IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________
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`July 7, 1999
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`March 4, 2003
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`In re U.S. Patent No. 6,526,808
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`Filed:
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`Issued:
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`Inventors: Kenneth Alan Pieroni
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`Jim Eli Saffie
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`Assignee: Star Envirotech, Inc.
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`Title:
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`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`SMOKE AND CLEAN AIR GENERATING MACHINE FOR
`DETECTING PRESENCE AND LOCATION OF LEAKS
`IN FLUID SYSTEM
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,526,808 UNDER 35 U.S.C. § 311-319 AND 37 C.F.R. § 42.100 ET
`SEQ.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________________________________________
`
`
`
`
`July 7, 1999
`
`March 4, 2003
`
`In re U.S. Patent No. 6,526,808
`
`Filed:
`
`Issued:
`
`Inventors: Kenneth Alan Pieroni
`
`
`Jim Eli Saffie
`
`Assignee: Star Envirotech, Inc.
`
`Title:
`
`
`
`
`
`
`Mail Stop PATENT BOARD, PTAB
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`SMOKE AND CLEAN AIR GENERATING MACHINE FOR
`DETECTING PRESENCE AND LOCATION OF LEAKS
`IN FLUID SYSTEM
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO.
`6,526,808 UNDER 35 U.S.C. § 311-319 AND 37 C.F.R. § 42.100 ET
`SEQ.
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`TABLE OF CONTENTS
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`I.
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`MANDATORY NOTICES PER 37 C.F.R. § 42.8(A)
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`A.
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`B.
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`C.
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`D.
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`E.
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`Real Party-In-Interest:
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`Related Matters
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`Lead and Back-Up Counsel
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`Service Information
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`Power of Attorney
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`II.
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`PAYMENT OF FEES
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`III.
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`REQUIREMENTS FOR INTER PARTES REVIEW
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`A.
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`B.
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`Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Identification of Challenge Under 37 C.F.R. § 42.104
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`1.
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`2.
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`3.
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`4.
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`Claims for which inter partes review is requested
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`The specific art and statutory ground(s) of the challenge
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`How the challenged claims are to be construed
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`Supporting evidence relied upon to support the challenge
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`IV.
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`SUMMARY OF THE ‘808 PATENT
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`A.
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`B.
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`C.
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`Description Of The ‘808 Patent
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`Summary Of The Prosecution History
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`Summary Of Ex Parte Reexamination
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`1.
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`2.
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`Reexamination Control No. 90/009,683
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`Reexamination Control No. 90/011,916
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`D.
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`Construction of Claims 9-10 and Clarification of “Claim Terms
`Flammable Fluid” and “Locating”
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`1.
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`Clarification of “Flammable Fluid”
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`i
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`Page(s)
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`1
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`1
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`1
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`2
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`2
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`2
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`2
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`3
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`3
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`3
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`3
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`3
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`7
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`8
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`8
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`8
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`10
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`12
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`12
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`13
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`15
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`16
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`TABLE OF CONTENTS (continued)
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`2.
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`Clarification of “Locating”
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`V.
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`DESCRIPTION OF THE PRIOR ART
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`A.
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`Prior Art Smoke Machines for Vehicle Leak Testing
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`(1)
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`The Gilliam Patent (Ex. 1005)
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`(2)
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`The 1995 VACUTEC Reference (Ex. 1006)
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`B.
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`Prior Art Using Inert Gas to Make Smoke And Motivation For Use
`In Leak Testing
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`(1)
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`The 1969 AE Article (Ex. 1007)
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`(2)
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`The GB ‘867 Patent (Ex. 1008)
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`(3)
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`The IFJ Article (Ex. 1009)
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`(4)
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`GB ‘266 Patent (Ex. 1010)
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`(5)
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`The 1998 ESTA Reference (Ex. 1011)
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`(7)
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`The 1999 Website (Ex. 1013)
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`VI.
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`THERE IS A REASONABLE LIKELIHOOD THAT CLAIMS 9 AND 10
`OF THE ‘808 PATENT ARE UNPATENTABLE
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`VII. DETAILED EXPLANATION
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`A.
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`B.
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`Claim Charts Showing Claims 9 and 10 of the ‘808 Patent Are
`Obvious On Grounds (1) Gilliam + AE, or (2) Gilliam + GB ‘867,
`or (3) Gilliam + IFJ + Swiatosz, or (4) Gilliam + IFJ + 1999
`Website, or (5) Gilliam + GB ‘266 + 1999 Website, or (6) Gilliam
`+ ESTA + 1999 Website
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`Claim Charts Showing Claims 9 and 10 of the ‘808 Patent Are
`Obvious On Grounds (7) Gilliam/Vacutec + AE, or (8) Gilliam/
`Vacutec + GB ‘867 + AE, or (9) Gilliam/Vacutec + IFJ +
`Swiatosz, or (10) Gilliam/Vacutec + GB ‘266 + 1999 Website, or
`(11) Gilliam/Vacutec + IFJ + 1999 Website, or (12)
`Gilliam/Vacutec + ESTA + 1999 Website
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`ii
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`18
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`19
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`21
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`21
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`23
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`24
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`25
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`25
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`27
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`28
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`TABLE OF CONTENTS (continued)
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`VIII. CONCLUSION
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`58
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`iii
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`EXHIBIT LIST
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`1001 United States Patent No. 6,526,808 to Pieroni et al. (the ‘808 Patent)
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`1002 Prosecution History of United States Patent Application Serial No.
`09/348,320, which matured into the ‘808 Patent
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`1003 Prosecution History of Ex Parte Reexamination Control No. 90/009,683
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`1004 Prosecution History of Ex Parte Reexamination Control No. 90/011,916
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`1005 United States Patent No. 5,107,698 to Gilliam (the Gilliam Patent)
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`1006 The 1995 VACUTEC Smoke Machine Operation Manual and
`Maintenance Instructions (the VACUTEC Reference)
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`1007 The 1969 Article entitled “Research and Testing” from Aircraft
`Engineering and Aerospace Technology, Vol. 41, issue 1, pp. 44-44 (the AE
`Article)
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`1008 Great Britain Patent No. 1,240,867 filed Aug. 28, 1968 and published July
`28, 1971 (the GB ‘867 Patent)
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`1009 The 1996 Article entitled “High Temperature Smoke Training – the Way
`Forward” published in the Industrial Fire Journal, December – January 1996
`(the IFJ Article)
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`1010 Great Britain Patent No. 640,266 filed June 4, 1947 and published July
`19, 1950 (the GB ‘266 Patent)
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`1011 The 1998 Entertainment Services & Technology Association’s
`Introduction to Modern Atmospheric Effects (the ESTA Reference)
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`1012 United States Patent No. 4,303,397 to Swiatosz (the Swiatosz Patent)
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`1013 Webpages published at least as early as January 28, 1999 from the
`website www.smokemachines.com (the 1999 Website)
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`1014 United States Patent No. 5,922,944 to Pieroni et al.(the ‘944 Patent)
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`1015 Material Data Safety Sheet for Citigo PAO 46 Oil
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`iv
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`EXHIBIT LIST: (continued)
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`1016 Definitions Published 1997 re: the Occupational Safety and Health
`Administration (OSHA) Definition for Flammable Liquid; Department of
`Transportation Definition of Flammable Liquid and the Environmental
`Protection Agency’s definition of “ignitable” fluids.
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`1017 Federal Register Published 1999 re: OSHA’s definition for Flammable
`Liquid
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`v
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`Petitioner, Redline Detection, LLC (“Redline”) requests inter partes
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`review of Claims 9 and 10 of U.S. Patent 6,526,808 (“the ‘808 Patent” – Ex.
`
`Ex. 1001) pursuant to 35 U.S.C. §§ 311-319 and 37 C.F.R. § 42.100 et seq.
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`I. MANDATORY NOTICES PER 37 C.F.R. § 42.8(a)
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`A. Real Party-In-Interest:
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`Per 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Redline is the real
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`party-in-interest.
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`B. Related Matters
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`Per 37 C.F.R. § 42.8(b)(2), the ‘808 patent is the only patent involved
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`in a lawsuit titled Star EnviroTech, Inc. v. Redline Detection, LLC et al.,
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`SACV12-1861-DOC (C.D. Cal.), filed on October 25, 2012, less than one
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`year ago. A Scheduling Conference is set for February 25, 2013. A motion
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`under FRCP 12(b)(6) and 12(f) is set for hearing on January 28, 2013.
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`Redline seeks to use the inter partes review as an alternative to time
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`consuming and costly patent litigation as provided by the Leahy-Smith
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`America Invents Act (AIA). This review first became available for the ‘808
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`patent on Sept. 16, 2012. As the current proceeding must be concluded
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`within 12 months by statute, the issues of patentability for the ‘808 patent
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`may be quickly resolved, especially insofar as discovery has not yet
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`commenced in the above-referenced litigation. Moreover, the inter partes
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`proceedings will be exclusively presided over by technically trained
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`Administrative Patent Judges of the PTAB. Redline is looking forward to a
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`timely and cost effective resolution to the patent validity.
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`C. Lead and Back-Up Counsel
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`Per 37 C.F.R. § 42.8(b)(3), Petitioner’s designation of counsel is:
`
`
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`Lead Counsel
`
`Matthew A. Newboles
`Registration No. 36,224
`STETINA BRUNDA
`
`GARRED & BRUCKER
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
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`Phone: (949)855-1246
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`Facsimile: (949)855-6371
`mnewboles@stetinalaw.com
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`D. Service Information
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`Back-Up Counsel
`Lowell Anderson
`Registration No.: 30,990
`STETINA BRUNDA
`GARRED & BRUCKER
`75 Enterprise, Suite 250
`Aliso Viejo, CA 92656
`Phone: (949) 855-1246
`Facsimile: (949) 855-6371
`landerson@stetinalaw.com
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`Per 37 C.F.R. § 42.8(b)(4), service information is provided above.
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`E.
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`Power of Attorney
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`A power of attorney is filed in accordance with 37 C.F.R. § 42.10(b).
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`II.
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`PAYMENT OF FEES
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`Inter partes review is requested for two claims, specifically Claims 9
`
`and 10 of the '808 patent, and is accompanied by a payment of $27,200 for
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`up to 20 claims. See 37 C.F.R. § 42.15 & 35 U.S.C. § 312(a)(1). The
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`undersigned further authorizes payment for any additional fees that might be
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`due in connection with this Petition to be charged to Deposit Account No.
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`2
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`19-4330.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`As set forth below, each requirement of 37 C.F.R. § 42.104 for inter
`
`partes review of the ‘808 patent is satisfied.
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`A. Grounds for Standing Under 37 C.F.R. § 42.104(a)
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`Per 37 C.F.R. § 42.104(a), Petitioner certifies that the ‘808 patent is
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`now available for inter partes review and that the Petitioner is not barred or
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`estopped per 35 U.S.C. § 315(e) as the ‘808 patent is not subject to a prior
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`estoppel-based proceeding of the AIA and that the complaint identified in
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`Section I.B was served within the last 12 months.
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`B.
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`Identification of Challenge Under 37 C.F.R. § 42.104
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`Per 37 C.F.R. § 42.104(b), the relief requested is that the Patent Trial
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`and Appeal Board (“PTAB”) invalidate Claims 9 and 10 of the ‘808 patent.
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`1. Claims for which inter partes review is requested
`
`Per 37 C.F.R. § 42.104(b)(1), Petitioner requests inter partes review
`
`of Claims 9 and 10 of the ‘808 patent.
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`2. The specific art and statutory ground(s) of the challenge
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`Per 37 C.F.R. § 42.104(b)(2), inter partes review of the ‘808 Patent is
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`requested in view of the following references, each of which is prior art to
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`the ‘808 Patent under 35 U.S.C. § 102(a), (b), and/or (e). While several
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`3
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`references describe the same products, the references are listed separately:
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`United States Patent No. 5,107,698 to Gilliam, filed April 5, 1991 and
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`issued April 28, 1992 (the Gilliam Patent), which is a 102(a) reference,
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`Exhibit 1005.
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`The 1995 VACUTEC Smoke Machine Operation Manual and
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`Maintenance Instructions (the VACUTEC Reference), which is a 102(a)
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`reference, Exhibit 1006.
`
`The 1969 article, “Research and Testing” from Aircraft Engineering
`
`and Aerospace Technology, Vol. 41, issue 1, pp. 44-44, published in 1969
`
`(the AE Article), which is a 102(a) reference, Exhibit 1007.
`
`Great Britain Patent No. 1,240,867, filed Aug. 28, 1968 and published
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`July 28, 1971 (the GB ‘867 Patent), which is a 102(a) reference, Exhibit
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`1008.
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`The article entitled “High Temperature Smoke Training – the Way
`
`Forward,” published in the Industrial Fire Journal, December – January 1996
`
`at p. 56 (the IFJ Article), which is a 102(a) reference, Exhibit 1009.
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`Great Britain Patent No. 640,266, filed June 4, 1947 and published
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`July 19, 1950 (the GB ‘266 Patent), which is a 102(a) reference, Exhibit
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`1010.
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`The Entertainment Services & Technology Association’s Introduction
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`4
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`to Modern Atmospheric Effects, published in 1998 (the ESTA Reference),
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`which is a 102(a) reference, Exhibit 1011.
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`United States Patent No. 4,303,397 to Swiatosz, filed August 8, 1980
`
`and issued December 1, 1981 (the Swiatosz Patent), which is a 102(a)
`
`reference, Exhibit 1012.
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`Webpages published at least as early as January 28, 1999 from the
`
`website www.smokemachines.com, obtained from archive.org (the 1999
`
`Website), which is a 102(b) reference, Exhibit 1013.
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`Petitioner requests inter partes review of Claims 9 and 10 of the ‘808
`
`Patent on the grounds set forth below and request that Claims 9 and 10 be
`
`found unpatentable. The first cited reference shows the basic structure and
`
`process while the remaining references provide inert gas to generate smoke,
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`with the second bases of rejections 7-12 using overlapping references that
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`disclose the same products to further ensure completeness of disclosures:
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`Ground 1. The Gilliam Patent (Ex. 1005) in view of the AE Article
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`(Ex. 1007) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 2. The Gilliam Patent (Ex. 1005) in view of the GB ‘867
`
`Patent (Ex. 1008) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 3. The Gilliam Patent (Ex. 1005) in view of the IFJ Article
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`(Ex. 1009) and further in view of the Swiatosz Patent (Ex. 1012) render
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`5
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`Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 4. The Gilliam Patent (Ex. 1005) in view of the IFJ Article
`
`(Ex. 1009) and further in view of the 1999 Website (Ex. 1013) render
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`Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 5. The Gilliam Patent (Ex. 1005) in view of the GB ‘266
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`Patent (Ex. 1010) and further in view of the 1999 Website (Ex. 1013) render
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`Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 6. The Gilliam Patent (Ex. 1005) in view of the ESTA
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`Article (Ex. 1011) and further in view of the 1999 Website (Ex. 1013) render
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`Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 7. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
`
`view of the AE Article (Ex. 1007) render Claims 9 and 10 obvious under 35
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`U.S.C. § 103.
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`Ground 8. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
`
`view of the GB ‘867 Patent (Ex. 1008) and AE Article (Ex. 1007) render
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`Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 9. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
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`view of the IFJ Article (Ex. 1009) and further in view of the Swiatosz Patent
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`(Ex. 1012) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 10. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
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`6
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`view of the GB ‘266 Patent (Ex. 1010) and further in view of the 1999
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`Website (Ex. 1013) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 11. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
`
`view of the IFJ Article (Ex. 1009) and further in view of the 1999 Website
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`(Ex. 1013) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`Ground 12. The Gilliam/Vacutec References (Exs. 1005 & 1006) in
`
`view of the ESTA Article (Ex. 1011) and further in view of the 1999
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`Website (Ex. 1013) render Claims 9 and 10 obvious under 35 U.S.C. § 103.
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`3. How the challenged claims are to be construed
`
`Per 37 C.F.R. § 42.104(b)(3), Petitioner provides an explanation of
`
`how the claims that are the subject of the present Petition for inter partes
`
`review are to be construed. A claim subject to inter partes review receives
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`the “broadest reasonable construction in light of the specification of the
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`patent in which it appears.” 42 C.F.R. § 42.100(b). Except for the claim
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`terms “flammable fluid” and “locating” as explained in Section IV.C below,
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`Petitioner submits that for purposes of this inter partes review only, the
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`claim terms should take on their ordinary and customary meaning that the
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`terms would have to one of ordinary skill in the art.
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`None of the challenged claims contains a “means” limitation under
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`§112 ¶6. Also, but for the claim terms “flammable fluid” and “locating,”
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`7
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`none of the claims recite a “coined” or defined phrase (lexicography).
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`4. Supporting evidence relied upon to support the challenge
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`Per 37 C.F.R. § 42.104(b)(5), the exhibit numbers of the supporting
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`evidence relied upon herein and the relevance of that evidence, including
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`identifying specific portions of the evidence that support the challenges, are
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`provided in Section VII, below, in the form of explanatory text and claim
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`charts. An Appendix of Exhibits identifying the exhibits is also attached.
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`IV. SUMMARY OF THE ‘808 PATENT
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`A. Description Of The ‘808 Patent
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`The ‘808 Patent discloses a method and apparatus to determine if a
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`closed fluid system, such as the evaporative system or exhaust system of a
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`motor vehicle, is leaking. Claims 9-10, for which inter partes review is
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`sought, require leak testing in a volatile, potentially explosive environment,
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`specifically a vehicle fuel tank. Ex. 1001, Reexamined Claim 9 at Col. 2: 21-
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`26. The ‘808 Patent describes generating smoke with the aid of a carrier
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`gas, which can be either air or, “because of their non-flammable and inert
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`characteristics,” an inert gas such as nitrogen or carbon dioxide. Ex. 1001,
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`Col. 6: 54-60. The ‘808 Patent says that smoke carried by an inert gas would
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`be relatively safe for testing the evaporative system of a motor vehicle which
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`lies in a volatile environment of potentially explosive hydrocarbon vapors.
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`8
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`Inter Partes Review of U.S. Patent No. 6,526,808
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`Id. Claims 9-10 at issue require using a non-combustible (i.e., inert) gas
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`instead of air for leak testing the fuel tank.
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`The disclosed smoke generating apparatus has
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`a chamber 6 containing an oil supply 8. An air inlet
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`tube 10 projects inwardly from the bottom of the
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`chamber 6 and extends above the oil supply 8. The
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`chamber further includes a heating element 14 as well as a fluid baffle 18
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`having a smoke outlet orifice 20 that extends across the chamber and above
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`the heating element 14. Air from air compressor 25 (below) can fill the
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`smoke chamber 6 and help carry the smoke for leak testing.
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`The ‘808 Patent teaches the use of inert, non-flammable gas, namely,
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`carbon dioxide or nitrogen, from a tank or bottle 60 (below). Per the ‘808
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`Patent, “smoke carried by nitrogen gas would be relatively safe for testing
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`the evaporative system of a motor vehicle which lies in a generally volatile
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`environment of potentially explosive hydrocarbon vapors.” Ex. 1001, Col. 6:
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`54-60.
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`Moreover, producing smoke
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`with nitrogen gas rather than air
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`would enable a variety of high
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`pressure systems to be tested at high
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`operating temperature but without the inherent risk of an explosion. Ex.
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`1001, Col. 6: 63-67.
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`B.
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`Summary Of The Prosecution History
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`The application for the ‘808 Patent (Ser. No. 09/348,320), was filed
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`on July 7, 1999 and issued on March 4, 2003. As there is no priority claim to
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`any earlier application, the effective filing date of the patent is July 7, 1999.
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`The primary reference utilized during the original prosecution1, the
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`Patent Owner’s ‘944 Pieroni Patent, was distinguished because its smoke
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`generating device “employed air as the gas for blowing oil towards the
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`heating element. As will be understood by those skilled in the art, air
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`contains oxygen and is highly combustible in a volatile environment”
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`whereas the claimed nitrogen gas was inert and did not support combustion.
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`Ex. 1002, July 20, 2001 Amend. at pg. 5. The Brayman reference was
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`distinguished as using nitrogen only as a trace gas, as the prior art did not
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`teach the “improbable use of non-combustible nitrogen gas (i.e., a gas that
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`does not burn) to blow fluid (e.g., oil) against a heating element at which the
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`1 The references relied upon during the original prosecution were Pieroni et
`al. (i.e., U.S. 5,922,944, Ex. 1014), the primary reference, in further view of
`Gouge (i.e., U.S. 5,859,363) and Brayman et al. (i.e., U.S. 4,754,638). Later
`in prosecution, the combination of Pieroni et al. in view of Chu et al. (i.e.,
`U.S. 5,849,596) was relied upon.
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`fluid is vaporized into smoke in the manner recited by the applicants ....” Id.
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`at pg. 6.
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`The Patent Owner also argued that inert, nitrogen gas did not support
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`combustion and would not be expected to generate smoke:
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`It is pointed out that nitrogen gas is inert, contains no oxygen
`and, therefore, is noncombustible. One of ordinary skill in the
`art would not be inclined to use a gas that will not burn to
`promote an ignition process to vaporize oil into smoke.
`Contrary to what would be expected by using a non-
`combustible gas, the Applicants’ use of nitrogen gas to blow the
`flammable fluid against the heating element permits smoke to
`be generated within a sealed chamber at higher pressures and
`temperatures and without the risk of an explosion. [Ex. 1002,
`2/4/2002 Amend. Aft. Final at 5].
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`The Chu Patent was distinguished as using nitrogen gas to blow
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`smoke away from a smoke generating chamber only after the smoke had
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`first been generated. Ex. 1002, 8/22/2002 Amend. at 5. Patent Owner’s
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`counsel further went on to emphasize in such amendment that:
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`Accordingly, one wishing to make smoke would be expected to
`use a combustible gas containing air that is adapted to ignite
`rather
`than a mixture containing
`inert, non-combustible
`nitrogen gas like that claimed by the Applicants. In this same
`regard, one wishing to create smoke through an ignition process
`would be unlikely to use carbon dioxide (as is also taught by
`the Applicants) since compressed carbon dioxide is regularly
`used (e.g., in fire extinguishers) to suppress combustion. Id.
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`Ultimately, it was the use of a non-combustible gas to create an inert
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`environment within a smoke producing chamber that was identified as the
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`Reasons for Allowance:
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`[T]he express use of a non-combustible gas creating an inert
`environment within a smoke producing chamber and a non-
`combustible gas preventing ignition and thereby avoiding the
`possibility of an explosion at the volatile, potentially explosive
`environment at which the smoke will be used is not taught by
`the prior art. [Ex. 1002, Final Office Action 9/25/2002 at pg. 5].
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`The same reasons for allowance applied to issued Claim 9. Id.
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`(“Claim 28 [issued Claim 9] is considered patentably distinct for
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`substantially the same reasons given for Claim 25 discussed above.”).
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`C.
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`Summary Of Ex Parte Reexamination
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`1. Reexamination Control No. 90/009,683
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`Claim 9 of the ‘808 Patent was the subject of Ex Parte Reexamination
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`No. 90/009,683, at a time when inter partes proceedings did not apply to the
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`‘808 patent per MPEP §2611. During reexamination, original Claim 9 was
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`rejected and revised and dependent Claim 10 was added. 2 Allowance of
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`narrowed Claim 9 was based on the same use of inert gas in a smoke
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`producing chamber as in the original examination, and on the use of an inert
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`2 Reexamination references previously asserted to reject Claim 9 included
`GB 1,039,729 to Popkin (§102 rejections); the ‘944 Pieroni Patent in view
`of GB 1,039,729 to Popkin (§103 rejections); and the ‘944 Patent to Pieroni
`in view of EPA Publication IM 240 & EVAP Technical Guidance (§103
`rejections). Reexamination references asserted to reject added Claim 10
`included the ‘944 Patent to Pieroni in view of the GB ‘729 to Popkin, and
`further in view of U.S. 5,107,698 to Gilliam (§103 rejections), and the’944
`Patent to Pieroni in view of EPA reference, EPO 240 (§103 rejections).
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`gas to carry the smoke downstream for the single purpose of leak testing
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`vehicle fuel tanks. The Reexamination Reasons for Allowance stated:
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`Claims 9 and 10 are allowable in that none of the art teaches the
`method for generating smoke for use at a volatile, potentially
`explosive environment, where an inert environment is created
`in the smoke producing chamber to 1) prevent explosion in the
`chamber and 2) carrying the smoke downstream to a potential
`volatile system undergoing test for leaks to create an inert
`environment in the system undergoing test to prevent ignition
`during testing thereof, where the system undergoing test is the
`evaporative system of a motor vehicle including the fuel tank.
`[Ex. 1003, 5/26/2011 Notice of Intent to Issue Reexam
`Certificate in Reexamination 90/009,683, p. 2]
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`Thus, allowance was based on the alleged failure of the prior art to
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`teach the use of inert gas-based smoke for leak detecting.
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`2. Reexamination Control No. 90/011,916
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`Claims 9 and 10 were also the subject of second Ex Parte
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`Reexamination No. 90/011,916. Claims 9 and 10 were initially rejected
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`under 35 U.S.C. § 103(a) as unpatentable over the Gilliam Patent in view of
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`RE 38,686 to Loblick and further rejected as unpatentable over Patent
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`3,683,675 to Burton et al. in view of RE 38,626 to Loblick.
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`Such claims were ultimately deemed patentable, however, because the
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`prior art allegedly did not disclose or suggest an inert gas used within a
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`combustion chamber as recited in Claim 9. Ex. 1004, 4/6/2012 Notice of
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`Intent to Issue Reexam Certificate in Reexamination No. 90/011,916, at 2.
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`Specifically, the Patent Owner argued that the primary reference to Gilliam
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`disclosed a smoke machine that produced smoke by combustion -- as
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`opposed to vaporization -- and hence required oxygen. Ex. 1004, 2/6/2012
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`Amend. at 10-11. Based on that premise, Patent Owner then construed the
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`secondary reference (RE 38,626 to Loblick ) as supposedly teaching an
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`improved, more “complete combustion” of oil with oxygen than was taught
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`by the Gilliam Patent. Ex. 1004 2/6/2012 Amend. at 9-10.
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`As the Gilliam Patent is a primary reference in this inter partes
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`review, Petitioner submits
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`that
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`the Gilliam Patent was grossly
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`mischaracterized in the previous ex parte reexamination as Gilliam never
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`mentions “combustion” but does “vaporize” a “non-flammable” fluid using a
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`heating element controlled so as not to exceed 250°F. Ex. 1005, Col. 4: 38-
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`46 (vaporize) Col. 6: 34-36; Cl. 9, Col. 9: 1-2, Cl. 17 (vaporizing); Col. 7:
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`14-25 (temp.). Since the preferred fluid is “Bray Oil Company Fireproof
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`Hydraulic Fluid C-635 having a flash point of 425°F” (Col. 6: 1-2) the non-
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`flammable fluid is vaporized 175 degrees below the fluid’s flash point; as
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`such, ignition and combustion cannot occur.
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`Despite the secondary reference’s (Loblick) description and drawings
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`showing an inert gas as the only gas connected to both the fuel and smoke
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`generating chamber (see element 26 at
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`right), inventor’s declarations and arguments recharacterized Loblick as
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`using inert gas only after the oxygen-combusted smoke was produced in the
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`combustion chamber. This construction is not disclosed in Loblick and
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`allowed expert testimony that contradicts the disclosure of a prior art patent.
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`Nevertheless, the Reasons for Allowance found that Loblick mixed
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`air/oxygen with the smoke generating fluid first, and then used inert gas only
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`after or downstream of the combustion chamber 14. Ex. 1004, 4/6/2012
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`NIRC at 2-3. Thus, the lack of a reference using inert gas to vaporize a
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`flammable fluid was again a basis for allowance. As such, Loblick cannot be
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`“cumulative” of the current references relied upon by Petitioner herein
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`which use inert gas in a smoke generating chamber.
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`Further, the ‘944 Pieroni Patent was removed as a basis for rejection
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`by revising the inventorship so it was not a prior publication by another
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`under §102(b). Finally, the Reasons for Allowance cited declarations for the
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`“non-obvious concept of producing smoke in an inert gas environment” and
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`that there was a long felt need for a non-combustible smoke producing
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`chamber to detect leaks in a combustible atmosphere. Id. at 3.
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`D. Construction of Claims 9-10 and Clarification of “Claim Terms
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`Flammable Fluid” and “Locating”
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`Claims subject to inter partes review are intended to be construed per
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`47 C.F.R. § 42.100(b) and receive the “broadest reasonable construction in
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`light of the specification of the patent which it appears.” Generally, the
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`claim terms take on the ordinary and customary meaning that the terms
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`would have to one of ordinary skill in the art.
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`1. Clarification of “Flammable Fluid”
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`One claim term not using its ordinary meaning is “flammable fluid”.
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`Specifically, independent Claim 9 requires vaporizing a “flammable fluid”.
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`First, the term “fluid” is not expressly defined in the ‘808 patent so its
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`ordinary meaning is broad enough to include liquid glycerins, glycols and
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`oils along with other fluids. Second, while the use of a “flammable” fluid
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`might normally imply something that readily ignites at a low temperature,
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`that is not the case in the ‘808 Patent. The “oil” described in the ‘808 patent
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`as the vaporized “fluid” has a large range of flash points or ignition
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`temperatures depending on the type of oil. More importantly though, the
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`‘808 patent incorporates patent application Serial No. 09/020,841 by
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`reference. Ex. 1001, Col. 3: 18-21. That application issued as the ‘944
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`Pieroni Patent, attached as Ex. 1014, and prefers using a Citigo PAO 46 oil
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`to generate smoke. Ex. 1014 Col. 2: 50-52. The flash point of PAO 46 is
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`468ºF (242ºC). Ex. 1015. One would normally expect the ’808 claims to
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`encompass the preferred smoke generating fluid with its 468ºF flash point.
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`The term “flammable” is never used in the ‘808 specification. Rather,
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`that term was added to issued Claims 1 and 6 in a Feb. 4, 2001 amendment,
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`and was presented in Claim 25 (issued Claim 9) when that claim was added
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`in an Aug. 22, 2001 amendment during original prosecution. The
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`explanatory remarks show “flammable” encompasses the preferred PAO 46
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`oil. When adding “flammable,” the Patent Owner said that the prior art ‘944
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`Pieroni Patent “used to blow a flammable fluid against a heating element.”
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`Ex. 1002, 10/25/2001 Amend. At p.4 (emphasis added)).
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`Since the preferred smoke generating fluid in the ‘944 Patent is PAO
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`46 with a flash point of 468ºF (242ºC) and since that fluid was said to be
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`“flammable,” the claim term “flammable fluid” should include any fluid
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`with a flash point of at least 468ºF or lower. This definition is broader than
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`the normal definition of “flammable,” which at the time the ‘808 Patent was
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`filed referred to a liquid having a flash point of 141°F (60°C) or less. Cf. Ex.
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`1016, p. 5 (OSHA defined flammable liquid as having a flash point of 100°F
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`(38°C) or less, DOT defined it as a flash point of 141°F (61°C) or less and
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`the EPA defined “ignitable” fluids as having a flash point of 140°F (60°C)
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`or less). Accord Ex. 1017, p. 13909 (OSHA defines a flammable liquid as
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`having a flash point below 100°F, with flash points at or above 100°F being
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`called “combustible”).
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`The flash point for glycol is 210ºF (99ºC) and glycerin’s flash point is
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`320ºF (160ºC), each of which is much less than the 468ºF (242ºC) flash
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`point of the preferred smoke generating fluid in the ‘808 patent and thus a
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`“flammable fluid.” Several references use these fluids.
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`Significantly, the smoke generating hydraulic fluid of the Gilliam
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`Patent has a flash point of 425º F (218º C). Ex. 1005, Col. 6: 1-2. Gilliam’s
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`hydraulic fluid is thus also a “flammable fluid” within the meaning of the
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`‘808 patent claims, despite the fact the Gilliam Patent expressly calls that
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`fluid “fireproof.” Ex. 1005, Col. 5: 67 to Col. 6: 2.
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`2. Clarification of “Locating”
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`The claim term “locating a heating element within a closed smoke
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`producing chamber” can refer to the step of forming, placing or positioning
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`the heating element in the chamber or it could refer to identifying the
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`location of the heating element in the chamber. Simply identifying the
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`location of a part in the chamber makes no sense in the context of Claim 9.
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`Because Claim 9 is a method claim, however, the step of putting or placing a
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`heating element within the chamber makes sense and should be used.
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`Claim 1 also uses “locating” a second time to mean forming, placing
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`or positioning as it defines the step of “locating a heating element within
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`said closed smoke producing chamber so as to extend in spaced alignment
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`Inter Partes Review of U
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