Trials@uspto.gov
`571-272-7822
`
`Paper 10
`Entered: July 6, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROCKWOOLINTERNATIONALA/S,
`Petitioner,
`
`Vv.
`
`KNAUF INSULATION,INC. and KNAUF INSULATION SPRL,
`Patent Owner.
`
`PGR2022-00022
`Patent 10,968,629 B2
`
`Before KRISTINA M. KALAN, ELIZABETH M. ROESEL,and
`JULIA HEANEY,Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`DECISION
`DenyingInstitution of Post-Grant Review
`35 U.S.C. § 324
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`I.
`
`INTRODUCTION
`
`A. Background and Summary
`RockwoolInternational A/S (“Petitioner”) filed a Petition (Paper4,
`
`“Pet.”) seeking a post-grant review of claims 1-19 of U.S. Patent
`No. 10,968,629 B2 (Ex. 1001, “the 629 Patent”). Knauf Insulation, Inc.,
`and Knauf Insulation SPRL (collectively, “Patent Owner”) filed a
`
`Preliminary Response. Paper9 (“Prelim. Resp.”).
`Exercising the authority delegated to the Board under 35 U.S.C. § 324
`and 37 C.F.R. § 42.4(a), we maynotinstitute a post-grant review unless “the
`information presented in the petition .
`.
`.
`, if such information is not rebutted,
`would demonstrate that it is more likely than notthat at least 1 ofthe claims
`challengedin the petition is unpatentable.” 35 U.S.C. § 324(a) (2018).
`
`After considering the information presented in the Petition and the
`Preliminary Response, we determine thatPetitioner has not established that
`
`the ’629 Patentis eligible for post-grant review.
`
`B. The ’629 Patent (Ex. 1001)
`
`The 629 Patent discloses a method of manufacturing a mineral fiber
`
`_ insulating board using a formaldehyde free binder to producean insulating
`board having strength and dimensionalstability characteristics comparable
`to products containing phenol formaldehyde. Ex. 1001, code (57), 1:13-14,
`1:18-24, 1:45-49, 2:3-7,
`
`C.
`
`Illustrative Claim
`
`Claim 1 is the only independent claim and is reproduced below.
`
`1. A method of manufacturing a mineral fiber insulating
`board comprising
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`i) spraying a formaldehyde free aqueous binder solution
`onto a plurality of mineral fibers, the aqueous binder solution
`comprising binder reactants comprising
`
`a) areducing sugar reactant; and
`
`b) an aminereactant,
`wherein the reducing sugar reactant is selected from the
`group consisting of: a reducing sugar; a reducing sugar yielded
`by a carbohydrate in situ under thermal curing conditions; and
`combinations thereof,
`
`wherein the percent by dry weight of the reducing sugar
`reactant with respect to the total weight of the binder reactants in
`the binder solution ranges from about 73% to about 96%, and
`
`wherein the percent by dry weight of the amine reactant
`with respect to the total weight of the binder reactants in the
`binder solution ranges from about 4% to about 27%,
`
`ii) dehydrating the aqueous binder solution such that a
`dehydrated binderis disposed on the plurality of mineral fibers,
`and
`
`iii) curing the dehydrated binder ontheplurality ofmineral
`fibers to provide the mineral fiber insulating board with a cured
`binder in about 0.5%-15% by weight as determined by loss on
`ignition, wherein
`a) the mineral fiber insulating board has a density from
`about 100 kg/m?to about 200 kg/m’,
`b) the mineral fiber insulating board has an ordinary |
`compression strength of at least 60 kPa,
`c) the mineral fiber insulating board has a weathered
`compression strength of at least 40 kPa, and
`d) the mineral fiber insulating board has a change in
`thickness of less than 2% after autoclave, and wherein the
`mineral fibers are rock wool mineral fibers.
`
`Ex. 1001, 5:62-6:27 (paragraph breaks adjusted).
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`D. Asserted Grounds and Evidence
`
`Petitioner asserts the following grounds of unpatentability:
`
`35 U.S.C. §'
`
`. Reference/Basis
`
`102(a)(1) °726 Publication”
`
` 112(a)
`Lack of sufficient written description
`
`Pet. 6. As support for these grounds, Petitioner submits the Declaration of
`Allan Myerson, Ph.D. Ex. 1003.
`|
`Il.
`ELIGIBILITY FOR POST-GRANT REVIEW
`
`A. Legal Standards
`
`Petitioner has the burden ofestablishing eligibility for post-grant
`
`review. See Commonwealth Scientific & Indus. Res. Org. v. BASF Plant
`
`Science GmbH, PGR2020-00033, Paper 11 at 7 (PTAB Sept. 10, 2020).
`The post-grant review provisions of the Leahy-Smith AmericaInvents -
`Act (“AIA”) apply only to patents subject to the first-inventor-to-file
`provisions of the AIA. ATA, Pub. L. No. 112-29, 125 Stat. 284 (September
`16, 2011), § 6(£)(2)(A)(stating that the provisions of section 6(d) “shall
`apply only to patents describedin section 3(n)(1)”). Patents subject to the
`first-inventor-to-file provisions are those that issue from applications that
`
`contain or contained at any time:
`
`' The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
`(2011) (“AIA”), included revisions to 35 U.S.C. §§ 102, 112 that became
`effective on March 16, 2013. Petitioner’s asserted grounds are based on the
`versions of 35 U.S.C. §§ 102, 112 applicableafter the effective date of the
`AIA.
`2 Ex. 1004, US 2010/0086726 A1, published April 8, 2010 (“the ’726
`Publication”).
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`(A) a claim to a claimed invention that has an effective
`filing date as defined in section 100(i) oftitle 35, United States
`Code, that is on or after [March 16, 2013]; or
`(B) a specific reference under section 120, 121, or 365(c)
`of title 35, United States Code, to any patent or application that
`contains or contained at any time such a claim.
`
`AIA § 3(n)(1).
`Determining whethera patent is subject to the first-inventor-to-file
`provisionsof the AIA, and thereforeeligible for post-grant review,is
`straightforward whenthe challenged patent issued from an application filed
`before March 16, 2013, or when the challenged patent issued from an
`application filed on or after March 16, 2013, without anypriority claim. The
`determination is more complex, however,for a patentthat issues from a
`“transition application,” that is, an application filed on or after March 16,
`2013, that claimsthe benefit of an earlier filing date. See MPEP § 2159.04.
`Entitlementto the benefit of an earlier filing date under 35 U.S.C. §§ 119,
`
`120, 121, or 365 is premised on disclosure of the claimed invention “in the
`manner provided by § 112(a) (other than the requirementto disclose the best
`mode)”in the earlier application. See 35 U.S.C. §§ 119(e)(1), 120. Thus,
`for a patent issuing from a transition application,eligibility for post-grant
`review depends on whetherthe patent contains or contained at any time a
`claim that lacks written description or enabling support in a priority
`
`application filed before March 16, 2013.
`The application that matured into the ’629 Patent is a transition
`application because it wasfiled after March 16, 2013, but claimsthe benefit
`of an application filed before March 16, 2013. Specifically, the °629 Patent
`
`3 Ourcitations to the Manualof Patent Examining Procedure (“MPEP”) are
`to the 9th edition, revision 10.2019 (June 2020).
`
`5
`
`

`

`:
`
`PGR2022-00022
`Patent 10,968,629 B2
`issued from Application No. 15/690,623, filed August 30, 2017 (“the °623
`Application”) as a continuation of Application No. 12/524,512,filed January
`25, 2007 (“the Priority Application’”).* Ex. 1001, codes (22), (63).
`Petitioner asserts two separate bases for post-grant review eligibility.
`First, Petitioner asserts that the Priority Application lacks written description
`
`support for a limitation recited in claims presented during prosecution, but
`not recited in the issued claims of the °629 Patent. Pet. 1-3, 16-25. Second,
`
`Petitioner asserts that the Priority Application lacks written description
`
`support for a limitation recited in the issued claims of the ’629 Patent.
`
`Pet. 1-3, 25, 38-41. We address each of these bases below.
`
`B. Claims Presented During Prosecution
`
`During prosecution of the 623 Application and the Priority
`
`Application, the applicant submitted amended claims that recite an aqueous
`binder solution having “a solids content of less than about 26.5% by weight”
`(the “Solids Content Limitation”). Ex. 1002,° 392 (amended claim 24);
`Ex. 1005,° 68 (amended claim 13).’7 The Examiner rejected the amended
`
`claims underthe written description requirement of § 112, finding that the
`
`original disclosure lacked support for the Solids Content Limitation.
`
`4 The Priority Application was published as the ’726 Publication (Ex. 1004),
`which Petitioner asserts as anticipatory prior art. Pet. 9 n.1, 26.
`> Exhibit 1002 is the file history for the ’623 Application.
`6 Exhibit 1005 is the file history for the Priority Application. Prosecution of
`the Priority Application continuedafter the filing of the 623 Application,
`and prosecution of both applications proceededin parallel.
`7 The applicant also amended withdrawn claim 24of the Priority Application
`to include the Solids Content Limitation. Ex. 1005, 69. The Examiner had
`previously withdrawn that claim as drawnto a non-elected species, and the
`applicant later cancelled the claim. Jd. at 26, 28.
`
`6
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`Ex. 1002, 364-65; Ex. 1005, 41-42. In responseto the rejection, the
`
`applicant further amendedthe claims to remove the Solids Content
`Limitation. Ex. 1002, 351, 356; Ex. 1005, 25,30; see Pet. 9-12
`
`(summarizing the prosecution history). The Solids Content Limitationis not
`
`recited in the issued claims of the °629 Patent. Ex. 1001, 5:62—7:5.
`
`Petitioner contends that the Priority Application lacks written
`
`description support for the Solids Content Limitation. Pet. 16-25. Patent
`
`Ownerargues that the temporary presence of the Solids Content Limitation
`
`does not trigger the AIA. Prelim. Resp. 4-8. We agree with Patent Owner.
`
`Petitioner relies on statutory language providing that the AIA applies
`
`to any patent issuing on an application “that contains or contained at any
`
`time ...aclaim to a claimed invention that has an effective filing date...
`
`that is on or after” March 16, 2013. Pet. 13 (quoting AIA § 3(n)(1) with
`
`emphasis added). Petitioner does not, however, address the MPEP, which
`
`explains that the submission of amendedclaims directed to new matter does
`
`not convert a pre-AIJA application to an AIA application.
`
`As 35 U.S.C. 132(a) prohibits the introduction of new
`matter into the disclosure, an application may not contain a claim
`to aclaimed invention that does not have support under 35 U.S.C.
`112(a) in the application (that is directed to new matter). Thus,
`an application cannot “contain” a claim to a claimed invention
`that
`is directed to new matter for purposes of determining
`whether the application ever contained a claim to a claimed
`invention having an effective filing date on or after March 16,
`2013. ... [A]mendments to the written description or claims
`involving new matter are ordinarily entered, but the new matter
`is required to be canceled from the written description and the
`claims directed to the new matter are rejected under 35 U.S.C.
`112(a)[.].. . Therefore, an amendment(other than a preliminary
`amendmentfiled on the same day as such application) seeking to
`add a claim to a claimed inventionthat is directed to new matter
`in an application filed on or after March 16, 2013, that, as .
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`originally filed, discloses and claims only subject matter also
`disclosed in an earlier application filed before March 16, 2013 to
`whichthe application filed on or after March 16, 2013, is entitled
`to priority or benefit under 35 U.S.C. 119, 120, 121, or 365,
`would not change the application from a pre-AIA application
`into an AIA application.
`MPEP§ 2159.02 (emphases added). Relying on the foregoing provision of
`the MPEP,a panel of the Board held that claims added by amendment and
`then cancelled after being rejected for containing new matter did not convert
`a transition application to an application eligible for post-grant review. Intex
`
`Recreation Corp. v. Team Worldwide Corp., PGR2019-00015, Paper 7
`
`at 12-14 (PTAB May14, 2019).
`
`Weagree with Patent Ownerthat the above-quoted guidance from the
`
`MPEPand Intex applies to the facts presented here. Prelim. Resp. 7. The
`
`Solids Content Limitation was addedto the claims in both the 623
`
`Application and the Priority Application by amendmentsfiled after the
`
`respectivefiling dates of those applications. Ex. 1002, 391-92 (second
`
`preliminary amendmentfiled January 12, 2018 in the ’623 Application);
`
`Ex. 1005, 66-68 (amendmentfiled January 13, 2018 with a Request for
`Continued Examination (“RCE”) in the Priority Application).®
`
`8 Petitioner makes no argumentthat either amendmentis “a preliminary
`amendmentfiled on the same day as such application,” as referenced in
`MPEP§ 2159.02. In the Priority Application, the amendment adding the
`Solids Content Limitation was filed with an RCE, which “‘is not the filing of
`anew application.” MPEP § 706.07(h). In any event, theRCEis outside
`the priority chain because it was submitted in the Priority Application after
`the filing date of the °623 Application from which the ’629 Patent issued.
`This circumstance provides another reason for rejecting Petitioner’s
`argumentthat the amendmentfiled with the RCE providesa basis for post-
`grant review eligibility.
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`As evidenced by the Examiner’s written description rejections, the
`
`addition of the Solids Content Limitation resulted in claims directed to new
`
`matter. Ex. 1002, 364-65; Ex. 1005, 41-42; see In re Rasmussen, 650 F.2d
`
`1212, 1214 (CCPA 1981) (“The proper basis for rejection of a claim
`
`amendedto recite elements thought to be without support in the original
`
`disclosure... is § 112, first paragraph, not § 132[, which] prohibits addition
`
`of new matter to the original disclosure.”); see also MPEP § 2163.06 (“If
`
`new matter is addedto the claims, the examiner should reject the claims
`
`under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph—written
`
`description requirement.”).
`
`In response to the Examiner’s written description rejections, the
`applicant removed the Solids Content Limitation, which does not appearin
`the issued claims. Ex. 1001, 5:62—7:5; Ex. 1002, 351, 356; Ex. 1005, 25, 30.
`Underthese circumstances and consistent with MPEP § 2159.02 and Intex,
`the temporary presenceofthe Solids Content Limitation in claims presented
`
`during prosecution does not convert the transition application to an AJA
`
`application, nor provide a basis for post-grant review eligibility.
`
`C.
`
`Issued Claims
`
`Claim 1 of the ’629 Patent recites a method of manufacturing a
`
`mineral fiber insulating board using an aqueous binder solution comprising a
`
`reducing sugar reactant and an aminereactant,
`wherein the percent by dry weight of the reducing sugar
`reactant with respectto the total weight of the binder reactants in
`the binder solution ranges from about 73% to about 96%, and
`wherein the percent by dry weight of the amine reactant
`with respect to the total weight of the binder reactants in the
`binder solution ranges from about 4% to about 27%.
`
`Ex. 1001, 6:4-11 (the “Dry Weight Limitations”).
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`Claim 1 also recites the physical properties of the mineral fiber
`
`insulating board as follows:
`a) the mineral fiber insulating board has a density from
`about 100 kg/m? to about 200 kg/m’,
`b) the mineral fiber insulating board has an ordinary
`compression strength of at least 60 kPa,
`c) the mineral fiber insulating board has a weathered
`compression strength of at least 40 kPa, and
`d) the mineral fiber insulating board has a change in
`thickness of less than 2% after autoclave.
`
`Ex. 1001, 6:19-26 (the “Physical Property Limitations”).
`
`Petitioner contends that the 629 Patent claims lack written
`description support because the specification “fail[s] to describe the [recited]
`functional properties across the entire range of reactant proportions
`claimed.” Pet. 3; see also Pet. 38-39 (same argument). Relying on Federal
`
`~ Circuit case law addressing written description support for a functionally-
`defined genus,Petitioner asserts that “claim 1 of the °629 Patentclaims a
`genus range of acceptable proportions of sugar reactants and amine
`reactants.” Pet. 39 (citing AbbVie Deutschland GmbHv. Janssen Biotech,
`
`Inc., 759 F.3d 1285, 1299 (Fed. Cir. 2014)). According to Petitioner,
`
`“neither the 629 Patent nor the ’929 Specification incorporated into
`the °629 Patent specification, contains functional property data across the
`entire claimed range of sugar and aminereactants.” Pet. 40.’ Petitioner
`concludes that the inventors “failed to demonstrate that the entire range
`
`possessed the required functional properties.” Pet. 41 (citing Ex. 1003
`
`q 129).
`
`° “The °929 Specification”refers to PCT/US2006/028929 (Ex. 1006), which -
`is incorporated by referencein the ’629 Patent. Ex. 1001, 2:58-60.
`
`10
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`Patent Ownerargues that the Petition fails to address the “structural
`features” portion ofthe Federal Circuit’s test for written description ofa
`genus. Prelim. Resp. 14-16. Patent Owner contends that the claims of
`the 629 Patent identify the commonstructural features of the genus by
`reciting the Dry Weight Limitations, which are supported by the
`specification. Jd. at 17-18 (citing Ex. 1002, 358; Ex. 1003 {J 81, 82).
`According to Patent Owner, the specification “confirms that the claimed
`properties are attributable to the composition of the binder solution.” Jd.
`at 18. Patent Owner concludesthat “the claims themselvesrecite the
`
`common‘structural features’ .
`
`.
`
`. that give rise to the claimed functional
`
`properties.” Jd. at 19.
`“Written description is a question of fact, judged from the perspective
`of one of ordinary skill in the art as of the relevant filing date.” Jmmunex
`Corp. v. Sandoz Inc., 964 F.3d 1049, 1063 (Fed. Cir. 2020).'° Thetest for
`adequate written description “is whetherthe disclosure of the application
`relied upon reasonably conveys to those skilled in the art that the inventor
`had possession of the claimed subject matter as ofthe filing date.” Ariad
`Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
`(en banc). “[T]he hallmark of written description is disclosure.” Jd. The
`specification must “show that the inventor actually invented the invention
`claimed.” Jd. Although written description is a fact-dependentinquiry,
`there are “a few broad principlesthat hold true across all cases,” including
`
`10 Petitioner presents Dr. Myerson’s testimony that person of ordinary skill
`in the art “would have been a person with a Bachelor’s degree in Chemistry
`and 2-3 years of industry experience in binder developmentfor joining
`fibrous or otherparticulate materials to form insulating or analogous
`products,” which is undisputed by Patent Owner. Ex. 1003 39. We adopt
`Dr. Myerson’s undisputed definition for purposes of our Decision.
`
`11
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`“that the written description requirement does not demand either examples
`or an actual reduction to practice.” Jd. at 1352.
`In AbbVie, the Federal Circuit addressed the written description
`requirementfor a claimed functionally-defined genus as follows:
`
`Whena patent claims a genus using functional language
`to define a desired result, “the specification must demonstrate
`that the applicant has madea generic invention that achieves the
`claimed result and do so by showing that the applicant has
`invented species sufficient to support a claim to the functionally-
`defined genus.” ... We have held that “a sufficient description
`of a genus ... requires the disclosure of either a representative
`number of species falling within the scope of the genus or
`structural features common to the members of the genus so that
`one of skill in the art can ‘visualize or recognize’ the members
`of the genus.”
`
`AbbVie, 759 F.3d at 1299 (quoting Ariad, 598 F.3d at 1349, 1350 and
`
`Regents ofthe University of California v. Eli Lilly & Co., 119 F.3d 1559,
`
`1568-69 (Fed. Cir. 1997)).
`
`The Federal Circuit has articulated two ways that a claimed genus can
`
`be supported by the written description: “the disclosure of either [1] a
`representative numberof species falling within the scope of the genus or[2]
`structural features common to the membersof the genusso that one of skill
`
`in the art can ‘visualize or recognize’ the members of the genus.” Ajinomoto
`
`Co., Inc. y. Int’l Trade Comm ’n, 932 F.3d 1342, 1358 (Fed. Cir. 2019)
`
`(bracketed text added); AbbVie, 759 F.3d at 1299; Ariad, 598 F.3d at 1350
`(quoting Eli Lilly, 119 F.3d at 1568-69) (quoted in Prelim. Resp. 14-15).
`The two-part test applies “when a patent claims a genus usingfunctional
`languageto define a desired result.” AbbVie, 759 F.3d at 1299 (emphasis
`
`added).
`
`12
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`Weagree with Patent Ownerthat Petitioner disregards the second part
`of the Federal Circuit’s two-part testby failing to address whether the
`specification of the ’629 Patentdiscloses structural features commonto the
`membersof the alleged genus. Prelim. Resp. 15—16; see Pet. 39 (quoting
`
`AbbVie, but omitting the two-part test). More fundamentally, however, we
`
`determine that Petitioner fails to establish that the claims of the ’629 Patent
`
`recite a “functionally-defined genus” that would trigger the application of
`
`the Federal Circuit’s two-part test. Ajinomoto, 932 F.3d at 1358, 1360;
`
`AbbVie, 759 F.3d at 1299; Ariad, 598 F.3d at 1349.
`
`Petitioner fails to show that the ’629 Patent claimsrecite a
`
`functionally-defined genus. Petitioner asserts that “claim 1 of the ’629
`Patent claims a genus range of acceptable proportions of sugar reactants and
`amine reactants to the overall binder reactants.” Pet. 39. We agree with
`Patent Owner, however, that the limitations that Petitioner characterizes as a
`“genus range”are structural, not functional. See PO Resp. 17 (asserting that
`
`“It]he claims themselves identify the[] common‘structural features,’
`
`specifying the ‘percent by dry weight’ ofthe ‘reducing sugar reactant’ and
`‘amine reactant’ in the ‘binder solution’ used in the claimed method,”citing
`
`Ex. 1001, 6:4-11)).
`
`Although Petitioner cites AbbVie as support for its contention that
`
`claim 1 recites a genus (Pet. 39), the ’629 Patent claims are notlike the
`
`claims at issue in AbbVie, in which the claimed antibodies were defined by
`
`their functional properties. AbbVie, 759 F.3d at 1292 (“The claims.. . at
`issue in these appeals define the claimed antibodies by their function.”). The
`claimed invention in AbbVie was “a class of fully human antibodiesthat are
`defined by their high affinity and neutralizing activity to human[interleukin]
`IL-12,a known antigen.” 759 F.3d at 1299. Furthermore, in AbbVie, there
`
`13
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`was nodispute that the patents-in-suit did not disclose structural features
`common to the membersof the functionally-defined genus. Jd. Here, in
`
`contrast, claim 1 describes the binder solution byits structural components
`andproportions, not by what it does. Petitioner fails to show that claim 1’s
`recitation of proportions of sugar reactants and amine reactants to the overall
`
`binder reactants is a functionally-defined genus. Pet. 39.
`
`Petitioner argues that the ’629 Patent disclosure and the
`°929 Specification do not contain “functional property data across the entire
`claimed range of sugar and amine reactants” and include“(at most) two data
`points for each of the sugar and amine reactants relative to the total binder
`reactants.” Pet. 40-41. Petitioner appears to be addressing the question of
`
`whether the patent discloses “a representative numberof speciesfalling
`
`within the scope of the genus” underthe first part of the Federal Circuit’s
`
`two-part test. AbbVie, 759 F.3d at 1299. Weare not persuaded by
`
`Petitioner’s argument because Petitioner has not shownthat the ’629 Patent
`
`claims recite a functionally-defined genus, which is a necessary predicate for
`
`the application of the Federal Circuit’s two-part test. The only genus
`Petitioner identifies is a “genus range of acceptable proportions of sugar
`reactants and aminereactantsto the overall binder reactants.” Pet. 39. As
`
`discussed above, Petitioner’s alleged genusis structural, not functional, and
`
`does not require application of the Federal Circuit’s two-part test for written
`description support for a “functionally-defined genus.” AbbVie, 759 F.3d
`at 1299, Furthermore, as discussed below,there is no requirementfor
`“functional property data” in order to show that the inventors had possession
`
`of the claimed invention. Pet. 40.
`
`Petitioner does not dispute that the Priority Application provides
`
`written description support for the Dry Weight Limitations, including the
`
`14
`
`

`

`PGR2022-00022
`Patent 10,968,629 B2
`
`numerical ranges of “from about 73% to about 96%” for the sugar reactant
`and “from about 4% to about 27%”for the amine reactant. Pet. 28-29.
`
`Referring to the Dry Weight Limitations, Petitioner concedes that the
`
`Priority Application “incorporates by reference the ‘929 Specification,
`
`which describes a number of examples, including ones disclosing this
`
`limitation.” Jd.''! Furthermore, Petitioner concedes that, by incorporating
`the °929 Specification, the Priority Application “teaches use of aqueous
`binders with the claimed ranges of sugar reactants by weight percent” and
`“the claimed ranges of amine reactants by weight percent.” Jd. (citing
`Ex. 1003 § 81). Dr. Myerson’s testimony demonstrates that Example 1 of
`
`|
`
`the 929 Specification discloses seven different binder solutions covering the
`
`entire ranges of sugar reactant and amine reactantrecited in the Dry Weight
`
`Limitations. Ex. 1003 { 81.
`
`Petitioner also does not dispute that the Priority Application provides
`
`written description support for the Physical Property Limitations. Petitioner
`
`concedesthat the Priority Application “expressly teaches obtaining a mineral
`
`fiber insulating board with the properties listed in claim 1.” Pet. 30-31.
`Moreparticularly, Petitioner concedes that the Priority Application expressly
`
`teaches obtaining a mineralfiber insulating board having the claimed range
`
`of density. Pet. 30 (citing Ex. 1003 4 85). Petitioner concedes that Table 1
`
`of the Priority Application summarizes various properties of the desired
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`mineral fiber board and specifically recites the claimed ranges of ordinary
`
`compression strength, weathered compression strength, and change in
`
`'! Petitioner’s concession refers to the 726 Publication. Pet. 28-29.
`Because Petitioner agrees that the ’726 Publication contains the same
`specification as the Priority Application and the ’629 Patent(Pet. 9 n.1, 17
`n.2), we refer to the Priority Application in ourfindings.
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`PGR2022-00022
`Patent 10,968,629 B2
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`thickness after autoclave. Pet. 30-31 (citing Ex. 1003 { 86). Dr. Myerson’s
`
`testimony confirms that the Priority Application teaches the Physical
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`Property Limitations. Ex. 1003 {J 85, 86.
`Petitioner’s argument about “(at most) two data points”(Pet. 41) is
`not an argument about whetherthere is written description supportfor the
`numerical ranges recited in the claim, including the ranges of binder reactant
`proportions and the ranges of physical properties, such as density and
`compression strength. Instead, Petitioner asserts that the °629 Patent and
`the 929 Specification disclose only one example “where the four required
`properties are demonstrated with respect to the reactant proportions.” Jd.
`Petitioner’s argumentis inconsistent with the legal standard for written
`description, which “does not demandeither examples or an actual reduction
`to practice.” Ariad, 598 F.3d at 1352. To satisfy the written description
`requirement, the °629 Patent inventors were not required “to demonstrate
`that the entire range [of binder reactant proportions] possessed the required
`
`functional properties,” as argued by Petitioner. Pet. 41. Again, Petitioner’s
`argumentis inconsistent with the legal standardarticulated in Ariad, which
`
`does not require examples.
`
`Even whena patent claim recites a functionally-defined genus,
`“Ta]dequate written description does not require a perfect correspondence
`between the membersof the genus and the asserted commonstructural
`feature.” Ajinomoto, 932 F.3d at 1360. Here, the commonstructural feature
`is actually recited in the claim, so there is no requirement for any correlation
`betweenstructure (i.e., the Dry Weight Limitations) and function (i.e., the
`Physical Property Limitations), as would be the case for a claim thatrecites
`a functionally-defined genus. Jd. (“for a functionally defined genus .
`. ., we
`have spoken more modestly ofa ‘correlation between structure and
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`PGR2022-00022
`Patent 10,968,629 B2
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`function’” (quoting Ariad, 598 F.3d at 1350)). Nevertheless, we agree with
`Patent Ownerthat the 629 Patent attributes the claimed physical properties
`to the composition of the binder solution. Prelim. Resp. 18. Specifically,
`the specification states that “[i]t is surprising that a formaldehyde free binder
`can confer the strength and/or dimensional stability that has been found.”
`Ex. 1001, 2:5—7. This statement provides a sufficient correlation between
`the claimed physical properties and the binder composition.
`Petitioner argues that “disclosing a single data point within a claimed
`rangein [sic, is] insufficient to demonstrate possession of the claimed
`
`range.” Pet. 41 (citing Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A.,
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`18 F.4th 1323, at *4 (Fed. Cir. 2021)). Petitioner, however, fails to show a
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`lack of written description support for any of the ranges recited in claim 1 of
`
`the °629 Patent. As discussed above, Petitioner agrees that all of the recited
`
`ranges are supported by the Priority Application. Pet. 28-32, 40-41;
`
`Ex. 1003 4§ 81, 82, 85, 86. Moreparticularly, Petitioner agrees that
`Example 1 of the 929 Specification discloses binder solutions covering the
`full range of reactant proportions. Pet. 28-29, 40; Ex. 1003 4 81, 82.
`
`Petitioner agrees that Table 1 of the Priority Application expressly discloses
`
`the recited ranges of density, compression strength, weathered compression
`
`strength, and changein thickness after autoclave. Pet. 30-31, 41; Ex. 1003
`q{ 85, 86. Furthermore, Petitioner does not deny that the example disclosed
`in the Priority Application falls within the claimed ranges of binder reactant
`
`proportions. Pet. 40-41.
`In sum, Petitioner fails to show thatthe Priority Application lacks
`written description support for the invention claimed in the *629 Patent.
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`PGR2022-00022
`Patent 10,968,629 B2
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`Ill.
`
`CONCLUSION
`
`For the foregoing reasons, we determine that Petitioner has not
`
`_ established that the °629 Patentis eligible for post-grant review.
`
`|
`IV. ORDER
`It is ORDEREDthat the Petition is denied, and notrial is instituted.
`
`~
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`PGR2022-00022
`Patent 10,968,629 B2
`
`For PETITIONER:
`
`D. Clay Holloway
`Tiffany L. Williams
`Courtney S. Dabbiere
`Melissa Love
`KILPATRICK TOWNSEND & STOCKTON LLP
`KTSRockwoolPGR@kilpatricktownsend.com
`
`For PATENT OWNER:
`
`Joshua P. Larsen
`Joshua E. Ney
`Payton J. Hoff
`BARNES & THORNBURG LLP
`joshua. larsen@btlaw.com
`joshua.ney@btlaw.com
`payton.dubose@btlaw.com
`
`19
`
`