US Patent N0.: 5,633,329
`Paper No. __
`Petition for Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SNF Holding Company,
`Flopam Inc.,
`Chemtall Incorporated,
`SNF SAS, and
`
`SNF (China) Flocculant Co. Ltd.
`
`Petitioner
`
`V.
`
`BASF Corporation
`
`Patent Owner
`
`US. Patent No. 5,633,329
`Issue Date: May 27, 1997
`Entitled: PREPARATION OF HIGH MOLECULAR WEIGHT POLYMERS
`
`Inter Partes Review N0.: Unassigned
`
`PETITION FOR INTER PAR TES REVIEW
`
`

`

`TABLE OF CONTENTS
`
`Page No.
`
`I.
`
`MANDATORY NOTICES ............................................................................. l
`
`A.
`
`B
`
`C.
`
`D
`
`E
`
`Real Party-In—Interest Pursuant to 37 CPR § 42.8(b)(1) ................... 1
`
`Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2) ............................. l
`
`Lead and Back—Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3) .......... 2
`
`Service Information Pursuant to 37 CPR. § 42.8(b)(4) ...................... 2
`
`Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103 .................. 2
`
`II.
`
`GROUNDS FOR STANDING ....................................................................... 2
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED ................................... 2
`
`A.
`
`B.
`
`Identification of Claims Challenged ..................................................... 2
`
`Statutory Grounds and Patents and Printed Publications Relied
`Upon for Each Ground .......................................................................... 3
`
`IV.
`
`SPECIFIC CLAIMS AND GROUNDS FOR RELIEF .................................. 3
`
`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED .............. 4
`
`A.
`
`B
`
`C.
`
`D
`
`Brief Summary of Reasons for Relief Requested ................................. 4
`
`The ’329 Patent ..................................................................................... 7
`
`Prosecution History of the ’329 Patent ............................................... 10
`
`The Petitioner’s Newly Cited Prior Art Teaches Solution
`Polymerization of the Claimed Monomers in Tapered Conical
`Reactors Having the Claimed Features .............................................. 10
`
`E.
`
`Construction of Claims of the ”329 Patent ......................................... 14
`
`l.
`
`2.
`
`Preamble Language .................................................................. l4
`
`“water—soluble, monoethylenically unsaturated
`monomers” ............................................................................... l 6
`
`

`

`“and, if desired, crosslinkers which contain at least two
`nonconjugated, ethylenically unsaturated double bonds
`in the molecule and, if desired, water—insoluble
`monoethylenically unsaturated monomers” ............................. 16
`
`“in aqueous solution in the presence of polymerization
`initiators” .................................................................................. l 7
`
`“in a tubular reactor which has a conical taper at the end,
`the ratio of the diameter of the reactor (D1) to the
`diameter at the end of the conical taper of the
`reactor (D2) being from 2:1 to 25 :1 and the an le
`between D1 at the start of the conical taper an the
`inner cone wall being >45° and <90°” ..................................... 17
`
`“gelatinous reaction mixture” ................................................... 18
`
`“removing” the gelatinous reaction mixture ............................ 19
`
`“by injection” of an inert gas .................................................... 19
`
`6.
`
`7.
`
`8.
`
`F.
`
`Specific Identification of Where Each Element of the Claims is
`Disclosed in Prior Art Patents and Printed Publications .................... 2O
`
`1.
`
`2.
`
`Claims 1 — 3 and 5 - 7 would have been obvious over
`the ’597 patent in view of GB ’028 .......................................... 20
`
`Claims 1 - 3 and 5 — 7 would have been obvious over
`the ’597 patent in view of GB ’028 in further view
`of the ’460 patent ...................................................................... 40
`
`Claims 1 ~ 3 and 5 — 7 would have been obvious
`over the ’944 patent in view of the ’597 patent ....................... 44
`
`Claims 1 - 3 and 5 - 7 would have been obvious
`over the ’944 patent in View of the ’597 patent
`in further view of GB ’028 ....................................................... 51
`
`Claims 1 — 3 and 5 - 7 would have been obvious
`over the ’944 patent in View of the ’597 patent in
`further view of GB ’028 and the ’460 patent ........................... 52
`
`Claims 4 and 5 would have been obvious over
`the ’597 patent and GB ’028 in View of the
`’460 patent and EP ’709 ........................................................... 54
`
`Claims 4 and 5 would have been obvious over the
`’944 atent and the ’597 patent in view GB ’028
`and t e ’460 patent, in further view of EP ’709 ....................... 57
`
`VI.
`
`THERE IS AT LEAST A REASONABLE LIKELIHOOD THAT
`
`PETITIONER WOULD PREVAIL WITH RESPECT TO AT
`
`LEAST ONE OF THE CHALLENGED CLAIMS ...................................... 59
`
`VII. CONCLUSION .............................................................................' .................. 6 0
`I
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`
`Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc.,
`291 F.3d 1317 (Fed. Cir. 2002) .......................................................................... 27
`
`Ex parte Trouz'lly,
`No. 2010-012036, 2013 WL 5399276 (P.T.A.B. Jan. 16, 2013) ........... 27, 29, 45
`
`In re Aller,
`220 F.2d 454 (C.C.P.A. 1955) ........................................................................... 48
`
`In re Geisler,
`116 F.3d 1465 (Fed. Cir 1997) ........................................................................... 48
`
`In re Wagner,
`63 F.2d 987 (C.C.P.A. 1933) ................................................................. 27, 29, 45
`
`KSR Int’l Co. v. Teleflex Inc,
`550 US. 398 (2007) ........................................................................................... 34
`
`Perfect Web Techs, Inc. v. Info USA, Inc.,
`587 F.3d 1324 (Fed. Cir. 2009) .......................................................................... 34
`
`Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
`563 F.3d 1358 (Fed. Cir. 2009) .......................................................................... 27
`
`Syntex LLC v. Apotex, Inc,
`407 F.3d 1371 (Fed. Cir. 2005) .......................................................................... 34
`
`iii
`
`

`

`STATUTES
`
`35 U.S.C. § 102(b)........; .......................................................................... 3, 20, 44, 55
`
`35 U.S.C. § 103 ......................................................................................................... 2
`
`35 U.S.C. §§311~318 ................................................................................................ 2
`
`35 U.S.C. § 312(a)(3) ................................................................................................ 3
`
`REGULATIONS
`
`37 CPR. § 42.8(b)(1) ............................................................................................... 1
`
`37 C.F.R. § 42.8(b)(2) ............................................................................................... 1
`
`37 CPR. § 42.8(b)(3) ............................................................................................... 1
`
`37 C.F.R. § 42.8(b)(4) ............................................................................................... 2
`
`37 CPR. § 42.10(b) .................................................................................................. 1
`
`37 C.F.R. §§ 42.15(a) and 42.103 ............................................................................. 2
`
`37 C.F.R. § 42.65 ....................................................................................................... 4
`
`37 CPR. §§ 42.100-42.123 ...................................................................................... 2
`
`37 CPR. § 42.100(b) .............................................................................................. 14
`
`V 37 C.F.R. § 42.104(b) ................................................................................................ 2
`
`iv
`
`

`

`LISTING OF EXHIBITS
`
`Exhibit 1001:
`
`US. Patent No. 5,633,329 (Issued May 27, 1997)
`
`Exhibit 1002:
`
`US. Patent No. 3,784,597 (Issued Jan. 8, 1974)
`
`Exhibit 1003;
`
`US. Patent No. 2,918,460 (Issued Dec. 22, 1959)
`
`Exhibit 1004:
`
`US. Patent No. 3,634,944 (Issued Jan. 18, 1972)
`
`Exhibit 1005:
`
`GB. Patent No. 1,054,028 (Issued Jan. 4, 1967)
`
`Exhibit 1006:
`
`EP Patent No. 0 374 709 (Published Jun. 27, 1990)
`
`Exhibit 1007:
`
`Declaration of Benny Freeman, Ph.D., PE. in Support of
`Petition for Inter Partes Review
`
`Exhibit 1008:
`
`Prosecution History of US. Patent No. 5,633,329
`
`Exhibit 1009:
`
`Polymerization Processes, Ullmann’s Encyclopedia of
`Industrial Chemistry, 5th Edition, 1985
`
`Exhibit 1010:
`
`CV of Dr. Benny Freeman
`
`Exhibit 101 1 :
`
`Gatt, F.C., Flow of Individual Pebbles in Cylindrical Vessels,
`Nuclear Engineering and Design 42, 1977
`
`Exhibit 1012:
`
`Jenike, A.W., Gravity Flow of Bulk Solids, Bul. No. 108
`Utah Engineering Experiment Station, Vol. 52, No. 29., 1961
`
`Exhibit 1013:
`
`Kulicke et at, Preparation, Characterization, Solution
`Properties and Rheological Behavior of Polyacrylamide,
`Prog. Polym. Sci., Vol. 8, pp. 373—468, 1982
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`I.
`
`MANDATORY NOTICES
`
`A.
`
`Real Party-In-Interest Pursuant to 37 C.F.R. § 42.8(b)(1)
`
`SNF Holding Company, Riceboro, Georgia; Flopam Inc., Plaquemine,
`
`Louisiana; Chemtall Incorporated, Riceboro, Georgia; SNF (China) Flocculant Co.
`
`Ltd., Taixing, China; and SNF SAS, Andréziuex, France (collectively,
`
`“Petitioner”), and SPCM SA (France), which is the direct or indirect parent of the
`
`Petitioner, are the real parties—in-interest.
`
`B.
`
`Related Matters Pursuant to 37 C.F.R. § 42.8(b)(2)
`
`Records of the US. Patent and Trademark Office (“PTO”) indicate that US
`
`Patent No. 5,633,329 (“the ’329 patent”) (Exhibit 1001), assigned on its face to
`
`BASF Aktiengesellschaft and subsequently assigned to BASF Corporation
`
`(collectively “PO”), issued May 27, 1997, from US Patent Application No.
`
`08/591,315 (“the ’315 application”), filed January 25, 1996. The ’3 15 application
`
`claims priority to foreign application DE 195 02 939.9, filed January 31, 1995. On
`
`September 23, 2014, the PO asserted the ’329 patent against Petitioner in a
`
`Complaint for patent infringement in the US. District Court for the Southern
`
`District of Texas, Houston Division, (BASF Corporation v. SNF Holding Company
`
`et al., Civil Action No. 4: 14—cv-0273 3).
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`C.
`
`Lead and Back-Up Counsel Pursuant to 37 C.F.R. § 42.8(b)(3)
`
`Petitioner identifies James W. Brady, Jr. (Reg. No. 32,115) as Lead Counsel
`
`and Charles J. Monterio, Jr. (Reg. No. 62,381) as Backup Counsel. Pursuant to
`
`37 C.F.R. § 42.10(b), a Power of Attorney accompanies this Petition.
`
`D.
`
`Service Information Pursuant to 37 C.F.R. § 42.8(b)(4)
`
`Lead counsel for Petitioner may beserved by electronic mail or mail at:
`
`James W. Brady, Jr.
`Reg. No. 32,115
`DICKSTEIN SHAPIRO LLP
`
`1825 Eye Street NW
`Washington, DC 20006
`Tel (202) 420-4786
`Fax (202) 420-2201
`bradyj @dicksteinshapiro . com
`monterioc@dicksteinshapiro.com
`
`E.
`
`Payment of Fees Under 37 C.F.R. §§ 42.15(a) and 42.103
`
`The required fees are submitted herewith. If additional fees are owed during
`
`this proceeding, the PTO is authorized to charge Deposit Account No. 04—1073.
`
`II.
`
`GROUNDS FOR STANDING
`
`Petitioner certifies that the ’329 patent is available for inter partes review
`
`and that it is not barred or estopped from requesting inter partes review
`
`challenging the patent claims on the grounds set forth herein.
`
`III.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`A.
`
`Identification of Claims Challenged
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`Pursuant to 37 CPR. § 42.104(b), Petitioner respectfully requests inter
`
`partes review of claims 1—7 of the ’329 patent under 35 U.S.C. §§ 311—318 and
`
`37 C.F.R. §§ 42100—42123, and the cancellation of those claims as being
`
`unpatentable under 35 U.S.C. § 103.
`
`B.
`
`Statutory Grounds and Patents and Printed Publications
`Relied Upon for Each Ground
`
`There is at least a reasonable likelihood that at least one of claims l—7 of the
`
`”329 patent will be found obvious based on the following prior art. Each prior art
`
`patent and printed publication discussed herein constitutes prior art against the
`
`”329 patent under 35 U.S.C. § 102(b) and is submitted under 35 U.S.C. §
`
`312(a)(3).
`
`1. US. Patent No. 3,784,597 (“the ’597 patent”) (Exh. 1002) (Newly cited)
`
`2. US. Patent No. 2,918,460 (“the ’460 patent”) (Exh. 1003) (Newly cited)
`
`3. US. Patent No. 3,634,944 (“the ’944 patent”) (EXh. 1004) (Newly cited)
`
`4. GB 1,054,028 (“GB ’028”) (Exh. 1005) (Newly cited English language
`
`version of DE 1218157)
`
`5. EP 0 374 709 (“EP ’709”) (Exh. 1006)
`
`IV.
`
`SPECIFIC CLAIMS AND GROUNDS FOR RELIEF
`
`Ground 1. Claims 1 - 3 and 5 - 7 of the ’329 patent are obvious over the
`
`’597 patent in, View of GB ’028.
`
`

`

`US Patent No. 5,633,329
`Petition for Inter Partes Review
`
`Ground 2. Claims 1 — 3 and 5 — 7 are obvious over the ’597 patent in View
`
`of GB ’028 in further view of the ”460 patent.
`
`Ground 3. Claims 1 - 3 and 5 — 7 are obvious over the ’944 patent in view
`
`of the ”597 patent.
`
`Ground 4. Claims 1 - 3 and 5 - 7 are obvious over the ’944 patent in View
`
`of the ’597 patent in further view of GB ’028.
`
`Ground 5. Claims 1 - 3 and 5 - 7 are obvious over the ’944 patent in View
`
`of the ’597 patent in further view of GB ’028 and the ’460 patent.
`
`Ground 6. Claims 4 — 5 are obvious over the ’597 patent in view of GB
`
`’028 in further View of the ’460 patent and EP ’709.
`
`Ground 7. Claims 4 - 5 are obvious over the ’944 patent in View of the
`
`’597 patent in further View of GB ’028, the ’460 patent and EP ’709.
`
`The grounds for unpatentability are supported by the Declaration Under 37
`
`CPR. § 42.65 of Dr. Benny Freeman (“Freeman Decla,” EXh. 1007), providing
`
`testimony as to the prior art and understandings of one of ordinary skill in the art.
`
`V.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`A.
`
`Brief Summary of Reasons for Relief Requested
`
`The ’329 patent claims a process for polymerizing any of a broad group of
`
`common monomers (e.g., acrylamide) in aqueous solution in a polymerization
`
`reactor to produce a gelatinous product and discharging the product from the
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`reactor. The patent claims the use of a tubular reactor, which has a tapered end,
`
`i.e., a funnel cone at the bottom of the reactor. After polymerization, an inert gas is
`
`injected into the reactor to provide pressure to force the gelatinous product out
`
`through the bottom of the funnel cone.
`
`’329 patent, col. 2, lines 5-23 (“’329, 2/5-
`
`23”).
`
`During prosecution, the Examiner allowed the ’329 claims without any
`
`rejection. The Examiner determined that tubular reactors were known, but
`
`mistakenly concluded that the prior art failed to teach solution polymerization of
`
`the claimed monomers in such a reactor. Exhibit 1008, p. 67 (“’329 File
`
`History”). On this basis, the Examiner allowed claims 1 — 7 in a First Action
`
`Allowance. Id.
`
`However, polymerizing the claimed monomers, such as acrylamide, in
`
`aqueous solution in a tubular reactor with a cone at the bottom was well known at
`
`the time of the alleged invention. Similarly, it was well known that the conical
`
`taper at the reactor end provides a funnel through which the resulting gelatinous
`
`polymer can be discharged, and that such configuration effectively removes the
`
`polymer product for further processing while minimizing residue build up within
`
`the reactor. It also was well known to use inert gas pressure, typically nitrogen, to
`
`force the gelatinous polymer out through the discharge opening at the bottom of
`
`the reactor. ‘
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`The ’329 patent touts as its advancement to the art the polymerization of
`
`commonly used monomers in aqueous solution in a tubular reactor having a
`
`conical bottom with a range of taper angles and diameters, i.e., an inclined taper
`
`angle of >45° to < 90° and a ratio of a reactor diameter (D1) to a discharge
`
`diameter (D2) at the bottom of the taper such that D1:D2 is between 2:1 to 25:1.
`
`’329, 2/8—23.
`
`As Petitioner demonstrates herein, newly—cited prior art expressly discloses
`
`tubular polymerization reactors having inclination angles and diameter ratios
`
`within the ’329 claims. Petitioner’s newly-cited prior art teaches conically tapered
`
`polymerization reactors for discharging gelatinous polymers prepared by solution
`
`polymerization of the claimed monomers, wherein the ratio D1:D2 is within the
`
`claimed 2:1 to 25:1 ratio, where the funnel cone angle is >45° to <90°, as recited in
`
`claim 1, as well as within 65° to 85°, as in dependent claim 2 of the ’329
`
`patent. Remaining dependent claims 3-7 merely recite additional broad groups of
`
`monomers or polymerization initiators (claims 3-5) or broad ranges of inert gas
`
`pressure (claims 6—7). These features also are disclosed in the same prior art.
`
`As demonstrated herein, newly—cited prior art expressly disclosed and taught
`
`the claimed subject matter to a person of ordinary skill at the time of the alleged
`
`invention with at least a reasonable expectation of success.
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`B.
`
`The ’329 Patent
`
`The ’329 patent describes and claims a process of polymerizing common
`
`“water soluble monoethylenically unsaturated monomers” in aqueous solution.
`
`The polymerization generates a “gelatinous reaction mixture,” which is removed
`
`from the bottom of the reactor.
`
`’329, col. l/4—l3; 2/27—28. The reactor shape
`
`provides a downward-sloping funnel to facilitate removal of the “frequently
`
`...sticky” polymer gel from the reactor when gas is injected into the reactor from
`
`above. 162., 1/29—30; 2/35—60. The reactor interior is “preferably lined with
`
`anti—
`
`adhesive” material. Id., 2/37—38.
`
`In describing the prior art, the ”329 specification refers to German—language
`
`DE—B—12 18 157 (“DE ’157”) as disclosing “a process for
`
`polymerization of
`
`water-soluble monoethylenically unsaturated monomers
`
`in a cylindrical
`
`
`reactor” in aqueous solution to form a “gelatinous reaction mixture.” ’329, 1/14—
`
`22 (emphasis added). The reactor figure on the last page of DE ’175 illustrates a
`
`vertical vessel with an inverted conical bottom.
`
`The ’329 specification then describes JP—A-93/57181 (“JP ’181”), stating
`
`that “it was known to discharge polymer gels from a reactor
`
`by injection of an
`
`inert gas such as nitrogen.” ’329, 1/34—36. According to the ’329 specification,
`
`the problem with discharging polymer gels by injection of an inert gas is that “the
`
`inert gas prematurely escapes from the reactor through a gap which is formed
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`between the inner wall of the reactor and the gel before the polymer has been
`
`pressed through the outlet opening completely.” ’329, 1/3 6-41. The ’329
`
`specification then discusses EP ’709 as experiencing similar problems, including
`
`“breakthrough” of the polymer gel.
`
`’329, 1/36—40.
`
`Against this background, the ’329 specification states that the named
`
`inventors’ “object” was to make an improved process for preparing polymers
`
`which form a gel in aqueous medium.
`
`’329, 2/5—7. According to the ”329
`
`specification, “this object is achieved
`
`if the tubular reactor has a conical taper at
`
`
`the end, the ratio of the diameter of the reactor (D1) to the diameter of the end of
`
`the conical taper of the reactor (D2) being from 2:1 to 25:1, and the angle between
`
`D1 at the start of the conical taper and the inner cone wall being >450 and <90°.”
`
`161., 2/8-22 (emphasis added).
`
`Referring to Figure 1 of the ’329 patent (reproduced below), the “tubular
`
`reactor
`
`consists essentially of a vertical tube of circular cross-section.” Id.,
`
`2/35—36. “At the top of the tube body are provided one or more feeds for the
`
`reaction mixture and for an inert gas (4).” Id., 2/42-44. “The lower end of the
`
`tubular reactor has a conical taper (2).” 161., 2/51—52. “The ratio of the diameter of
`
`the reactor (D1) to the diameter at the end of the conical taper of the reactor (D2) is
`from 2:1 to 25:1.” Id., 2/52-54. “The conical taper ofthe reactor (2) is such that
`
`the angle 0t [alpha] between D1 at the start of the conical taper and the inner cone
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`wall is >45° and <90°.” Id, 2/56-58. A reactor having these broad features is
`
`recited in claim 1 of the ’329 patent.
`
`
`
`Claim 1 recites (emphasis added):
`
`1. [preamble] Avprocess for preparing high molecular weight
`
`polymers, which comprises
`
`[element 1:] polymerizing water-soluble, monoethylenically
`
`unsaturated monomers
`
`[element 2:] in aqueous solution in the presence of
`
`polymerization initiators ...
`
`[element 3:] in a tubular reactor which has a conical taper at the
`
`
`end, the ratio of the diameter of the reactor (D1) to the diameter at
`
`the end of the conical taper of the reactor (D2) being from 2:1 to
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`25:1 and the angle between D1 at the start of the conical taper and
`
`the inner cone wall being >45° and <90°, and
`
`[element 4:] removing the gelatinous reaction mixture by
`
`injection of an inert gas.
`
`Accordingly, the “object” of the claimed invention is achieved by using a
`
`tubular reactor having a funnel cone end, with any of a broad range of D1 :D2
`
`ratios (from 2:1 to 25:1), and any of a broad range of taper angles (>450 to < 90°).
`
`C.
`
`Prosecution History of the ’329 Patent
`
`Allowing all claims of the ’3 15 application in a First Action Allowance, the
`
`Examiner stated that the prior art “appears to teach a tapered reactor but not a
`
`solution polymerization of AA, or MAA, or their esters.” ’329 File History, First
`
`Action Allowance, p. 67 (Exhibit 1008). (Acrylic acid [AA] and methyl acrylic
`
`acid [MAA] are a few of the broad range of monomers recited in the ’329 claims.)
`
`In direct contrast, Petitioner’s newly-cited prior art discloses and teaches solution
`
`polymerization of the claimed monomers in the claimed tapered reactors.
`
`D.
`
`The Petitioner’s Newly Cited Prior Art Teaches Solution
`Polymerization of the Claimed Monomers in Tapered Conical
`Reactors Having the Claimed Features
`
`The Examiner did not have the benefit of the newly—cited art, nor the benefit
`
`of an English translation of the PO’s admitted DE ’157 prior art. The newly—cited
`
`’597 patent, for example, discloses acrylamide polymerization, where the resulting
`
`polymers are high, molecular weight gels and the polymerization is conducted in
`
`-10-
`
`

`

`US. Patent No. 5,633,329
`Petition for Inter Partes Review
`
`“[a]ny conventional reaction vessel... preferably those having a bottom product
`
`outlet for discharging the gel-like polymer containing medium.” ’597, 2/70—3/1.
`
`The reactor has a reactor diameterzreactor outlet D1 :D2 ratio of expressly 6:1.
`
`’597, 4/33-37.
`
`The newly—cited ’944 patent discloses preparing “sticky
`
`acrylamide
`
`polymer gels” in a conically—shaped tubular reactor.
`
`’944, 1/4-6; Fig. 1A. In the
`
`’944 patent, “Fig. 1A is an elevation showing schematically the reactors in which
`
`acrylamide polymer gel is formed and the end of the first traveling belt on which
`
`the gel from the reactors is discharged.” ’944, 3/7—10 (emphasis added). Funnel
`
`cone ends are readily apparent from the shaded “elevation” View of Fig. 1A
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`(reproduced below).
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`The ’944 patent discloses solution polymerization of the same preferred
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`monomers and polymers of the ’329 patent in tubular reactors with tapered conical
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`ends through which the resulting gel is discharged for fiarther processing.
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`’944,
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`1/10-24; 6/8; 6/19-21; 6/40-41.
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`Other conically tapered tubular polymerization reactors were known in the
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`prior art, including for example, Ullmann’s Encyclopedia of Chemistry (Exhibit
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`1012), which describes such reactors as being suitable for high molecular weight
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`very high viscosity polymers. Exhibit 1012, p. 7. Rather than the ’944 patent’s
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`“elevation” View, Ullmann illustrates at Figure 19, p. 8 (reproduced below), the
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`same funnel cone features of the ’329 patent in a cut-away View:
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`
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`While a person of ordinary skill in the art could readily discern cone angles
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`of >45° to <90° (claim 1), between 65° to 85° (claim 2), and diameter ratios
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`between 2:1 and 25:1 from the prior art illustrations, other newly—cited prior
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`patents expressly disclosed specific angles and diameter ratios within the claimed
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`ranges. For example, the ’460 patent expressly disclosed a tubular polymerization
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`reactor having a taper angle of 70°. The ’460 patent also provides strong
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`motivation to use this taper angle, because “the steep walls of the cone” prevent
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`“settling” of the polymer against the wall and “concentrates” the polymer “in the
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`apex” for discharge from the reactor.
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`’460, 4/39—48. Figure l of the ’460 patent
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`(reproduced below) illustrates its funnel cone tubular polymerization reactor.
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`
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`The newly—cited prior art expressly disclosed and illustrated polymerization
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`reactors having the diameter ratios and angle values within the claimed ranges, and
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`also use of inert gas pressure to remove the gel mixtures from the funnel bottoms
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`of such reactors. In any event, as explained in the Declaration of Dr. Freeman
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`(Exh. 1007) the claimed features also were mere matters of routine optimization to
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`the person of ordinary skill in the art using conventional design considerations at
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`the time of the alleged invention.
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`E.
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`Construction of Claims of the ’329 Patent
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`In accordance with PTO procedures, the terms of claims l—7 of the ’329
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`patent are to be given their broadest reasonable interpretation in light of the
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`specification, as understood by one of ordinary skill in the art. 37 C.F.R.
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`§ 42.100(b). Petitioner submits constructions for the following terms and phrases
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`in accordance with 37 C.F.R. § 42.100(b) for these proceedings only.
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`1.
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`Preamble Language
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`The preamble of independent claim 1 recites: “[a] process for preparing high
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`molecular weight polymers.” Nowhere in the body of claim 1 is there any further
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`reference to “molecular weight,
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`polymers,” or “high.”
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`)3 (C
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`The specification of the ’329 patent discusses molecular weight, as follows:
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`The molecular weights of the water soluble polymers are above
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`100,000 and are preferably from 1x106 to 20x106. They have K
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`values according to Fikentscher of from 180 to 300
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`No K value
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`can be given for the cross—linked polymers, because the
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`crosslinked polymers do not dissolve in water or another
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`solvent. A molecular weight determination is not possible for
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`the crosslinked polymers.
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`[Id., 7/33-42 (emphasis added).]
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`Although the specification refers to “above 100,000,” the specification
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`provides no explanation why 100,000, or 99,000, would not also be considered
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`“high” relative to molecular weight. Under the broadest reasonable interpretation
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`consistent with the specification, the preamble phrase “process for preparing high
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`molecular weight polymers” does not further define what is meant by “high,”
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`unless “above 100,000” is read into the claim, which is apparently only an arbitrary
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`number. The issue is further compounded by the fact that the specification states
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`that the molecular weight of crosslinked polymers, e.g., polymers prepared via the
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`optional clauses of claim 1 or via dependent claim 4, cannot be determined. “A
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`molecular weight determination is not possible for the crosslinked polymers.”
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`’329, 7/41—42 (emphasis added).
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`In an abundance of caution, Petitioner will consider the preamble phrase
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`“preparing high molecular weight polymers” a claim limitation, and ascribe to it
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`the plain and ordinary meaning as would be understood by the person of skill in the
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`art, i.e., not assigning any specific minimum numerical weight to the phrase.
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`Freeman Decla, 11 76.
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`In any event, the prior art discussed herein establishes that it was well
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`known before the claimed invention to conduct solution polymerization of the
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`claimed monomers, e.g., acrylamide, to prepare polymers having a molecular
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`weight well above 100,000 and “very high molecular weight of more than one
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`million” (GB ’028, 1/ 26-27). Such very high molecular weight polymers were
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`well known as desirable for use as flocculants and other applications where
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`molecular weights into the millions were common. Freeman Decla, 11 81.
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`2.
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`“water—soluble, monoethylenically unsaturated
`monomers”
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`The broadest reasonable interpretation of the phrase “water-soluble,
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`monoethylenically unsaturated monomers” is any water—soluble monomer
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`containing one terminal double bond. Based on the specification of the ’329
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`patent, “the water-soluble monoethylenically unsaturated monomers are designated
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`as monomers of group (a).” Id, 3/22—24. The specification states that the
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`preferred monomers of group (a) include acrylamide. Id, 4/8—11. Thus,
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`acrylamide, or any other water—soluble monomer containing one terminal double
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`bond will satisfy this element of claim 1. Freeman Decla., 1] 83.
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`3.
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`“and, if desired, crosslinkers which contain at least two
`nonconjugated, ethylenically unsaturated double bonds
`in the molecule and, if desired, water—insoluble
`monoethylenically unsaturated monomers”
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`Claim 1 recites the steps of polymerizing certain monomers “and, if desired,
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`crosslinkers ....” Claim 1 also recites the step of polymerizing, “if desired, Water-
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`insoluble monoethylenically unsaturated monomers.” The broadest reasonable
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`,
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`interpretation is that the above phrases provide no patentable weight to the claims.
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`A claim’s scope is not limited by claim language that suggests or makes optional
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`—l6—
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`but does not require steps to be performed. MPEP § 2111. Accordingly, the above
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`“if desired” clauses do not further limit the claims of the ’329 patent.
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`4.
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`“in aqueous solution in the presence of polymerization
`initiators”
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`The broadest reasonable interpretation of the phrase “in aqueous solution in
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`the presence of polymerization initiators” is that the recited monomers are in a
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`solution in which water is a solvent and initiators (such as catalysts) are present.
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`The ’329 specification describes that “[t]he polymerization is carried out in each
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`case in aqueous solution or in solvent mixtures which contain at least 50% by
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`weight of water.” ’329, 6/ 13—15. However, this “50% by weight of water”
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`language from the specification should not be read into the claims, which contain
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`no such limitation. Hence, under the broadest reasonable interpretation, any
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`solution of monomer with water wherein a polymerization initiator is present will
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`satisfy this element of claim 1. Freeman Decla, W 92-93.
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`5.
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`“in a tubular reactor which has a conical taper at the
`end, the ratio of the diameter of the reactor (D1) to the
`diameter at the end of the conical taper of the reactor
`(D2) being from 2:1 to 25:1 and the angle between D1 at
`the start of the conical taper and the inner cone wall
`being >45° and <90°”
`
`The “tubular reactor which has a conical taper at the end” language should
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`be given its plain and ordinary meaning. The claimed features, i.e., the angle of
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`inclination, and the ratio of the reactor diameter (D1) to the “diameter at the end of
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`US. Patent No. 5,633,329
`Petition for Inter Partes Review
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`the conical taper of the reactor D2,” also should be given their plain and ordinary
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`meaning.
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`The claimed ranges of D1 :D2 and inclination angles are broadfeatures of
`the reactor configuration. The claimed “angle between D1 at the start ofthe conical
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`taper and the inner cone wall,” i.e., “angle or” as described in the specification and
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`as shown in Figure 1 of the ’329 patent, is measured from the diameter D1 and is
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`the downward taper (inclination) of the fiinnel cone. See ’329, Figure 1. One of
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`ordinary skill would readily discern from plain meaning that the claimed angle
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`connotes a broad feature in the range of any angle greater than the diagonal of 45°,
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`to anyangle providing less than the cylindrical of 90°. Freeman Decla, 11 97.
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`The claimed range of diameter ratios D1 :D2 (from 2:1 to 25:1) als