh. 2013 at 1, Stein et al. article (considered during prosecution of the
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`‘262 Patent (Exh. 1001 at 9 “References Cited”), prior art asserted to show flame
`
`retardant capability of urethane foams with added chlorinated paraffins).
`
`Response at 16 (emphasis omitted).
`
`While false, this argument has misled another examiner. During prosecution
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`of the ‘9,495 patent Emseal made this same argument, leading to a notice of
`
`allowance. (Exh. 2022 ‘9,494 December 9, 2013 Office Action Response at 10-15).
`
`Contrary to Emseal’s assertions, chlorinated paraffins utilize breakdown to
`
`10
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`

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`operate as fire retardant materials. Accordingly, chlorinated paraffin decomposes
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`at a certain temperature, reacting to protect the carrier material from fire and prevent
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`burning. (See Exh. 2013 at 3). Chlorinated paraffins are well known fire retardant
`
`materials which are used in foam expansion joints to limit flammability, contrary to
`
`Emseal’s assertions.
`
`
`
`Emseal further attempted to trick the USPTO during reexamination with a
`
`similar argument related to Aluminum Tri-Hydrate. Fortunately, the examiner in this
`
`instance was not fooled, and criticized Emseal for its disingenuous argument. (Exh.
`
`1016 at 9-10). Despite the rebuke, Emseal continues to advance disingenuous
`
`arguments.
`
`II.
`
`35 U.S.C. §325(d) Does Not Apply
`
`Emseal argues that the USPTO has already considered Petitioner’s arguments.
`
`This is incorrect, as detailed in certain sections below. Further, the plain language of
`
`the statute limits application of §325(d) to when “determining to institute or order a
`
`proceeding….” The issue before the Board is patentability of any claim challenged.
`
`(35 U.S.C. §328(a)). Thus, patentability is currently at issue, not previous
`
`consideration. Prosecution history arguments are thus limited to showing what the
`
`examiner believed.
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`11
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`III. The prosecution history is irrelevant as to providing written description
`
`support.
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`When considering written description grounds, Emseal’s citations to the
`
`prosecution history are irrelevant. (See inter alia, Response P. 39-42; 44-45; 56-57;
`
`61-65). This evaluation “requires an objective inquiry into the four corners of the
`
`specification from the perspective of a person of ordinary skill in the art.” Ariad
`
`Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The
`
`prosecution history,
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`including
`
`the examiner’s opinion,
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`is outside of
`
`the
`
`specification’s four corners and is irrelevant to the written description questions
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`(Grounds 1-5), and must be disregarded.
`
`IV. Claim Construction
`
`While Petitioner respectfully disagrees with the Board’s construction of “to
`
`withstand exposure,” Petitioner need not address the claim construction issues
`
`because all grounds of invalidity are still meritorious under the Board’s adopted
`
`construction.
`
`V. Ground 1
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`The claims are invalid for failure of the written description. The ‘9,495 patent,
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`to which the ’262 patent claims priority, does not support this claim element, nor
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`12
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`does anything in the specification of the ‘262 patent or its priority documents.
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`Emseal’s arguments prove Petitioner’s position by demonstrating that there is no
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`written description support.
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`A. Nothing in the ‘9,495 Patent provides support for foam, alone, being
`
`“configured to pass testing mandated by UL2079.”
`
`It is logically flawed to conclude that a component of a whole has the same
`
`functional ability of the whole. Nothing in the ‘9,495 patent supports foam alone
`
`having the claimed functionality, nor did the examiner consider this issue during
`
`prosecution because the function is claimed only in terms of the entire system.
`
`1.
`
`The original claims of the ‘9,495 patent do not support foam
`
`alone being “configured to pass testing mandated by UL2079” because a
`
`joint system having both fire retardant infused foam and a water
`
`resistant layer was claimed, and the functionality is discussed with
`
`respect to the joint system, not with respect to the foam.
`
`Emseal argues that original claims 1 and 13 of the ‘855 application (Exh.
`
`2020) provides support for this claim element. (Response P. 38-40; Institution
`
`Decision P. 29-30). This is incorrect. Instead, claims 1 and 13 refer to the functional
`
`ability of the expansion joint system as a whole, which includes a fire retardant
`
`
`
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`13
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`

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`infused foam and a water resistant layer, which can have a density “such that the
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`fire and water expansion joint system passes UL2079 testing.” This is not the same
`
`as the foam alone having this functional feature. Just because the two-component
`
`system has a functional ability that “passes UL2079 testing” does not mean the foam
`
`alone does.
`
`Emseal’s argument relies on the logical fallacy referred to as the “Fallacy of
`
`Division” which is a defect in reasoning that occurs when one infers that what is true
`
`of a whole must also be true of its parts. (See Exh. 1017: fallacy of division
`
`Dictionary.com; see also Exh. 1018: fallacy of composition Dictionary.com).
`
`Claims 1 and 13 provide no support of “foam configured to pass testing mandated
`
`by UL2079” at issue in Ground 1. The individual functional abilities of the foam and
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`the water resistant layer cannot be deduced from the functional ability of the
`
`combined system. While the foam infused with fire retardant material may have
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`some fire-retardant ability, the extent is not disclosed in the specification. (Exh. 1001
`
`4:4-5).
`
`Some water resistant layers, such as Dow 790 listed in the specification, may
`
`be fire-resistant as well, thereby adding substantial fire-resistant ability to the
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`expansion joint system as a whole. (90/013,395 December 12, 2014 ‘9,495
`
`Reexamination Order, Exh. 1019 at 9 “Dow 790 teaches a dual functioning fire and
`
`
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`14
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`

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`water resistant expansion joint system…”; Referring to Exh. 1020, Dow 790 Data
`
`Sheet). This demonstrates a problem of deducing ability of the foam alone based on
`
`the multipart system: One cannot know what impact the water-resistant layer has on
`
`the whole system.
`
`2.
`
`The examiner did not consider functional abilities of the
`
`foam alone during prosecution of the ‘9,495 patent because only
`
`functional features of the expansion joint system as a whole were claimed.
`
`The original ‘9,495 patent claims, throughout prosecution, claimed functional
`
`features of the joint as a whole. Therefore, it would have been impossible for the
`
`examiner to have considered the functional abilities of just the foam. The examiner
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`did not, and had no reason to, consider the functional elements of the foam alone.
`
`
`
`B. Nothing in the common specification of the ‘262 patent or alleged priority
`
`documents provide the required support.
`
`Emseal incorrectly argues that support is found in the specification for the
`
`“foam only” limitation. The only provision in the specification which teaches that
`
`some structure is able to “pass” UL2079 does so while distinguishing between the
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`foam on one hand and the “resultant composite” (which has the UL2079 property)
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`15
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`on the other. (Petition, at 33-35). Nowhere does the specification equate “foam” with
`
`“resultant composite.”
`
`Further, UL 2079 evaluates “joint systems” which are defined in UL 2079 as
`
`the entire device, not a single component of the joint system. (Exh. 1007, p.5 §1.1-
`
`1.3; p.6A §3.4). Therefore, a POSITA would not believe “resultant composite” to
`
`refer to just the foam, because the foam alone is not the joint system taught in the
`
`specification which could be tested.
`
`1.
`
`The fact that the foam is fire retardant and provides fire
`
`resistance does not mean the foam alone has the claimed functional
`
`features.
`
`Emseal wrongly alleges that there is support for the foam alone having the
`
`claimed function at 4:1-14 because the foam is stated to provide some fire resistance.
`
`(Response p. 35-36). This cited passage actually supports Petitioner’s position.
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`Simply because a foam “provides for …fire resistance” does not mean that it can
`
`necessarily perform the claimed functionality of “…pass…UL2079.” The sentence
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`in which Emseal repeatedly cited for alleged support actually states that “each”
`
`embodiment of the invention is at least a three part expansion joint system
`
`(intumescent material-fire retardant infused foam- and water resistant layer). “When
`
`a patent thus describes the features of the present invention as a whole, this
`
`16
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`description limits the scope of the invention.” Verizon Servs. Corp. v. Vonage
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`Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007).
`
`In Emseal’s cited passage and elsewhere, the specification teaches that the fire
`
`resistant layer is necessary. It is the arrangement of a fire resistant layer on at
`
`least one side of the fire retardant infused foam which provides fire resistance
`
`to the side of the expansion joint that it is applied. (Exh. 1001, Inter alia Abstract;
`
`4:6-12). Were the foam sufficiently fire resistant on its own to function as claimed,
`
`the expansion joint would be sufficiently fire resistant on both sides, and no
`
`discussion of the directional fire resistance caused by the fire resistant layer would
`
`be required. This is contrary to Emseal’s argument that foam alone can “pass”
`
`UL2079, and further rebuts any argument that the written description “inherently”
`
`teaches this.
`
`
`
`
`
`2.
`
`The “resultant composite” does not refer to the foam alone.
`
`The Petition establishes that the “resultant composite,” which is the only
`
`structure taught to “pass” UL2079, refers to the same three layer composite
`
`expansion joint which is exclusively contemplated throughout the disclosure. It is
`
`this same composite which is packaged and shipped to the job site for installation.
`
`(Exh. 1001 5:67-6:4). Nothing in Emseal’s Response regarding the resultant
`
`17
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`composite changes the fact that it is taught to be an at least three layer expansion
`
`joint having a water resistant layer, foam, and an intumescent layer. (Response at
`
`42-46).
`
`Emseal has already characterized the “resultant composite” as referring to the
`
`expansion joint system as a whole. (Exh. 2022). In amending the claims of the
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`‘9,495 patent during original prosecution, it cited to support for the expansion joint
`
`system as a whole having certain time and temperature requirements alleging
`
`support from this same passage stating that a “resultant composite” can “pass the UL
`
`2079 test program.” (Id. p. 2 and 8). Therefore, Emseal has already committed to the
`
`definition of the resultant composite being the three component expansion joint
`
`system not the foam alone. It is flawed reasoning to assume that the foam component
`
`has the same abilities as the whole, and it is also flawed reasoning to assume that if
`
`a component has an ability, that the whole has the same ability. (Exh. 1017, 1018).
`
`
`
`C. The claims of continuation applications cannot provide written
`
`description support because a continuation cannot add new matter.
`
`It is well-settled that continuation applications which add claims unsupported
`
`by the disclosure to which priority is sought are invalid for failure to comply with
`
`the written description requirement. ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
`
`18
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`F.3d 1368 (Fed. Cir. 2009)(Discussed hereinafter in detail at VI(A)). Continuation
`
`applications cannot add new matter. MPEP 201.07. ICU shows that the penalty for
`
`doing so is invalidity. Accordingly, Emseal cannot cite to the claims of any
`
`application (namely the ‘262 and ‘9,495 patent disclosures) other than the
`
`provisional, which is the disclosure to which the filing date is sought to provide
`
`written description support.
`
`
`
`VI. Ground 2
`
`As noted in the Petition, per ICU Medical, the claims of the ‘262 patent are
`
`invalid under 35 USC §112 for omitting the intumescent layer. The Federal Circuit
`
`has used this line of reasoning repeatedly to invalidate patent claims, both before
`
`ICU in LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336
`
`(Fed.Cir.2005); and recently, in 2017 in Rivera v. International Trade Commission,
`
`857 F.3d 1315 (Fed. Cir. 2017). No “essential element” test exists. Even if it did, as
`
`discussed in section V(B)(1), the specification teaches that the intumescent layer is
`
`necessary to provide the intended fire resistance in a given direction.
`
`A. ICU Medical applies to continuation applications which introduce claims
`
`unsupported by the written description at filing because written
`
`description is evaluated as of the filing date sought.
`19
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`A conclusion that ICU Med. only applies to amendments of claims made
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`during prosecution is incorrect and must be reevaluated. (Response at 50-51,
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`Institution Decision at 30-31). ICU Med. is directly applicable.
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` “To satisfy the written description requirement, a patent applicant must
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`convey with reasonable clarity to those skilled in the art that, as of the filing date
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`sought, he or she was in possession of the invention.” ICU Med. at 1377 (emphasis
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`added) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed.Cir.1991)),
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`See also MPEP 2163(I)(B)(written description evaluated as of the filing date
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`sought.). In the ‘262 patent, the filing date sought is, through a chain of
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`continuations, the provisional filing date: November 20, 2008. (Exh. 1001, p. 1-2
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`“Related U.S. Application Data”; Response at inter alia 5,7-8,19,34,50-51). Any
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`new matter added after the filing date sought may render the claim invalid. An
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`alternative filing date is not available for a continuation because it seeks an earlier
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`filing date. See Turbocare Division v. General Electric 263 F.3d 1111, 1120 (Fed.
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`Cir. 2001) (“Because Brandon did not file a continuation-in-part application, he
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`cannot rely on any alternative filing date for his newly added claim 2.”).
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`If claims omit an element of an invention, and the specification does not
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`contemplate this omission, the claims are invalid for failing the written description
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`requirement. (Petition at 35-44). This is made clear in ICU Medical. Id. Importantly,
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`ICU Med. demonstrates that patents are invalid even if they are continuations filed
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`with new matter in their claims because written description is evaluated as of the
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`filing date sought. This law is based on “the unremarkable proposition that a broad
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`claim is invalid when the entirety of the specification clearly indicates that the
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`invention is of a much narrower scope.” Cooper Cameron Corporation v. Kvaerner
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`Oilfield Products, Inc., 291 F.3d 1317, 1323 (Fed. Cir. 2002).
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`ICU makes no mention of any key feature or “essential element” requirement.
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`Discussion of the “key feature” in the Petition at 36 highlights the fact that there is
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`no teaching in the specification of an expansion joint absent the intumescent layer.
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`Indeed, the Federal Circuit has explicitly disavowed any “essential element”
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`requirement. Cooper Cameron 291 F.3d at 1323 (Referring to Gentry Gallery: “we
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`did not announce a new "essential element" test ....”). Regardless, per section
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`V(B)(1), the intumescent layer is indeed taught to be necessary to provide adequate
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`fire resistance because of the directional discussion. If the intumescent layer
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`provides fire resistance in one direction, it is implicit that without it, there is
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`inadequate fire resistance. (Section V(B)(1), Supra).
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`Specifically, in ICU Med., filed claims of a continuation application that
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`omitted an element disclosed in the common specification were invalid for lack
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`of written description. ICU Med, 558 F.3d 1368, 1381. The Federal Circuit
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`therefore affirmed judgment of invalidity. Id. In the application that matured into the
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`’509 patent, ICU filed claims directed to spikeless valves at the time the application
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`that matured into the ’509 patent was filed. (Exh. 1023 original application of ‘509
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`patent). The ‘509 patent was invalidated for lack of written description. ICU Med. at
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`1381. This confirms Petitioner’s position. Support cannot come from continuation
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`claims adding new matter.
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`This follows the rule that continuation applications cannot add new matter.
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`MPEP 201.07 (“The disclosure presented in the continuation must not include any
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`subject matter which would constitute new matter if submitted as an amendment to
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`the parent application.”), and follows the USPTO’s requirement that claim
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`amendments in a PGR must demonstrate support in all of the priority applications.
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`37 CFR 42.121(b)(2). The prohibition against new matter is enforced under the
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`written description requirement of §112. See, Commonwealth Scientific & Indus.
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`Research Org. v. Buffalo Tech. (USA), Inc., 542 F.3d 1363, 1378 (Fed.Cir.2008).
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`Accordingly, as ICU confirms, the result is invalidity.
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`Therefore, ICU directly applies to the ‘262 patent because ICU applies to
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`continuations which add claims unsupported by the original priority disclosure.
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`These added claims cannot provide written description support for themselves or
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`subsequent claims because written description is evaluated as of the filing date
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`sought, as demonstrated by the Federal Circuit’s invalidation of the ‘509 Patent in
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`ICU.
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`B. The Board has agreed that the specification provides no support for the
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`structure of an expansion joint which omits the intumescent layer.
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`The Board has correctly identified that the common specification provides no
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`support of a joint without an intumescent layer:
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`Patent Owner does not cite, and we are unable to find, any exemplary
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`embodiment outside of the original claims [of the continuation ‘514
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`application] that includes only a foam including a fire retardant material, or
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`only a foam including the fire retardant material with a water resistant layer.
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`Institution Decision, Paper 10 at 31.
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`Therefore, consistent with the Board’s conclusion, and because continuation
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`claims cannot provide the requisite support, claims 1-43 lack written description
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`under §112 of an expansion joint system which does not include an intumescent
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`material applied to a surface of the foam and should therefore be cancelled.
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`C. Emseal advances multiple misleading arguments
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`Emseal continues to advance misleading arguments. For example, at page 49-
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`50 of the Response, Emseal alleges support in a passage from the summary which
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`discusses that foam has a fire resistance property at Exh. 1001 4:1-14. However, this
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`citation is wholly irrelevant to if any expansion joint is taught as claimed without the
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`intumescent layer. The fact that a component has some undisclosed fire-resistant
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`property is not a structural disclosure of an expansion joint as a whole without an
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`intumescent layer. Further, Emseal brazenly omits the immediately preceding clause
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`of the same sentence relating to “each” expansion joint embodiment contemplated
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`which reads “the intumescent material provides for fire resistance.” Id.
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`Neither the summary, nor the detailed description, disclose an expansion joint
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`which does not include in its structure the intumescent layer. That the foam has
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`functional properties does not provide a structure for an expansion joint without an
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`intumescent layer. Emseal’s citation to this passage is without merit, and in fact
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`proves that no embodiment is contemplated without an intumescent layer.
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` Further, Emseal alleges that “The specification further describes the fire
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`resistance and movement properties of the fire retardant included in the foam in
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`terms of its ability to… pass UL2079 testing.” Response at 50. This is again
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`misleading. Only the resultant composite, which is not just the foam,