UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`WAGNER SPRAY TECH CORPORATION
`Petitioner
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`v.
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`GRACO MINNESOTA INC.
`Patent Owners
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`Case PGR2018-00049
`Patent 9,675,982
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`PATENT OWNERS’ PRELIMINARY RESPONSE
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
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`
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`BACKGROUND OF THE ’982 PATENT ..................................................... 3 
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`I. 
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`II. 
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`A.  Background of the Invention ........................................................................... 3 
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`B.  Background of the Prosecution History .......................................................... 5 
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`III.  GROUNDS 1 AND 2 SHOULD BE DENIED INSTITUTION UNDER 35
`USC § 325(D), AND GROUND 3 SHOULD BE DENIED INSTITUTION
`UNDER THE BOARD’S DISCRETION ....................................................... 7 
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`A.  “the similarities and material differences between the asserted art and the
`prior art involved during examination” ......................................................... 10 
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`B.  “the cumulative nature of the asserted art and the prior art evaluated during
`examination” .................................................................................................. 10 
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`C.  “the extent to which the asserted art was evaluated during examination,
`including whether the prior art was the basis for rejection” .......................... 12 
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`D.  “the extent of the overlap between the arguments made during examination
`and the manner in which Petitioner relies on the prior art or Patent Owner
`distinguishes the prior art” ............................................................................. 12 
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`E.  “whether Petitioner has pointed out sufficiently how the Examiner erred in
`its evaluation of the asserted prior art” .......................................................... 14 
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`F.  “the extent to which additional evidence and facts presented in the Petition
`warrant reconsideration of the prior art or arguments” ................................. 15 
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`G.  The Board should also exercise its discretion to deny institution of the
`remaining grounds ......................................................................................... 16 
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`IV.  MATERIAL SHORTCOMINGS OF CITED EXHIBITS ............................ 17 
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`A.  Petitioner Failed to Show That the “UMN” Exhibits Are Prior Art ............. 17 
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`1.  Ex. 1010 is attorney argument, not prior art ............................................... 17 
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`i
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`2.  The Petition fails to show the content of Exhibits 1018-1019 was in public
`use or otherwise available to the public ...................................................... 20 
`B.  The Ben-Tzvi Declaration Has Little or No Relevance ................................ 22 
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`1.  The Petition Makes Nearly All Arguments Without Citing the Ben-Tzvi
`Declaration .................................................................................................. 22 
`2.  The Ben-Tzvi Declaration Contradicts the Petition .................................... 24 
`CLAIM CONSTRUCTION .......................................................................... 25 
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`V. 
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`A.  Turbulating Chamber ..................................................................................... 27 
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`B.  Pre-Orifice Piece ............................................................................................ 28 
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`VI.  GROUND 1: CLAIMS 1-17 ARE NOT OBVIOUS OVER CAREY,
`TORNTORE, CALDER OR JOHNSON ...................................................... 29 
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`A.  Petitioner Fails to Show That the Proposed Combination Includes a
`“Turbulating Chamber” ................................................................................. 29 
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`B.  Petitioner Fails To Show That Torntore Discloses “Cylindrical Steps”
`(Claim 1) or “Three Cylindrical Passages” (Claims 2, 16, 17) ..................... 32 
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`C.  Petitioner Fails To Show That Johnson Discloses a “Pre-Orifice Piece” ..... 34 
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`D.  Petitioner Fails To Show That Johnson Discloses “the Tip Piece and the Pre-
`Orifice Piece Fully Define the Turbulating Chamber” ................................. 37 
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`E.  The Petition Fails To Show A Motivation to Combine The References In A
`Manner That Arrives At The Claimed Invention .......................................... 39 
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`1.  Showing That References Are From the Same Field or Are Able to Be
`Combined Does Not Show Motivation to Combine ................................... 39 
`2.  Petitioner Fails To Show That Adding Steps Provides a More Consistent
`Spraying Output While Increasing Speed ................................................... 41 
`3.  Petitioner Fails To Show That Adding Conical Shapes to a Turbulating
`Chamber Allowed For Easier Machining or That a Smoother Transition to
`Turbulence Was Deemed Desirable ............................................................ 42 
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`ii
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`4.  Petitioner Identifies No Motivation To Combine a Frustoconical Surface
`From Calder With a Stepped Section From Torntore Specifically As
`Claimed ....................................................................................................... 43 
`5.  Petitioner Fails To Show That Removing an Interstitial Seal and Abutting a
`Pre-orifice Piece to a Tip Piece Was Deemed Desirable ............................ 47 
`VII.  GROUND 2: CLAIMS 1-17 ARE NOT OBVIOUS OVER LISKA,
`TORNTORE OR JOHNSON ........................................................................ 49 
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`A.  Petitioner Fails to Show That the Proposed Combination Includes a
`“Turbulating Chamber” ................................................................................. 49 
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`B.  Petitioner Fails To Show That Torntore Discloses “Cylindrical Steps”
`(Claim 1) or “Three Cylindrical Passages” (Claims 2, 16, 17) ..................... 50 
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`C.  Petitioner Fails To Show That Johnson Discloses a “Pre-Orifice Piece” ..... 51 
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`D.  Petitioner Fails To Show That Johnson Discloses “the Tip Piece and the Pre-
`Orifice Piece Fully Define the Turbulating Chamber” ................................. 51 
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`E.  Petitioner Fails To Shown Motivation to Combine The References As
`Claimed .......................................................................................................... 51 
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`1.  Showing That References Are From the Same Field or Are Able to Be
`Combined Does Not Show Motivation to Combine ................................... 52 
`2.  Petitioner Fails To Show That Adding Steps To Liska Would Not Hinder
`Any Function ............................................................................................... 53 
`3.  Petitioner Fails To Show That Removing “This Component” In Liska Was
`Well Known ................................................................................................ 54 
`VIII.  GROUND 3: CLAIMS 1-5, 9-12 AND 16-17 ARE NOT OBVIOUS OVER
`JOHNSON OR UMN .................................................................................... 55 
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`A.  Petitioner Fails to Show That the Proposed Combination Includes a
`“Turbulating Chamber” ................................................................................. 55 
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`B.  Petitioner Fails To Show That UMN Discloses “Cylindrical Steps” (Claim
`1) or “Three Cylindrical Passages” (Claims 2, 16, 17) ................................. 57 
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`iii
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`C.  Petitioner Fails To Show That Johnson Discloses a “Pre-Orifice Piece” ..... 59 
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`D.  Petitioner Fails To Show That Johnson Discloses “the Tip Piece and the Pre-
`Orifice Piece Fully Define the Turbulating Chamber” ................................. 59 
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`E.  Petitioner Fails To Shown Motivation to Combine The References As
`Claimed .......................................................................................................... 60 
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`1.  Showing That References Are From the Same Field or Are Able to Be
`Combined Does Not Show Motivation to Combine ................................... 60 
`2.  Petitioner Fails To Show Motivation to Form the UMN Spray Tip As Two
`Pieces ........................................................................................................... 61 
`3.  Petitioner Fails to Show Motivation to Split the UMN Spray Tip At the
`Precise Location To Meet the Claim Limitations ....................................... 63 
`IX.  GROUND 4: CLAIMS 6-8 AND 14-15 ARE NOT OBVIOUS OVER
`JOHNSON, UMN OR LEISI ........................................................................ 66 
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`X.  GROUND 5: CLAIM 13 IS NOT OBVIOUS OVER JOHNSON, UMN OR
`TEEJET .......................................................................................................... 67 
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`XI.  CONCLUSION .............................................................................................. 67 
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`iv
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
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`EXHIBITS
`Declaration of Charles Garris, PhD
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`Complete Prosecution History of Ser. No. 15/362,047 (the
`application of the ’982 patent)
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`Complete Prosecution History of Ser. No. 15/022,044 as of
`June 12, 2018 (the parent of the ’982 patent)
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`GRACO2001
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`GRACO2002
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`GRACO2003
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`v
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
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`I.
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`INTRODUCTION
`Pursuant to 37 C.F.R. §42.107(a), Graco Minnesota Inc. (“Patent Owner”)
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`submit this Preliminary Response to the Petition for Post Grant Review (“PGR”) of
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`U.S. Patent No. 9,675,982 (“the ’982 patent”) filed by Wagner Spray Tech
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`Corporation (“Petitioner”). With regard to the challenged claims (1-17), Petitioner
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`has failed to meet its burden of showing a reasonable likelihood that it would
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`prevail with respect to any of these claims. Specifically, the Petition is fatally
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`deficient in at least six ways. Having such a large number of deficiencies in the
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`Petition provides overwhelming weight to deny institution of this flawed PGR
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`petition.
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`First, Petitioner raises prior art and issues that were already addressed and
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`overcome during original prosecution, without identifying any new evidence or
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`arguments that the examiner’s determination as to the issued claims was
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`unreasonable.
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`Second, Petitioner ignores the term “turbulating” in the claim term
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`“turbulating chamber” for all claims 1-17, and fails to show that the purported
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`chamber of the asserted prior art combination would be a “turbulating” chamber.
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`Third, Petitioner fails to show that Torntore (Grounds 1 and 2) or UMN
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`(Grounds 3-5) shows the claimed “cylindrical steps” or “three cylindrical
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`passages.”
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`1
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`Fourth, Petitioner ignores the term “orifice” in the claim term “pre-orifice
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`piece” for all claims 1-7, and fails to show that the Johnson reference discloses the
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`claimed “pre-orifice piece.”
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`Fifth, Petitioner overlooks the structural requirement that “the tip piece and
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`the pre-orifice piece fully define the turbulating chamber,” and fails to show that
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`Johnson—the only reference cited in the Petition for this claimed structure—
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`discloses such structure.
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`Sixth, Petitioner fails to establish the requisite motivation to combine the
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`references as claimed. Each of the Petition’s alleged reasons that a POSITA would
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`have been motivated to combine various features of the cited references are flawed
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`because they are conclusory/lack evidentiary support, illogical, or simply absent.
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`Indeed, for all of Grounds 2-5, the Petition never cites to any expert declaration at
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`all, let alone to support any alleged motivation to combine the references.
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`Accordingly, the “information presented in the petition” is woefully
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`insufficient to satisfy Petitioner’s burden under 35 U.S.C. § 314(a)—especially
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`where Petitioner cannot subsequently add argument/theories that should have been
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`part of the Petition. In re Magnum Oil Tools Int’l, 829 F.3d 1364, 1380 (Fed. Cir.
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`2016) (“could have been included in a properly-drafted petition, but was not”);
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge, Ltd., 821 F.3d 1359, 1369
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`(Fed. Cir. 2016). Thus, the Board should deny institution of PGR here.
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`2
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`II. BACKGROUND OF THE ’982 PATENT
`A. Background of the Invention
`Graco is Minnesota-based company founded in 1926 that manufactures paint
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`sprayers in the United States and sells them worldwide. Graco is the market leader
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`in contractor-grade paint sprayers. Over the years Graco and its engineers have
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`developed an expertise in paint sprayers, including airless paint sprayers. This
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`deep expertise in airless paint sprayer technology helped Graco and the four
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`inventors of the ’982 patent develop the improved airless paint sprayer spray tip
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`that is the subject of the ’982 patent and that has been such an improvement for
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`Graco airless paint sprayers. Ex. 1001, 1:18-37, 3:53-65.
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`In particular, the ’982 patent is directed to a unique spray tip architecture for
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`atomizing fluid in a spray. The claimed spray tip provides improved atomization
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`of spray fluid to allow for a uniform spray pattern at reduced pressures compared
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`to conventional spray tips, reducing overspray and extending the life of the spray
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`tip. See, e.g. Ex. 1001, 3:35-65; Ex. 2001, ¶¶14-18.
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`Conventional spray tips for airless paint systems often emitted paint in a
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`spray pattern that exhibited non-uniformity in the form of fringes or tails where
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`increased spay fluid is deposited when attempting low pressure spraying. Ex.
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`1001, 1:19-37; Ex. 2001, ¶¶15-16. Such non-uniformity often occurred at or near
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`the edges of the spray pattern:
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`3
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
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`Ex. 2001, ¶¶15-16.
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`While some prior systems attempted to reduce these fringes or tails by
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`increasing the spray pressure, such systems typically required more power to
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`generate the increased pressure, and caused components to wear out and require
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`replacement relatively quickly. Id. Moreover, such systems often generated
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`undesirable “overspray”—errant sprayed fluid that does not reach the targeted
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`surface—which required masking and taping of the surrounding environment to
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`protect non-targeted walls, trim, surfaces, etc. from a mist or cloud of paint
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`droplets. Id.
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`The ’982 patent addresses these problems with a unique configuration that
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`emits a uniform spray pattern at a reduced pressure and with reduced overspray.
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`Ex. 2001, ¶¶17-18. The result is a cleaner spray pattern, with less need for time-
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`consuming masking and taping of non-targeted surfaces. Id. The ’982 patent
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`accomplishes these advantages with a spray tip including a pre-orifice piece and a
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`tip piece abutting the pre-orifice piece. These components provide an internal
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`4
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`geometry including a stepped section, and a turbulating chamber formed by both
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`the pre-orifice piece and tip piece together. Ex. 1001, 3:53-65; Ex. 2001, ¶18. The
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`internal geometry of the pre-orifice piece and the tip piece can increase working
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`fluid turbulence and reduce pressure loss across an outlet aperture, which in turn
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`can promote the combination of a uniform spray pattern with less overspray. Id.
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`Improved spray pattern and reduced overspray can thus be achieved while
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`extending the useful life of the spray tip and reducing power associated with the
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`higher pressures often required of prior devices that attempted to promote spray
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`pattern uniformity using high pressure. Id.
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`B. Background of the Prosecution History
`The ’982 patent went through a substantive examination in which Carey,
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`Torntore, Calder, and Leisi were applied in detailed rejections against the claims.
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`In the Office Action dated December 29, 2016, the examiner presented
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`combinations of Carey in view of Torntore, Carey in view of Torntore and Leisi,
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`and Carey in view of Torntore and Calder. Ex. 1003, 3-7. In response, after
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`conducting an Examiner Interview, Applicant amended independent claim 1 to
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`recite a tip piece downstream of the pre-orifice piece “and abutting the pre-orifice
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`piece,” and “wherein the tip piece and the pre-orifice piece fully define the
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`turbulating chamber, the chamber section of the pre-orifice piece has an upstream
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`frustoconical surface that widens in a downstream direction and that defines an
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`5
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`upstream portion of the turbulating chamber, and the tip piece has a downstream
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`frustoconical surface of the turbulating chamber that narrows in the downstream
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`direction and that defines a downstream portion of the turbulating chamber.” Ex.
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`2002, 70-74. Independent claims 19 (issued claim 16) and 20 (issued claim 17)
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`were also amended to recite similar elements. Id. The examiner subsequently
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`conducted further searching in which Liska and Kieffer (U.S. 5,765,753) were
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`identified. After considering these additional references in view of the amended
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`claims, the examiner determined the claims were patentable over these
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`publications. Ex. 2002, 40-47; 49 (list of references cited by examiner); 57-63
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`(examiner’s search strategy and results).
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`The examiner’s Notice of Allowance identified multiple features and
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`combinations that were not found in the prior art, and concluded: “[T]herefore, it
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`would require an unreasonable combination of references that would not suffice for
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`a realistic case of obviousness.” Ex. 1004, 7 (emphasis added); Ex. 2001, ¶¶19-21.
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`The parent of the ’982 patent is currently pending before the same examiner.
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`Notably, both the ’982 patent and its parent were subjected to unwarranted third-
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`party harassment during prosecution—yet the claims of ’982 patent properly
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`distinguished the prior art and were allowed. On 12/19/2016, an “anonymous”
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`third-party submission was made in the parent case, which cited and included
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`claim charts describing two references. Ex. 2003, 175-187. The references of the
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`6
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`third-party submission in the parent were subsequently cited by Applicant, and
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`considered by the examiner, in the ’982 patent. Ex. 2002, 50-54. An
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`“anonymous” third party also disclosed references indirectly to the USPTO by
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`sending those references to the prosecuting attorney for the ’982 patent, including a
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`message referencing the pending application that became the ’982 patent, by
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`certified mail after the mailing of the notice of allowance. The references sent by
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`the “anonymous” party were then submitted to the USPTO in an IDS dated
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`5/2/2017 after the Notice of Allowance was issued. Ex. 2002, 27-29. These
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`additional references were also considered by the examiner during prosecution the
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`’982 patent, and a Corrected Notice of Allowability was issued. Ex. 2002, 10-16.
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`The ’982 patent issued on June 13, 2017. Ex. 1001, p. 1. On March 12,
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`Wagner filed its PGR petition. Accordingly, this PGR petition will be the third
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`time that the Office will consider allegedly prior art references that were selected
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`and submitted (either directly or indirectly) by a third party.
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`III. GROUNDS 1 AND 2 SHOULD BE DENIED INSTITUTION UNDER
`35 USC § 325(D), AND GROUND 3 SHOULD BE DENIED
`INSTITUTION UNDER THE BOARD’S DISCRETION
`Institution of Grounds 1 and 2 should be denied because the art and issues
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`raised have already been addressed by the USPTO during original prosecution.
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`Carey, Torntore, Calder, Liska, and Leisi, were all substantively analyzed in the
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`record. Petitioner’s attempt to further combine these references with yet another
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`7
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`reference (Johnson) ignores the Office’s determination in the reasons for
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`allowance, relies on the same unsupported “motivations to combine” that the
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`Office eventually concluded were insufficient as to the issued claims, and
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`contradicts the analysis of Petitioner’s own expert. Accordingly, exercise of
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`discretion under 35 U.S.C. §325(d) is warranted to avoid rehashing the same
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`analysis/issues from prosecution, particularly given Petitioner’s failure to explain
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`any error in the Office’s original determination that would warrant a different
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`result the second time around.
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`For example, Petitioner attempts to combine Johnson with Carey, Torntore,
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`and Calder (Ground 1), and Liska and Torntore (Ground 2), by alleging that
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`Johnson purportedly teaches “the claim limitation that was cited in the ’982 notice
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`of allowance as being the ‘reason for allowance.’” Petition, 27. But in doing so,
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`Petitioner ignores the examiner’s full analysis in the Reasons for Allowance, and
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`omits the examiner’s express determination that combining further references to
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`the cited publications to reach the claim as a whole would be “unreasonable”:
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`The prior art of record that comes closest to teaching all of the claimed
`features/components is the Carey reference however, Carey fails to
`teach abutment of the tip piece and the pre-orifice piece as well as the
`plurality of cylindrical steps, and fully defining the turbulating chamber
`as described. Torntore teaches the cylindrical steps but also fails to
`teach the abutment and as such the turbulating chamber. Therefore, it
`would require an unreasonable combination of references that would
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`8
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`not suffice for a realistic case of obviousness.
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`Ex. 1004, 6-7 (emphasis added to show portion omitted from the Petition’s
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`quotation at p. 13); Ex. 2001, ¶¶19-21. The Petition fails to even acknowledge this
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`critical determination from the Office, much less explain why it was in error.
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`Moreover, Petitioner’s use of Johnson merely attempts to advance the same
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`positions already deemed by the examiner to be unreasonable/unrealistic for the
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`allowed claims—that “it would have been obvious to one of ordinary skill in the
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`art at the time of the invention to abut and insert the pre-orifice piece with the tip
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`piece since it would allow removal of an interstitial seal.” Petition, 27. Indeed, the
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`Petition relies on the very same purported motivation to combine that was
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`abandoned by the examiner after reviewing the amended claims, without any
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`explanation as to why the USPTO should now reverse its conclusion.
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`Accordingly, the Petition fails to present any new evidence or arguments that
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`demonstrate the examiner’s conclusion was unreasonable. Hospira, Inc. v.
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`Genentech, Inc., IPR2017-00739, Paper 16, p. 18 (PTAB “informative” July 27,
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`2017) (Petition failed to “present[] new evidence or arguments that would convince
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`us that the examiner’s determination was unreasonable”).
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`Notably, Petitioner’s expert does not opine on the combination of Johnson
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`with Carey, Torntore, or Calder at all, and thus sheds no new light on issues or
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`content that the examiner was not already aware of. Instead, page 27 of Exhibit
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`9
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`1002 merely lists “Johnson” in the Ground 1 heading, but never actually cites to
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`Johnson anywhere the analysis of Ground 1.
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`The failure of the Petition to raise new issues worthy of institution is further
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`highlighted by the following non-exclusive factors, which are often considered in
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`determining whether to exercise discretion under §325(d). Becton, Dickinson &
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`Co. v. B. Braun Melsungen AG, IPR2017-01587, Paper 8, 17-18 (PTAB
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`“Informative” Dec. 5, 2015).
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`A. “the similarities and material differences between the asserted art
`and the prior art involved during examination”
` Carey, Torntore, Calder, and Liska, relied upon by the Petition in Grounds 1
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`and 2, were all substantively considered by the examiner. The only new reference
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`relied upon in Grounds 1 and 2 is Johnson, but Petitioner’s application of Johnson
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`is cumulative at best (as described below) and ignores the Office’s full reasons for
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`allowance.
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`B. “the cumulative nature of the asserted art and the prior art
`evaluated during examination”
` Carey, Torntore, and Calder were all applied by the examiner in rejections
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`of the claims, and are thus identical to the art evaluated during examination.
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`Johnson likewise is cumulative. For example, not only has Petitioner failed to
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`explain how Johnson is any different than the art of record, Petitioner has
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`represented the opposite—that the abutment feature purportedly disclosed by
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`10
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`Johnson was in fact described in other cumulative references considered by the
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`examiner. Petitioner concedes that “[a]ny number of references could have been
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`cited to show this. Leisi is one of these references and explicitly teaches a pre-
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`orifice piece directly abutting the tip piece.” Petition, 65. Yet, Petitioner ignores
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`that the examiner considered Leisi, and even applied Leisi in a rejection1. The
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`Petition fails to provide the requisite explanation how Johnson differs from Leisi,
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`or how the examiner misapplied Leisi during prosecution.
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`Worse yet, Petitioner’s flawed analysis is premised on the same unsupported
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`“motivation to combine” that was eventually withdrawn during prosecution.
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`Petition, 27 (erroneously assuming that the examiner’s “rationale for abutment is
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`also applicable for combining the explicit abutment of Johnson with the USPTO’s
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`combination.”). But these positions were deemed “unreasonable” and not
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`“realistic” by the examiner after considering and allowing the amended claims.
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`Ex. 2002, 46. Petitioner’s use of Johnson is new in name only—elevating form
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`over substance and ignoring the cumulative nature of the cited disclosure and the
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`alleged motivation to combine.
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`                                                            
`1 Leisi was applied by the examiner for another purpose as purportedly teaching
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`other claim limitations.
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`11
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`C. “the extent to which the asserted art was evaluated during
`examination, including whether the prior art was the basis for
`rejection”
` Carey, Torntore, and Calder were all the basis for rejection during
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`examination, and thus were evaluated in depth and applied in a similar manner as
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`by Petitioner. Liska (Ground 2) was one of two references explicitly identified by
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`the examiner after considering the amended claims. The examiner indicated that
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`Liska was “prior art made of record and not relied upon [that] is considered
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`pertinent to applicant’s disclosure.” Ex. 1004, 7. Petitioner here again fails to
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`articulate any differences between Liska and Carey as applied by the examiner.
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`As described above, Petitioner’s combination based on Johnson relies on the
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`same positions that were found inapplicable/unreasonable for the amended claims.
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`Petition, 27.
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`D. “the extent of the overlap between the arguments made during
`examination and the manner in which Petitioner relies on the
`prior art or Patent Owner distinguishes the prior art”
`The overlap between the arguments made during examination and the
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`manner in which Petitioner relies on the prior art is comprehensive. Carey,
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`Torntore, and Calder were applied in combination during original prosecution in
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`the same manner as during original prosecution. Indeed, the Petition concedes this
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`combination is “the USPTO’s combination.” See, e.g. Petition, 26-28 (relying on
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`the Office Action’s purported combination of the references).
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`Likewise, Petitioner quotes the same unsupported positions for its further
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`combination with Johnson that were previously argued and then withdrawn by the
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`examiner—that “it would have been obvious to one of ordinary skill in the art at
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`the time of the invention to abut and insert the pre-orifice piece with the tip piece
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`since it would allow removal of an interstitial seal.” Petition, 27 (quoting Ex.
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`1003, 8). However, Petitioner has failed to explain why combination with Johnson
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`leads to any different argument or reasoning than that previously advanced by the
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`examiner. This deficiency is particularly notable given that the examiner already
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`raised and dismissed these positions as unreasonable/unrealistic for the amended
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`claims. Ex. 2002, 46. In short, Petitioner relies on the same positions already
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`overcome during prosecution. Petition, 27 (“also applicable for combined the
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`explicit abutment of Johnson with the USPTO’s combination”). Siemens
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`Healthcare Diagnostics Inc. v. Radiometer Medical APS, IPR2018-00311, Pap. 6,
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`17-20 (PTAB 2018) (denying institution where “the Petition raises the same or
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`substantially the same prior art or arguments as those previously presented to the
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`Office”).
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`Petitioner ignores that the examiner found these arguments to be overcome
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`by the issued claims, and Petitioner fails to provide the requisite explanation that
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`its analysis of Johnson adds something to overcome the examiner’s determination.
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`The Petition tersely assumes that the “Notice of Allowance did not address the
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`earlier contradicting statement in the Office Action” regarding abutment. Petition,
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`13. Here again, however, Petitioner ignores the examiner’s full analysis and
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`conclusion that Carey and Torntore each fail to teach the “abutment” and “fully
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`defining the turbulating chamber as described,” and “[t]herefore, it would require
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`an unreasonable combination of references that would not suffice for a realistic
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`case of obviousness.” Ex. 1004, 7. The Petition fails to add any purported reasons
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`to combine Johnson with Carey, Torntore, and Calder beyond those already
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`considered by the examiner, and fails to present any explanation or evidence that
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`its combination would not be “unreasonable.”
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` As noted above, Liska (Ground 2) was likewise evaluated by the examiner,
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`and Petitioner fails to articulate any differences between Liska and Carey as
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`applied by the examiner during prosecution.
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`E. “whether Petitioner has pointed out sufficiently how the
`Examiner erred in its evaluation of the asserted prior art”
` The Petition does not identify any purported error in the examiner’s analysis
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`or conclusion. Rather, the Petition relies on the examiner’s analysis as to the
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`original claim language, ignoring the examiner’s conclusion as to the issued
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`claims, and without any new evidence or arguments that the examiner’s
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`determination as to the issued claims was unreasonable. This is insufficient. See,
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`e.g. Hospira, Paper 16 at 18; Siemens Healthcare Diagnostics, IPR2018-00311,
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`Pap. 6, 18 (denying institution where “Petitioner does not present any arguments
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`14
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`Proceeding No. PGR2018-00049
`Attorney Docket No: 46553-0002PS1
`distinguishing the Office’s previous decisions on substantially the same issues or
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`provide a compelling reason why we should re–adjudicate substantially the same
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`prior art and arguments presented during prosecution and considered by the
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`Examiner”).
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`F. “the extent to which additional evidence and facts presented in the
`Petition warrant reconsideration of the prior art or arguments”
` The Petitioner fails to present additional evidence and facts that warrant
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`reconsideration of the prior art or arguments. As discussed above, the Petition
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`repeatedly cites to the Office Action for its analysis, which is directed to different
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`claim language than the issued claims of the ’982 patent. Petitioner’s declarant
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`adds nothing, and in fact the Petition contradicts his analysis. Dr. Ben-Tzvi does
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`not opine on the combination of Johnson with Carey, Torntore, or Calder, the
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`Petition never identifies any portion of Ex. 1002 with testimony regarding a
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`deficiency in the examiner’s analysis, and thus likewise fails to present any
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`evidence that warrants reconsideration of the examiner’s analysis.
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`Ultimately, Grounds 1 and 2 rely on the same art already considered in
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`earlier office a