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`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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`
`COSENTINO S.A.U. and C & C NORTH AMERICA INC.,
`Petitioners,
`
`v.
`
`CAMBRIA COMPANY LLC,
`Patent Owner.
`
`_________________
`
`Case No. PGR2021-00010
`U.S. Patent No. 10,773,418
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`
`
`
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`DECLARATION OF DR. JOHN R. DORGAN
` IN SUPPORT OF PETITION FOR POST GRANT REVIEW
`OF U.S. PATENT NO. 10,773,418
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`PGR2021-00010
`U.S. Patent 10,773,418
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`TABLE OF CONTENTS
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`QUALIFICATIONS AND BACKGROUND ................................................. 3
`II.
`SUMMARY OF OPINIONS ........................................................................... 5
`III.
`IV. TECHNOLOGY OF THE ’418 PATENT ...................................................... 5
`A. Overview of the ’418 Patent .................................................................. 5
`B.
`The Challenged Claims .......................................................................15
`C.
`Prosecution History of the ’418 Patent ...............................................17
`V. OBVIOUSNESS LEGAL STANDARD .......................................................18
`A.
`Claim Construction..............................................................................19
`B.
`Obviousness Under 35 U.S.C. § 103 ...................................................19
`INDEFINITENESS LEGAL STANDARD ..................................................21
`VI.
`VII. PERSON OF ORDINARY SKILL IN THE ART ........................................21
`VIII. UNPATENTABILITY ..................................................................................22
`IX. OVERVIEW OF PRIOR ART ......................................................................25
`A.
`The Prior Art .......................................................................................25
`B. Overview of Dening ............................................................................27
`C.
`Overview of Zhangwu .........................................................................34
`D. Overview of Benito .............................................................................40
`E.
`Overview of Buskila ............................................................................42
`CHALLENGE 1: CLAIMS 1-23 WOULD HAVE BEEN OBVIOUS
`OVER DENING, ZHANGWU, BENITO, AND BUSKILA ...........................43
`A.
`Independent Claim 1 ...........................................................................44
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`X.
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`B.
`Dependent Claim 2 ..............................................................................78
`Dependent Claim 3 ..............................................................................80
`C.
`D. Dependent Claim 4 ..............................................................................84
`E.
`Dependent Claim 5 ..............................................................................85
`F.
`Dependent Claim 6 ..............................................................................87
`G. Dependent Claim 7 ..............................................................................89
`H. Dependent Claim 8 ..............................................................................90
`I.
`Dependent Claim 9 ..............................................................................91
`J.
`Dependent Claim 10 ............................................................................92
`K. Dependent Claim 11 ............................................................................99
`L.
`Dependent Claim 12 ..........................................................................101
`M. Dependent Claim 13 ..........................................................................104
`N. Dependent Claim 14 ..........................................................................105
`O.
`Independent Claim 15 .......................................................................108
`P.
`Dependent Claim 16 ..........................................................................140
`Q. Dependent Claim 17 ..........................................................................143
`R.
`Dependent Claim 18 ..........................................................................145
`S.
`Dependent Claim 19 ..........................................................................149
`T.
`Dependent Claim 20 ..........................................................................151
`U. Dependent Claim 21 ..........................................................................152
`V. Dependent Claim 22 ..........................................................................155
`W. Dependent Claim 23 ..........................................................................156
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`X. Alleged Secondary Considerations Do Not Support
`Patentability Here ..............................................................................159
`XI. CHALLENGE 2: CLAIMS 1-23 ARE INDEFINITE ................................161
`B.
`“Generally Lengthwise Segment” and “Generally Widthwise
`Segment” in Claims 15-23 Are Indefinite .........................................162
`XII. CONCLUSION ............................................................................................165
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`iii
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`I.
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`PGR2021-00010
`U.S. Patent 10,773,418
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`INTRODUCTION
`I, John R. Dorgan, submit this declaration to state my opinions on the
`1.
`
`matters described below.
`
`2.
`
`I have been retained on behalf of Cosentino S.A.U.; Stone Systems of
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`Central Texas LLC; Stone Systems of Houston, LLC; Stone Systems of New
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`Mexico, LLC; Stone-Made Products, Inc.; Stone Suppliers, Inc.; and C & C North
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`America Inc. as an expert in this proceeding before the United States Patent &
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`Trademark Office.
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`3.
`
`I understand that this proceeding involves U.S. Patent No. 10,773,418,
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`entitled “Processed Slabs, and Systems and Methods Related Thereto” (“the ’418
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`patent”), and that I have been asked to provide my opinions as to the patentability or
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`unpatentability of the claims of the ’418 patent.
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`4.
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`I have reviewed and am familiar with the ’418 patent. I understand that
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`the ’418 patent has been provided for this proceeding as Ex. 1001. I will cite to the
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`’418 patent using the following format: ’418 patent at 1:1-10. This example points
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`to the ’418 patent at column 1, lines 1-10.
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`5.
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`I have reviewed and am familiar with the file history of the ’418 patent.
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`I understand that the file history has been provided as Ex. 1002.
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`6.
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`In preparing this declaration, I have also reviewed and am familiar with
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`the following prior art:
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`
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`1
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`PGR2021-00010
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`U.S. Patent 10,773,418
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`• Certified Translation PCT Patent Application No. WO
`2008/000168 to Yang Dening (Ex. 1007), filed on June 25,
`2006, and published on January 3, 2008.
`• Certified Translation of Chinese Patent Application
`Publication No. 102806599 A to Chen Zhangwu and Chen
`Xiaobin (Ex. 1006), filed on June 3, 2011, and published on
`December 5, 2012.
`• U.S. Patent Application Publication No. 2015/0360507 to
`Jose Manuel Benito-Lopez, Leopoldo Gonzalez Hernandez, and
`Juan Antonio Jara Guerrero (Ex. 1009), filed on January 11,
`2013, and published on December 17, 2015.
`• U.S. Patent Application Publication No. 2011/0034586 to
`Liat Eliahu Buskila, Yaakov Gal, Eran Pinhas Goldberg, Ruti
`Harel, Yaacov Ron, and Alon Golan (Ex. 1012), filed on
`September 20, 2010, issued on May 7, 2013, and entitled to a
`priority date of September 25, 2007 based on Provisional
`Application No. 60/960,322.
`
`7.
`
`This declaration sets forth my opinions, which I have formed based on
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`my study of the evidence; my understanding as an expert in the field; as well as my
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`training, education, research, knowledge, and personal and professional experience.
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`8.
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`I am being compensated for my time in connection with this proceeding
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`at my standard hourly consulting rate of $500 per hour. This compensation is in no
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`way contingent upon the nature of my findings, upon the presentation of my findings
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`in testimony, or upon the outcome of this proceeding.
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`II. QUALIFICATIONS AND BACKGROUND
`I believe I am qualified to serve as a technical expert in this proceeding
`9.
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`based upon my educational and work experience.
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`10.
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`I understand that a copy of my current curriculum vitae is provided for
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`this proceeding as Ex. 1003.
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`11.
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`I received a Bachelor of Science degree in Chemical Engineering from
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`the University of Massachusetts at Amherst, in 1986, and a Doctorate of Philosophy
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`in Chemical Engineering from the University of California at Berkeley, in 1991. I
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`completed Post-Doctoral studies in polymeric materials at the Max-Planck Institut
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`für Polymerforschung in Mainz, Germany, from 1991 to 1992.
`
`12.
`
`I am currently a Professor of Chemical Engineering and Materials
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`Science at Michigan State University, where I hold the David and Denise Lamp
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`Endowed Professorship. Previously, I taught at the Colorado School of Mines from
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`1993 to 2017, where I attained the rank of Full Professor.
`
`13.
`
`I currently lead a team of researchers focused on developing styrene-
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`free biorenewable resins for use in construction of countertops, bathroom fixtures,
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`windmill blades, and other products. We currently have biorenewable resin systems,
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`both thermosetting and thermoplastic, formulated using combinations of bioplastics,
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`acrylics, and styrene alternatives.
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`U.S. Patent 10,773,418
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`I served as the Director of the Colorado Institute for Macromolecular
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`14.
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`Science and Engineering from 1996 to 2004. I also served as a technical lead for the
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`federal Institute for Advanced Composite Manufacturing Innovation in 2016.
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`15.
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`I have published over ninety peer-reviewed papers in the materials and
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`chemical engineering fields, including papers on polymer rheology, polymerization
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`kinetics, bioplastics, novel nanocomposites, and methods for creating, detecting, and
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`studying materials.
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`16.
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`I am a named inventor on eight patents, six of which are directed to the
`
`materials field:
`
`• U.S. Patent No. 8,569,428 (“High Modulus Polymer Composites”)
`• U.S. Patent No. 7,662,275 (“Methods of Managing Water in Oil Shale
`Development”)
`• U.S. Patent No. 8,877,338 (“Sustainable Polymer Nanocomposites”)
`• U.S. Patent No. 8,993,705 (“Polylactide-graft-lignin Blends and
`Copolymers”)
`• U.S. Patent No. 9,303,127 (“Lignin Extraction from
`Lignocellulosics”)
`• U.S. Patent No. 9,290,658 (“Blends of Biorenewable Polyamides and
`Methods of Making the Same”)
`• U.S. Patent No. 9,796,921 (“Boron Compounds for Use in
`Scintillators and Admixture to Scintillators”)
`• U.S. Patent No. 10,280,255 (“Renewable Resins and Unsaturated
`Polyesters and Methods of Making the Same”)
`
`
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`III. SUMMARY OF OPINIONS
`I have been asked to opine on whether the claims of the ’418 patent are
`17.
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`unpatentable. It is my opinion each of claims 1-23 of the ’418 patent is unpatentable
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`because each would have been obvious to a person of ordinary skill in view of the
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`prior art. Further, it is my opinion that each of claims 1-23 is indefinite and therefore
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`unpatentable for this additional reason as well.
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`IV. TECHNOLOGY OF THE ’418 PATENT
`A. Overview of the ’418 Patent
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`18. The ’418 patent discloses “systems and processes for forming synthetic
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`mold slab products” “suitable for use in living or working spaces (e.g., along a
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`countertop, table, floor, or the like).” (’418 patent at 1:18-24, 1:45-48.) Each slab is
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`made from a number of differently pigmented particulate mineral mixes dispensed
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`into “predetermined regions of a series of molds” through “complementary stencils.”
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`(ʼ418 patent at 1:45-2:61, 3:25-59, 5:52-64, 12:22-65.) This creates a repeatable
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`“veining” pattern that emulates quarried stone slabs. (’418 patent at 1:45-2:61, 4:17-
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`31, 5:52-64, 11:51-55.) The veins can extend partly or fully across the slab’s length
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`or width, or occupy the slab’s full thickness, to provide a “natural vein appearance.”
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`(’418 patent at 11:54-60, 5:59-65.) Figure 6 of the ’418 patent shows an exemplary
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`slab. I have reproduced Figure 6 below:
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`5
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`(’418 patent at Figure 6, 5:8-9, 11:46-12:21.) The ’418 patent indicates that numerals
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`602, 606 correspond to “differently pigmented veins.” (’418 patent at 11:46-12:21.)
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`19.
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`In addition to the slab design noted above, the ’418 patent also discloses
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`a method for creating slabs with such distinct vein patterns. (’418 patent at Figure 7,
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`12:22-65.) According to the ’418 patent, this method includes positioning a “positive
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`partial slab stencil” in a slab mold. (’418 patent at 12:25-27.) Figure 2A of the ’418
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`patent shows an exemplary slab mold 130 and positive partial stencil 200. This figure
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`is upside down relative the actual production process. During production, the mold
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`is on the bottom and the stencil is placed on top and removed, as shown in, for
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`example, Figure 2B and as discussed in the specification (’418 patent at Figure 2B,
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`7:8-53.) I have reproduced and annotated Figure 2A below:
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`U.S. Patent 10,773,418
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`(’418 patent at Figure 2A (annotated), 4:63-65, 7:8-53.)
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`20. As shown above, the slab mold 130 has a planar floor 132 bounded by
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`a collection of walls 131, and these walls extend perpendicularly from the floor to
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`define a “generally tray-like shape.” (’418 patent at 7:12-15.) Positive partial stencil
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`200 has “an outer frame 202 having a length and width that approximates that of the
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`slab mold.” (’418 patent at 7:16-30.) As the ’418 patent explains, the positive partial
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`stencil’s frame supports “occluded regions 204 and defines a collection of design
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`apertures 206.” (’418 patent at 7:31-32.) According to the ’418 patent, the apertures
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`“define spaces . . . into which a particulate mineral mix can be dispensed,” and the
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`occluded regions “prevent the mix from entering” other spaces. (’418 patent at 7:31-
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`32.)
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`21. The ’418 patent explains once the mold and positive partial slab stencil
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`are assembled, the outer frame of stencil 200 rests on the walls of mold 130. (’418
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`U.S. Patent 10,773,418
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`patent at 7:41-53.) This is illustrated in Figure 2B—which is a rotated perspective
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`of Figure 2A discussed above in which the planar mold floor 132 is now shown as
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`the bottom of the assembly—which I have annotated and reproduced below:
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`(’418 patent at Figure 2B (annotated), 4:63-65, 7:8-53.)
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`22. After the positive stencil has been positioned in the slab mold, the ’418
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`patent discloses that “a first pigmented particulate mineral mix” is dispensed by a
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`“distributor,” through the positive stencil, into the mold. (’418 patent at 12:27-37.)
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`This mineral mix can be a predominantly quartz material (for example, a mixture of
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`a particulate quartz material, one or more pigments, and one or more resin binders).
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`(’418 patent at 2:1-7, 2:28-31, 3:55-57, 6:10-54, 12:27-37.) The first mineral mix is
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`held in a first distributor and is “controllably released through the dispensing head”
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`of that distributor into the mold. (For example, ’418 patent at 10:53-64.) According
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`to the ’418 patent, the occluded regions 204 “block the dispensation of the mix into
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`predetermined areas,” and a “collection of apertures 206 allow the mix to fill [other]
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`U.S. Patent 10,773,418
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`predetermined areas.” (For example, ’418 patent at 10:60-64.) The dispensing and
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`filling step involves the relative motion of the dispensing head with respect to the
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`mold. The ’418 patent explains “[t]he slab mold 130 is partly filled by drawing the
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`distributor 460a laterally across the partial slab stencil 200, or by passing the partial
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`slab stencil and the slab mold 130 laterally beneath the distributor.” (’418 patent at
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`11:17-27.) This is typically done using a conveyor belt or air table, as is shown in,
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`and discussed with respect to, Figure 4. (’418 patent at 8:33-51.) The dispensing and
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`filling step is shown in Figure 5A, which I have reproduced and annotated below:
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`(’418 patent at Figure 5A (annotated).)
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`23. After the first mineral mix is added to the mold, the ’418 patent explains
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`that the positive partial stencil 200 is removed. (’418 patent at 12:37-43.) At this
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`point, the slab mold is “partly filled . . . in the filled regions 502,” and “partly unfilled
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`in a collection of unfilled areas 504.” (’418 patent at 10:65-11:3.) This stage is seen
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`below in Figure 5B, which I have annotated:
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`U.S. Patent 10,773,418
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`(’418 patent at Figure 5B (annotated).)
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`24. Next, the ’418 patent discloses that a second stencil will be placed on
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`the partially filled slab mold (of Figure 5B above). (’418 patent at 12:37-43, 11:4-
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`16, 7:54-8:32.) According to the patent, this second stencil can be complementary
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`to the first partial slab stencil 200. (’418 patent at 7:58-8:2.) That is, the “areas that
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`are occluded in the first partial slab stencil 200 are generally open in the second . . .
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`, and areas that are open in the first partial slab stencil 200 are generally occluded in
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`the second . . . .” (’418 patent at 7:61-65.) In this way, the ’418 patent suggests that
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`the first stencil provides a positive partial stencil, and the second stencil provides a
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`“negative” stencil. (’418 patent at 7:61-65, 11:12-16, Figure 7.) This correspondence
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`(or their complementary nature) can be seen below in the side-by-side reproduction
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`of Figure 2A and Figure 3A of the ’418 patent:
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`10
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`(’418 patent at Figure 2A (annotated left) (the ’418 positive partial stencil), Figure
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`3A (annotated on right) (the ’418 second stencil).) And as shown in Figure 3B below,
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`the second stencil will be placed on the partially filled mold—on top of the regions
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`filled with the first mineral mix—to prepare for its subsequent filling with the second
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`material. (’418 patent at 12:37-43, 7:54-8:32.)
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`(’418 patent at Figure 3B (annotated).)
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`U.S. Patent 10,773,418
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`25. After the second stencil has been placed, the ’418 patent explains that
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`a second particulate mineral mix is dispensed by a second distributor through the
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`second stencil, into the mold. (’418 patent at 12:44-51.) Like the first mineral mix,
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`the second pigmented particulate mineral mix may comprise a predominantly quartz
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`material. (’418 patent at 12:46-51.) According to the patent, the occluded regions in
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`the second stencil “block the dispensation of the mix into predetermined areas of the
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`slab mold [], while the collection of apertures 306 allow the mix to fill the unfilled
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`areas 504” of the mold. (’418 patent at 11:23-27.) Since the occluded regions in the
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`second stencil “correspond to” filled regions 502 generated by the first filling step,
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`the ’418 patent explains that the second stencil “substantially prevent[s] the second
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`mix from being dispensed as a second layer upon the first mix already in the filled
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`regions 502.” (’418 patent at 11:4-16.) As with the first dispensing and filling step
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`above, this dispensing and filling step involves the relative motion of the dispensing
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`head with respect to the mold. The ’418 patent explains “[t]he slab mold 130 is partly
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`filled by drawing the distributor 460b laterally across the partial slab stencil 300, or
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`by passing the partial slab stencil and the slab mold [] laterally beneath the distributor
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`460b.” (’418 patent at 11:17-20.) This is typically done using a conveyor belt or air
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`table as is shown in, and discussed with regard to, Figure 4. (’418 patent at 8:33-51.)
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`This filling and dispensing step is shown in Figure 5C, which I have reproduced and
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`annotated below:
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`(’418 patent at Figure 5C (annotated).) After the second mix is dispensed, the second
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`stencil is removed. (’418 patent at 12:51-54.).
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`26. According to the patent, the slab mold is filled with a first particulate
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`mineral mix in filled regions 502, and a second mineral mix in different filled regions
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`506. (’418 patent at 11:28-34.) The first mix is disclosed as being “absent” from
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`second regions 506, and vice versa. (’418 patent at 3:47-54, 4:9-12.) This is shown
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`in Figure 5D, which I have reproduced and annotated below:
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`(’418 patent at Figure 5D (annotated).) The ’418 patent also provides some examples
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`when “three or more partial slab stencils, distributors, and particulate mineral mixes”
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`can be used. (’418 patent at 11:35-45.)
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`27.
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`In my opinion, the design for the ’418 stencils ensures that the first mix
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`and second mix do not occupy the same regions of the slab mold. Specifically, as is
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`shown above in Figures 2A and 3A (above), the occluded regions of the two stencils
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`have walls that keep each mineral mix in desired regions of the mold. The occluded
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`regions, defined by these walls, “extend substantially through the thickness T of the
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`slab mold.” (’418 patent at 7:46-48.) This prevents unwanted mineral mixes from
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`entering the occluded regions. (’418 patent at 7:50-53.)
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`28. The ’418 patent discloses several “finishing” steps used to form a final
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`slab from this mold. (’418 patent at 12:55-65.) First, the ’418 patent explains the slab
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`mold may be “contemporaneously” vibrated and compacted. (’418 patent at 12:55-
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`65.) For example, as the ’418 patent discloses, a vibro-compaction press can apply
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`compaction pressure, vibration, and vacuum to the contents in the mold, “thereby
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`converting the particulate mixes into a rigid slab.” (’418 patent at 10:30-35.) The
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`slab materials are then “cured via a heating process[,] thereby further strengthening”
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`their contents. (’418 patent at 10:35-40.) After curing, the patent explains the mold
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`is removed from the fully-cured slab, and the cured slab may be polished to a smooth
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`finish. (’418 patent at 10:40-48.) With this step, the ’418 patent discloses that this
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`cured slab achieves the “appearance of the complex striations and veining patterns
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`that emulates a quarried stone slab.” (’418 patent at 10:44-52.) The patent explains
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`that by repeating this process, reusing the disclosed stencils, molds, and equipment,
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`a set of slabs can be created with a substantially repeated major surface appearance.
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`(See, for example, ’418 patent at 3:40-4:53.)
`
`B.
`
`The Challenged Claims
`
`29. The ’418 patent has only two independent claims: claims 1 and 15. The
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`claims share similar limitations. I have reproduced these claims below and indicated
`
`any differences in italics:
`
`Claim 1
`A processed slab formed from a
`plurality of particulate mineral mixes
`deposited into a mold, comprising:
`
`Claim 15
`A processed slab formed from a
`plurality of particulate mineral mixes
`deposited into a mold, comprising:
`
`a slab width that is at least 2 feet, a slab
`length that extends perpendicular to the
`slab width and that is at least 6 feet, and
`a slab thickness that extends
`perpendicular to the slab width and the
`slab length, the slab length greater than
`the slab width, the slab width greater
`than the slab thickness;
`
`a slab width that is at least 2 feet, a slab
`length that extends perpendicular to the
`slab width and that is at least 6 feet, and
`a slab thickness that extends
`perpendicular to the slab width and the
`slab length, the slab length greater than
`the slab width, the slab width greater
`than the slab thickness;
`
`a first predetermined pattern defined by
`a first particulate mineral mix and
`comprising a set of slab veins exposed
`along a major surface of the slab, the set
`of slab veins comprising:
`
`a first predetermined pattern defined by
`a first particulate mineral mix and
`comprising a set of slab veins exposed
`along a major surface of the slab, the set
`of slab veins comprising:
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`15
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`Claim 1
`a first vein in a generally lengthwise
`direction along the major surface, the
`first vein having a first vein thickness
`defined by the first particulate mineral
`mix that is equal and parallel to the slab
`thickness,
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`PGR2021-00010
`U.S. Patent 10,773,418
`Claim 15
`a first vein having a generally
`lengthwise segment along the major
`surface, the first vein having a first vein
`thickness defined by the first particulate
`mineral mix that is equal and parallel to
`the slab thickness,
`
`a second vein in a generally widthwise
`direction along the major surface, the
`second vein having a second vein
`thickness defined by the first particulate
`mineral mix that is equal and parallel to
`the slab thickness,
`
`a second vein having a generally
`widthwise segment along the major
`surface, the second vein having a
`second vein thickness defined by the
`first particulate mineral mix that is
`equal and parallel to the slab thickness;
`
`wherein the first vein in the generally
`lengthwise direction intersects the
`second vein in the generally widthwise
`direction; and
`
`
`
`a second predetermined pattern defined
`by a second particulate mineral mix that
`occupies the entire slab thickness;
`
`second predetermined pattern defined
`by a second particulate mineral mix that
`occupies the entire slab thickness
`adjacent to opposite sides of each of the
`first vein and the second vein;
`
`wherein the first and second mineral
`mixes are different and each comprise
`quartz and one or more binders,
`
`wherein the first and second mineral
`mixes are different and each comprise
`quartz and one or more binders,
`
`the first particulate mineral mix absent
`from the second predetermined pattern
`and the second particulate mineral mix
`absent from the first predetermined
`pattern.
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`30. Claims 2-14 and 16-23 are dependent. They depend from claims 1 and
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`the first particulate mineral mix absent
`from the second predetermined pattern
`and the second particulate mineral mix
`absent from the first predetermined
`pattern.
`
`15, respectively. They require additional features, such as, the “the set of slab veins
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`16
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`U.S. Patent 10,773,418
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`further comprises a third vein in a generally lengthwise direction” (claim 2); “the
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`third vein in a generally lengthwise direction intersects the second vein in a generally
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`lengthwise direction” (claim 3); “the first predetermined pattern is an inverse of the
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`second predetermined pattern” (claim 7); and, the set comprises “the third particulate
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`mineral mix [that] is differently pigmented” (claim 9) that “does not extend through
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`the full thickness of each” slab (claim 10). (’418 patent at 13:42-47; 13:48-50; 13:62-
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`64; 14:1-3; 14:4-6.)
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`C.
`
`Prosecution History of the ’418 Patent
`
`31.
`
`I understand that the ’418 patent does not have an extensive prosecution
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`history. Ex. 1002. I understand the application leading to the ’418 patent was filed
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`on March 21, 2019. (Ex. 1002 at 2-57.) That original application contained eight (8)
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`claims. (Ex. 1002 at 2-57.)
`
`32. Counsel informed me that before examination, the Applicant submitted
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`a preliminary amendment that cancelled original claims 1-8, and added new claims
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`9-28. (Ex. 1002 at 77-82.)
`
`33. Counsel informed me that in a first office action, March 18, 2020, the
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`Examiner issued a nonstatutory double patenting rejection over related U.S. Patent
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`No. 10,195,762. (Ex. 1002 at 119-123.) The Examiner stated—“although the claims
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`are not identical, they are not patentably distinct from each other.” (Ex. 1002 at 122.)
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`17
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`U.S. Patent 10,773,418
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`In response, I understand that the Applicant made amendments to clarify antecedent
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`basis and submitted a terminal disclaimer. (Ex. 1002 at 145-151.)
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`34. On July 23, 2020, the Examiner allowed the claims (Ex. 1002 at 213-
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`219), and stated that the “closest prior art fails to disclose or suggest a processed slab
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`formed from a plurality of particulate mineral mixes, where the mineral mixes form
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`a first and second vein, wherein the mineral mixes are formed from quartz, and one
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`or more binders and are each different, wherein the mineral mixes are absent from
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`each other” (Ex. 1002 at 218).
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`V. OBVIOUSNESS LEGAL STANDARD
`In forming my opinions and considering the subject matter of the ’418
`35.
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`patent and its claims in light of the prior art, I am relying on certain legal principles
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`that counsel in this case has explained to me. My understanding of these concepts is
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`summarized below.
`
`36.
`
`I understand that the claims define the invention. I also understand that
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`an unpatentability analysis is a two-step process. First, the claims of the challenged
`
`patent are construed to determine their meaning and scope. Second, once the claims
`
`have been construed, the content of the prior art is compared to the construed claims.
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`37.
`
`I understand there are two ways in which prior art may render a patent
`
`claim unpatentable. First, the prior art can “anticipate” the claim. Second, the prior
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`art can make the claim “obvious” to a person of ordinary skill in the art. I understand
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`U.S. Patent 10,773,418
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`that for an invention claimed in a patent to be patentable, it must not be anticipated
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`and must not be obvious based on what was known before the invention was made.
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`38. For this declaration, I have been asked to opine on issues regarding the
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`technology at issue, the level of ordinary skill in the art at the time of invention, and
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`obviousness. I have been informed of the following standards which I have applied
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`in forming my opinions.
`
`A. Claim Construction
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`39.
`
`I have been informed that in a post grant review, claim terms should be
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`given the meaning they would have to a person of ordinary skill in the art in question
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`at the time of the patent’s effective filing date—here, January 30, 2015. The person
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`of ordinary skill is deemed to read the claim term not only in the context of the claim
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`in which the disputed term appears, but in the context of the entire patent, including
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`the specification and the prosecution history. I have also been informed that claims
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`should only be construed to the extent necessary to resolve any controversy. I have
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`applied these standards here.
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`B. Obviousness Under 35 U.S.C. § 103
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`40.
`
`I understand that the existence of each and every element of the claimed
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`invention in a prior art does not necessarily prove obviousness and that most, if not
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`all, inventions rely on building blocks of prior art. But I have been informed that a
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`claim may be unpatentable as obvious under 35 U.S.C. § 103 if differences between
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`U.S. Patent 10,773,418
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`the subject matter patented and prior art are such that the subject matter of the claim
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`as a whole would have been obvious to a person of ordinary skill in the art at the
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`time the invention was made. I have been advised several factual inquiries underlie
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`an obviousness determination. These inquiries include the (1) scope and content of
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`prior art; (2) level of ordinary skill; (3) differences between the claimed invention
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`and the prior art; and (4) objective evidence of nonobviousness.
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`41.
`
`I understand, where a party alleges obviousness based on a combination
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`of references, that party must identify a reason why a person skilled in the art would
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`have been motivated to combine the asserted references in the manner recited in the
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`claims and to explain why one skilled in the art would have a reasonable expectation
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`of success in making such combinations.
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`42.
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`I understand that the law permits the application of “common sense” in
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`examining whether a claimed invention would have been obvious to a person skilled
`
`in the relevant art. For example, I understand combining familiar elements according
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`to known methods in a predictable way suggests obviousness when the combination
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`would yield nothing more than predictable results.
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`43.
`
`I understand the obviousness inquiry should include known objectiv