INTRODUCTION
`
`Background and Expertise
`
`"I, Allan Myerson, hereby declare as follows:
`
`I.
`
`My name is Allan Myerson. I have been retained by Petitioner Rockwool International
`1.
`A/S (“Rockwool” or “Petitioner”) in connection with the above referenced post-grant review
`(“PGR”) of U.S. Patent No. 10,968,629 (“the ‘629 Patent” or “Ex. 1001”). I understand that the
`‘629 Patent is assigned to Knauf Insulation, Inc. and Knauf Insulation SPRL (“Knauf” or “Patent
`Owner”).
`
`I have been asked by Petitioner to offer opinions regarding the ‘629 Patent, including
`2.
`whether, during the prosecution of the ‘629 Patent, claims were added that fail to meet the
`requirements of 35 U.S.C. § 112 with regard to the priority document listed on the face of the
`‘629 Patent and whether the issued claims 1-19 (the “challenged claims”) of the ‘629 Patent are
`anticipated by U.S. Patent Application Publication No. 2010/0086726 (“the ‘726 publication” or
`“Ex. 1004” or “the Knauf Parent”). This declaration sets forth the opinions I have reached to date
`regarding these matters.
`
`Specifically, I have reviewed the prosecution history for the ‘629 Patent with respect to
`3.
`the addition of the phrase “solids content less than about 26.5% by weight” and determined that
`the priority document lacks written description support for the phrase “solids content less than
`about 26.5% by weight. This includes consideration of the priority document’s incorporation by
`reference of PCT/US2006/028929. A person of ordinary skill in the art would not recognize that
`the inventors possessed an aqueous binder solution with a solids content in the range of 0-26.5%
`by weight.
`
`I then considered whether the ‘629 Patent claims as issued were anticipated by the ‘726
`4.
`publication. I compared the claims as issued to the specification of the ‘726 publication and
`determined that a person of ordinary skill in the art would recognize that the ‘726 publication
`teaches each and every limitation of the issued claims in the manner they are claimed in the ‘629
`publication. I note that the outcome of this exercise was predictable given that the specification
`of the ‘726 publication and the ‘629 Patent are the same and thus, one would expect, that the
`claimed invention of the ‘629 Patent would be described by the common specification. I was
`further asked to determine whether the as-issued-claims contained adequate written description
`given the ranges of solids content by weight and functional properties required by the claims.
`
`I am being compensated by Petitioner at my standard hourly consulting rate for my time
`5.
`spent on this matter. My compensation is not contingent on the outcome of the PGR or the
`substance of my opinions.
`
`6.
`
`A.
`
`My qualifications, including a list of all publications I authored in the previous 10 years,
`7.
`are described in detail in my curriculum vitae, which is attached as Ex. 1010.
`
`I have no financial interest in Petitioner or Patent Owner.
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 1
`
`

`

`
`I am a Professor of the Practice in the Department of Chemical Engineering at the
`8.
`Massachusetts Institute of Technology (“MIT”).
`
`I have more than 40 years of experience in research and development of chemical
`9.
`processes in a variety of industries.
`
`I obtained my Bachelor of Science degree in Chemical Engineering from Columbia
`10.
`University in 1973. In 1977, I obtained my Ph.D. in Chemical Engineering from the University
`of Virginia. I am a registered Professional Engineer in New York and in Ohio.
`
`In January 1977, I started my academic career as an Assistant Professor of Chemical
`11.
`Engineering at the University of Dayton, where I worked until August 1979.
`
`From September 1979 to December 1984, I was a faculty member at the Georgia Institute
`12.
`of Technology in Atlanta, serving first as an Assistant Professor of Chemical Engineering and
`subsequently as an Associate Professor.
`
`In January 1985, I joined the faculty of the Polytechnic University in Brooklyn, New
`13.
`York. While there, I served in various positions including as the Joseph and Violet J. Jacobs
`Professor of Chemical Engineering, Head of the Department of Chemical Engineering, Dean of
`the School of Chemical and Materials Science, and as Vice Provost for Research and Graduate
`Studies.
`
`In January 2000, I moved to the Illinois Institute of Technology in Chicago (“IIT”). I
`14.
`started as Professor of Chemical Engineering and the Dean of the Armour College of
`Engineering and Science. I remained in that position until January 2003, when I became the
`Philip Danforth Armour Professor of Engineering. Between 2003 and 2008, I was also Provost
`and Senior Vice President at IIT.
`
`In August 2010, I moved to my current position as Professor of the Practice in the
`15.
`Department of Chemical Engineering at MIT.
`
`16. My current research focuses on manufacturing processes in the pharmaceutical and
`chemical industry.
`
`Over the course of my career, I have supervised the Ph.D. dissertations of approximately
`17.
`50 Ph.D. students and I have supervised the research of approximately 30 post-doctoral research
`associates. I currently supervise a research group consisting of six post-doctoral research
`associates. In the last two years, I have taught graduate level elective courses entitled
`“Crystallization Science and Technology” and “Pharmaceutical Engineering.”
`
`I have presented the results of my research, at numerous national and international
`18.
`meetings.
`
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 2
`
`

`

`Information Considered
`
`I have published approximately 280 papers in refereed scientific journals and am a named
`19.
`inventor on 50 issued US Patents.
`
`I have edited six books, including the Handbook of Industrial Crystallization (1st edition
`20.
`1992, 2nd edition 2001, 3rd edition 2019). From 2001-2019 I served as Associate Editor of
`Crystal Growth and Design, a journal published by the American Chemical Society.
`
`21. My research accomplishments in the area of have been recognized by several awards.
`These include The American Institute of Chemical Engineers (“AIChE”) Separation Division,
`Clarence G. Gerhold award in 2015, the AIChE Process Development Division, Excellence in
`Process Development award in 2015 and the American Chemical Society award in Separation
`Science and Technology in 2008.
`
`I have consulted for approximately 100 companies during my career in the chemical,
`22.
`pharmaceutical, and food industry including work related to the crystallization of gypsum in the
`manufacture of wallboard and the role of additives in this process.
`
`B.
`
`In forming my opinions, I have considered the materials cited herein and the documents
`23.
`in the list below that I have obtained, or that have been provided to me. I have further relied on
`my knowledge and experience in the field and also considered the viewpoint of a person of
`ordinary skill in the art as of January 2007 when Knauf filed its earliest patent application to
`which it claims priority in the ‘629 Patent.
`
`Exhibit 1001 U.S. Patent No. 10,968,629 (“the ‘629 Patent”)
`
`Exhibit 1002 Prosecution history of U.S. Patent No. 10,968,629
`
`Exhibit 1003 Expert Declaration of Allan Myerson
`
`Exhibit 1004 U.S. Patent Publication No. 2010/0086726 (“the ‘726 Publication”)
`
`Exhibit 1005 Prosecution history of U.S. Patent Application Serial No. 12/524,512
`
`Exhibit 1006 International Patent Application No. PCT/US2006/028929 (“the PCT
`Application)
`
`Exhibit 1007 U.S. Patent No. 7,854,980 (“the ‘980 Patent”)
`
`Exhibit 1008 ASTM C 165, "Standard Test Method for Measuring Compressive Properties of
`Thermal Insulations"
`
`Exhibit 1009 British Standard BS EN 826: 1996
`
`Exhibit 1010 Dr. Allan Myerson curriculum vitae
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 3
`
`

`

`LEGAL STANDARDS APPLIED
`
`
`II.
`
`In expressing my opinions and considering the subject matter of the claims of the ‘629
`24.
`Patent, I am relying upon certain legal concepts that counsel has explained to me.
`
` I am not an attorney and am not going to provide legal opinions. My opinions relate to
`25.
`the factual issues which relate to the legal concepts of written opinion and anticipation as defined
`for my by attorneys.
`
`I have been informed that in this proceeding Rockwool has the burden of proving that the
`26.
`claims of the ‘629 Patent are unpatentable by a preponderance of the evidence. I have been
`informed that “a preponderance of the evidence” is evidence sufficient to show that a fact is
`more likely true than not true.
`
`I have been informed that for a patent to be entitled to the benefit of the filing date of an
`27.
`earlier patent application, the specification of the earlier patent application must satisfy the
`“written description” and “enablement” requirements.
`
`I have been informed that the written description requirement is designed to ensure that
`28.
`the inventor was in possession of the full scope of the claimed invention as of the patent’s
`effective filing date. I understand that an earlier patent specification does not provide adequate
`written description if a person having ordinary skill in the field reading the patent specification at
`the time of the earlier patent application would not have recognized that it describes the full
`scope of the invention as it is finally claimed in the later patent. I understand that the written
`description does not have to be in the exact words of the claim and does not require an actual
`reduction to practice of the claimed invention. I have also been informed that a mere wish or plan
`for obtaining the claimed invention is not adequate written description. It is also not sufficient
`that the specification discloses only enough to make the claimed invention obvious to the person
`of ordinary skill. The level of disclosure required depends on a variety of factors, such as the
`existing knowledge in the particular field, the extent and content of the prior art, the maturity of
`the science or technology, and any other considerations appropriate to the subject matter.
`
`I have been informed that as part of my analysis I must consider what the claims as
`29.
`issued in the ‘629 Patent and the language that was attempted to be added during prosecution—
`“solids content less than 26.5% by weight”—would have meant to a person of ordinary skill in
`the art.
`
`I have been informed that for the issue of whether the priority document listed on the face
`30.
`of the ‘629 Patent contains written description support for the language attempted to be added
`that question is whether a person of ordinary skill in the art would understand that the inventors
`possessed the invention expressed by the claim language.
`
`31. With regards to written description, I have been informed that the written description
`requirement does not require that the exact language of the claim language appear in the
`specification. Rather, the question is whether the specification adequately describes the invention
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 4
`
`

`

`in such detail that a person of skill in the art does not have to recreate the claimed invention after
`the fact, but that it is clear from the disclosure that the invention as claimed was possessed by the
`inventors at the time of the disclosure.
`
`I have been informed that with regard to satisfying the written description requirement
`32.
`for claimed ranges it is insufficient for there simply to be a recitation of data points within the
`claimed range in the specification. I further understand that overlapping ranges are not always
`sufficient to provide written description support for the claimed range. I understand that whether
`a person of skill in the art would appreciate that the inventors possessed the claimed invention is
`dependent upon the facts of the case—that is whether the specification as a whole would convey
`to a person of ordinary skill that the inventors possessed the full invention as claimed.
`
`I have been informed that when a claim includes functional language, such as in claim 1
`33.
`of the ‘629 Patent when it describes properties of the finished mineral fibre board, the
`specification must describe the claimed range and the functional attributes associated with that
`range in order to satisfy the written description requirement.
`
`I have been informed that whether claims are anticipated requires comparing the claims
`34.
`to the prior art document or publication and determining if each and every limitation of the
`claims are described in the prior art document.
`
`I have been informed that for a claim to anticipated not only do the claim limitations need
`35.
`to be recited in the prior art document, but they need to be recited in the same manner as claimed
`in the invention.
`
`I have been informed that under the America Invents Act (“AIA”) patents are compared
`36.
`to the prior art based on their earliest effective filing date and not, as they were pre-AIA, on date
`on invention. Accordingly, I am informed that if my written description opinion is correct, that is
`that the attempted added language was not supported by the parent-priority document, then the
`publication of the parent application would serve as available prior art to the claims of the ‘629
`Patent.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`I have been asked to provide an opinion on the level of ordinary skill in the art. I
`37.
`considered several factors to determine the skill level of a person of ordinary skill in the art
`(“POSITA”) at the time of the alleged priority date in January 2007, including the types of
`problems encountered in the art, the prior art solutions to those problems, the pace of innovation
`in the field, the sophistication of the technology, and the education level of active workers in the
`field.
`
`The technical field of the ‘629 Patent is mineral fibre insulating product having a low
`38.
`formaldehyde or formaldehyde free binder. Ex. 1001, 1:13-14.
`
`Based on my knowledge and experience, it is my opinion that a POSITA as of the earliest
`39.
`alleged effective priority of the ‘629 Patent would have been a person with a Bachelor’s degree
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 5
`
`

`

`Claim Construction
`
`in Chemistry and 2-3 years of industry experience in binder development for joining fibrous or
`other particulate materials to form insulating or analogous products.
`
`I make this assessment based on my extensive work experience in the field of chemical
`40.
`engineering and chemical processes, as further described in my CV. I am well acquainted with
`the knowledge of a POSITA as of the time of the alleged priority date in January 2007.
`
`A.
`
`In conducting my analysis, I considered how a person of skill in the art in light of the
`41.
`specification would interpret “having a solids content of less than about 26.5% by weight” as
`well as the functional requirements regarding “ordinary compressive strength,” “weathered
`compressive strength,” “density,” and “change in thickness” recited in the issued claims.
`
`For “having a solids content of less than about 26.5% by weight,” the phrase would be
`42.
`understood by a person of ordinary skill in the art to mean that the “aqueous binder solution
`possesses dissolved solids where the weight percent of the solids is from zero to 26.5% of the
`total weight of the solution.”
`
`A person of skill in the art would understand that the phrase lacks a lower boundary but
`43.
`that the solids content of an aqueous solution must be zero or above. Moreover, the specification
`of the ‘629 Patent contains only a single example of such an aqueous binder solution. Ex. 1001,
`4:2-13. Moreover, the incorporated PCT specification contains examples that include 13.3%
`solids content by weight (Example 11) and a statement that 10-50% solids by weight or solids
`content outside 10-50% by weight could be used. Ex. 1006, p. 38; ln. 11 and p. 26; ln. 1-16.
`Thus, a person of ordinary skill would not understand that the inventors were claiming a ranged
`bounded on the lower end.
`
`Claim 1 of the ‘629 Patent details a mineral fibre insulating board made by use of
`44.
`specified amounts of reducing sugar and amine reactants that meets the physical properties
`required by the claim: greater than or equal to 60 kPa of ordinary compressive strength; greater
`than or equal to 40 kPa weather compressive strength; less than or equal to 2% change in
`thickness after autoclave; density of 100 kg/m3 to about 200 kg/m3.
`
`A person of ordinary skill in the art would understand that these specified physical
`45.
`properties would necessarily apply to any mineral fibre insulating board made using aqueous
`binder “having a solids content of less than about 26.5% by weight,” which as described above,
`would include binders with 0 to about 26.5% solids content.
`
`The specification for the ‘629 Patent describes a manner in which the these recited
`46.
`properties can be measured. Ex. 1001, 5:6-60. I note that no manner for calculating density is
`recited.
`
`IV.
`
`
`THE ‘629 PATENT
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 6
`
`

`

`The ‘629 Patent Summary
`
`I understand that the ‘629 Patent issued on April 6, 2021 from U.S. Patent Application
`47.
`No. 15/690,623, which was filed on August 30, 2018. Ex. 1001 at 1.
`
`I understand that the ‘629 Patent is a continuation patent that claims the benefit of the
`48.
`filing date of a chain of earlier patent applications listed at the top of column 1 of the ‘629
`Patent. Ex. 1001, 1:6-9. The ‘629 Patent is a continuation of U.S. application serial number
`12/524,512, filed July 24, 2009, which is a U.S. national counterpart application of international
`application serial number PCT/EP2007/050749, filed January 25, 2007.
`
`
`The ‘629 Patent has 19 claims. Claim 1 is independent. Claims 2 to 19 are dependent. I
`49.
`understand that Petitioner is challenging the validity of each of claims 1 to 19.
`
`I have been informed that an independent claim sets forth all of the requirements that
`50.
`must be met in order to be covered by that claim. I have been further informed that a dependent
`claim does not itself recite all of the requirements of the claim but instead refers to another claim
`for some of its requirements. In this way, the claim “depends” on another claim and incorporates
`all of the requirements of the claim(s) to which it refers.
`
`A.
`
`A person of ordinary skill in the art would understand the ‘629 Patent is describing a
`51.
`method for making an insulative board, as opposed to rolled insulation, by treating mineral fibres
`with an aqueous binder solution and curing the fibres. Ex. 1001, 2:4-17.
`
`Specifically, the inventors described making use of a formaldehyde free binding agent
`52.
`that instead made use of reducing sugars and amines as the reactants to achieve the binding
`solution. Ex. 1001, 2:23-50.
`
`The ‘629 Patent specification then goes on to provide a single example of a mineral fibre
`53.
`insulating board created from treating rock wool with an aqueous binder that was 19.1% by
`weight powdered dextrose monohydrate, 3.4% by weight powdered anhydrous citric acid, 2.6%
`by weight of a 28% aqueous ammonia solution, 0.07% by weight of silane A-1100, and 73.5%
`by weight water. Ex. 1001, 4:1-19.
`
`The ‘629 Patent specification then reports the desired characteristics and results of aid
`54.
`treatment in Table 1. Ex. 1001, 4:20-60. The ‘629 Patent specification also recites a manner in
`which the claimed functional properties can be measured. Ex. 1001, 5:6-60.
`
`The ‘629 Patent was filed on August 30, 2017, as a continuation of U.S. Patent
`55.
`Application No. 12/524, 512, which was filed on January 25, 2007. The parent application was
`subsequently published on April 8, 2010, as U.S. Patent Publication No. 2010/0086726.
`
`At the time the ‘629 Patent application was filed, the parent ‘512 application was on
`56.
`appeal and still pending. On January 13, 2018, the applicants for both the ‘629 Patent application
`and the ‘512 application sought to amend the pending claims to add the limitation of the aqueous
`binder solution “having a solids content of less than about 26.5% by weight.” Ex. 1002 at 302;
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 7
`
`

`

`Ex. 1005 at 85. Prior to these amendments, none of the claims in either application contained
`such a phrase.
`
`In the ‘629 Patent application, the preliminary amendment adding the phrase “having a
`57.
`solids content of less than about 26.5% by weight” was accompanied by separate ranges
`regarding the ratio of reducing sugar reactants to amine reactants. Ex. 1002 at 302.
`
`The originally filed claims, however, recited mineral fibre boards possessing the
`58.
`functional properties, such as density in the range of 100-200 kg/m3, ordinary compression
`strength of at least 60 kPa; weathered compression strength of at least 25 kPa; and change in
`thickness of less than 6% after autoclave. Ex. 1002 at 356.
`
`The Examiner in the ‘629 Patent application rejected the preliminarily amended claim as
`59.
`being unsupported by the specification. Ex. 1002 at 273-75. Specifically, the Examiner stated
`that “Claim 24 recites the binder solution having a solids content of less than about 26.5% by
`weight and the dry weight of the sugar reactant ranges from about 73-96% and the dry weight of
`the amine reactant ranges from about 4-27%. These recitations are not supported by the original
`disclosure. Therefore claim 24 fails to comply with the written description requirement.” Ex.
`1002 at 273-74.
`
`In response to that written description rejection, the applicants deleted the phrase “having
`60.
`a solids content of less than about 26.5% by weight.” Ex. 1002 at 265. At the same time, the
`applicants attempted to detail where in the specification the ratios of reducing sugar to amine
`reactants were present in the disclosure. Ex. 1001 at 2:65-67.
`
`The ‘629 Patent and Priority Document Do Not Contain Written Description
`B.
`Support for the Amended Phrase “Having a Solids Content of Less than About 26.5% by
`Weight.”
`
`It is my opinion that the range of zero to about 26.5% by weight solids content is not
`61.
`described in the specification of the ‘629 Patent, its parent application, or the incorporated by
`reference PCT publication.
`
`Specifically, there is no range in the ‘629 Patent specification for any solids content. The
`62.
`only example of solids content in the ‘629 Patent specification is at Column 4, lines 1-13. Aside
`from this recitation, there is no other example of an aqueous binder solution.
`
`The only range given in the ‘629 Patent specification regarding weight percent appears at
`63.
`Column 2, lines 17-22. There the ‘629 Patent specification is describing the cured binder content
`of the finished mineral fibre board. This percent range represents how much of the total weight
`of the finished mineral fibre board is made up of the binding solution ingredients. Accordingly,
`the percent weight of the cured binder content is unrelated to the solids content of the aqueous
`binder solution.
`
`The sole example in the ‘629 Patent specification that describes weight percent of the
`64.
`components of the aqueous binder solution does not describe a 26.5% solids content. Rather,
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 8
`
`

`

`summing the total solids content of the example shows that the disclosed total solids content was
`25.17%. It thus appears that the 26.5% by weight part of the proposed amendment language was
`obtained by subtracting the weight percentage of water from 100%. But given this discrepancy, it
`is my opinion that one of skill in the art would be unable to determine how to calculate a total
`solids content in accordance with the claimed invention.
`
`I noted above that the ‘629 Patent specification incorporates by reference
`65.
`PCT/US2006/028929 and states that “[t]he binder may be one of those disclosed in International
`patent application [‘the ‘929 specification]….” Ex. 1001, 2:58-60. I have therefore reviewed the
`‘929 specification to determine if it discloses an aqueous binder having a solids content in the
`range of zero to about 26.5% by weight. It does not.
`
`The ‘929 specification contains Examples 1 and 8-12 which are binder/glass fiber
`66.
`compositions containing formaldehyde free aqueous binders but only one of which is for use on
`an insulating board. Ex. 1006, p. 26 and 34-42. None of these examples, however, contain
`ranges. Each is its own single aqueous binder with a set solids content.
`
`The ‘929 specification recites separately seven total solids contents by weight percentage
`67.
`for the aqueous binder: (a) 25% in Example 1, (b) 15.5% in Example 8, (c) 25% in Example 9
`(the only binder used on a mineral fibre insulating board), (d) 13.4% in Example 10, (e) 13.3% in
`Example 11, (f) and 41.7% in Example 12. Ex. 1006, p. 26, pp. 34-42. Thus, the ‘929
`specification contains seven data points for total solids content of the aqueous binder but only
`one such binder used on a mineral fibre insulating board. It is my understanding that insulating
`board and insulating blankets are treated differently in the industry. For example, U.S. Patent
`No. 7,854,980 describes that roll type insulating products (blankets) have low densities for the
`finished products whereas insulating boards have much higher densities. Ex. 1007, 3:17-31. The
`‘929 specification uses those terms in a similar fashion. For example, Example 8 is an insulating
`blanket with a density of 10.41 kg/m3 (converted from the recited 0.65 lb/ft3) and Example 9 is
`an insulating board with a density of 75.6 kg/m3 (converted from the recited 4.72 lb/ft3). Thus, a
`person of skill in the art would not understand the ‘929 specification to have described insulating
`boards with the properties claimed in the ‘629 Patent in Examples 8, 10, 11, and 12.
`
`68. Moreover, the ‘929 specification does not provide data regarding the claimed desired
`properties of an insulating board resulting from curing using the aqueous binders of the
`Examples in the ‘929 specification. For example, the ‘929 specification Example 9 describes an
`aqueous binder solution with a solids content of 25% by weight. But the performance data of the
`Air Duct Board made in that example as reported in Table 10 does not fall within the claimed
`parameters. First, with regard to density, the ‘629 Patent specification requires a density of
`between 100 and 200 kg/m3. But the density of the air duct board of Example 9 of the ‘929
`specification is only 75.6 kg/m3. Ex. 1006, p. 62. Second, with regard to the “ordinary
`compression strength” of the ‘629 Patent claim, the ‘929 patent specification does not report a
`value. Rather, the ‘929 specification reports “compressive modulus” which is a different
`measurement and test. Compare Ex. 1008 and Ex. 1009. As such, for “ordinary compression
`strength” the claimed value in the ‘629 Patent and the reported value in the ‘929 specification are
`apples and oranges. Even if they were same measurement, the value in the ‘929 specification
`would be insufficient because the 6.57 psi value reported for Example 9 would be only 47.3 kPa,
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 9
`
`

`

`which is far below the claimed 60 kPa. Third, with regarding to the “weathered compression
`strength” of the ‘629 Patent claim, the ‘929 patent specification does not report a value. Simply
`comparing the description of the tests in each patent (compare Col. 5, ll. 10-23 of the ‘629 Patent
`with p. 48 of the ‘929 specification) shows those are not the same tests. And finally, with respect
`to change in thickness after autoclave as required by the ‘629 Patent claim, there is no such test
`or similar data reported in the ‘929 specification.
`
`It is my opinion that the ‘929 specification fails to describe a range of zero to about
`69.
`26.5% because fails to recite a solids content for the claimed range. At most the ‘929
`specification contains miscellaneous data points, where at least one fails to fall within the
`claimed range, and no data related to the claimed functional properties is provided other than the
`one example in the ‘629 patent specification itself.
`
`The ‘929 specification also contains several inconsistent statements regarding the solids
`70.
`content by weight percent of the aqueous binder. For example, the ‘929 specification recites that
`“although aqueous solutions 10-50% (weight percent) in triammonium citrate and dextrose
`monohydrate dissolved solids were used in EXAMPLES 8-12 to prepare binder/glass fiber
`compositions, it is to be understood that weight percent of the aqueous polycarboxylic acid
`ammonium salt reactant [] solution may be altered without affecting the nature of the invention
`described.” Ex. 1006, p. 25-26. The ‘929 specification continues “[f]or example, preparing
`aqueous solutions including the polycarboxylic acid ammonium salt reactant and the reducing-
`sugar carbohydrate reactant the weight prevents of which fall outside the range of about 10-50
`weight percent….” Id. at 26. It is my opinion that these statements are inconsistent and provide
`no evidence of an acceptable range of solids content by weight for an aqueous binder used in
`curing a mineral fibre insulating board.
`
`For example, even if one were to assume that the Examples provided support for the
`71.
`claims as written, including the required functional attributes, the ‘929 specifications statement
`that the invention also includes aqueous binders with solids contents outside of the 10-50 weight
`percent suggests that the weight percent ranges are not important or necessary features in
`obtaining the properly functioning mineral binder board. Would a 75% by weight solids content
`possess the requisite properties? Would an 8% by weight solids content possess the requisite
`properties? This is not described. Thus, a person of ordinary skill would not understand that the
`inventors possessed an invention of an aqueous binder possessing the necessary properties
`having a solids content in the range of zero to 26.5% by weight.
`
`At best, even if the singular data points in the Examples of the ‘929 specification could
`72.
`be considered a properly described range, which it is not, then the described range of solids
`content in the aqueous binder described in the ‘929 specification would be 13.3%-41.7%. See
`Examples 1, 8-12 of Ex. 1005. And assuming, though there is no support given the ambivalence
`in the ‘929 specification of the necessity of the range, that these data points supported to full
`range solids content between 10 and 50% by weight, that still leaves zero to 10% undescribed.
`That is nearly half of the range that the inventors claimed but failed to describe.
`
`It is worth noting that the inventors of the ‘929 specification and the ‘629 Patent do not
`73.
`overlap and that the ‘929 specification is simply incorporated by reference into the ‘629 Patent.
`
`PGR2022-00022 - Petitioner’s Exhibit 1003 – Page 10
`
`

`

`The Knauf parent application (Ex. 1004)
`
`And given that the inventors chose only one exemplary aqueous binder with a disclosed solids
`content of 25.17% by weight to describe as possessing the requisite functional properties, it is
`not clear which aqueous binders for use in curing mineral fiber boards the inventors possessed
`within the range of zero to about 26.5%. That is what I understand is required to meet the written
`description requirement. As such, a person of ordinary skill in the art would not recognize that
`the inventors of the ‘629 Patent possessed the invention of an aqueous binder having a solids
`content of between zero and less than about 26.5% by weight possessing the required functional
`properties.
`
`V. OVERVIEW OF PRIOR ART REFERENCE
`
`A.
`
`I understand that U.S. publication number 2010/0086726 A1 (“Knauf Parent,” Ex. 1004)
`74.
`is a patent application assigned to Patent Owner Knauf Insulation, Inc. and Knauf Insulation
`SPRL that published April 8, 2010. The Knauf parent incorporates by reference International
`Patent Application Number PCT/US2006/028929 (the “929 Application”) filed July 26, 2005
`and entitled “Binders and Materials Made Therewith.”
`
`As described above, it is my opinion that the ‘629 Patent is not entitled to an effective
`75.
`filing date of January 25, 2007. Thus, I understand that the Knauf Parent qualifies as prior art to
`the ‘629 Patent because it has an effective filing date of J