UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNF Holding Company,
`Flopam Inc.,
`Chemtall Inc.,
`SNF SAS, and
`SNF (China) Flocculant Co. Ltd.
`
`Petitioner
`
`v.
`
`BASF Corporation
`
`Patent Owner
`
`
`
`____________
`
`Case IPR2015-00600
`Patent 5,633,329
`____________
`
`
`PETITIONERS’ REPLY
`
`
`
`
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SNF Holding Company,
`Flopam Inc.,
`Chemtall Inc.,
`SNF SAS, and
`SNF (China) Flocculant Co. Ltd.
`
`Petitioner
`
`v.
`
`BASF Corporation
`
`Patent Owner
`
`
`
`____________
`
`Case IPR2015-00600
`Patent 5,633,329
`____________
`
`
`PETITIONERS’ REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`I.
`
`II.
`
`III.
`
`IV.
`
`VI.
`
`TABLE OF CONTENTS
`
`
`
`INTRODUCTION ...............................................................................................................1
`
`CLAIM INTERPRETATION ..............................................................................................3
`
`BASF’S ATTEMPTS TO UNDERMINE THE DISCLOSURES OF THE ‘944 AND
`‘597 PRIOR ART ARE UNTENABLE ..............................................................................6
`
`BASF’S ASSERTIONS THAT A POSITA WOULD NOT HAVE A REASON TO
`COMBINE ‘944 AND ‘597 WITH A REASONABLE EXPECTATION OF
`SUCCESS ARE BASELESS ...............................................................................................9
`
`THE CLAIMED TAPER ANGLES WERE MATTERS Of ROUTINE
`OPTIMIZATION ...............................................................................................................14
`
`A.
`
`B.
`
`C.
`
`Tapering Steeper Than 45° was a Known Result-Effective Variable and a
`Matter of Routine Optimization .............................................................................15
`
`Selecting a Conical Taper Between 65° to 85° Was a Matter of Routine
`Optimization ..........................................................................................................16
`
` Claims 6-7 Gas Pressures Were Matters of Routine Optimization .......................19
`
`VII. BASF’S SECONDARY CONSIDERATION ARGUMENTS HAVE NO MERIT .........20
`
`VIII. ADDING A CROSS LINKER FROM EP ’709 TO ’944/’597 WOULD HAVE
`BEEN OBVIOUS TO A POSITA .....................................................................................22
`
`IX.
`
`CONCLUSION ..................................................................................................................24
`
`
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`
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`
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`
`
`CASES
`
`
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 298 (2007) ...................................................................................................................1
`
`In re Peterson,
`315 F.3d 1325 (Fed. Cir. 2003)................................................................................................16
`
`In re Applied Materials, Inc.,
`692 F.3d 1289 (Fed. Cir. 2012)..........................................................................................16, 23
`
`Perfect Web Techs., Inc. v. InfoUSA Inc.,
`587 F.3d 1324 (Fed. Cir. 2009)................................................................................................18
`
`In re Urbanski,
`No. 2015-1272, 2016 WL 97522 (Fed. Cir. Jan. 8, 2016) .......................................................23
`
`iii
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`
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`Exhibit 1001:
`Exhibit 1002:
`Exhibit 1003:
`Exhibit 1004:
`Exhibit 1005:
`Exhibit 1006:
`Exhibit 1007:
`Exhibit 1012:
`
`Exhibit 1014:
`Exhibit 1017:
`Exhibit 1018:
`Exhibit 1019:
`Exhibit 1020:
`Exhibit 1021:
`
`Exhibit 1022:
`
`Exhibit 1023:
`Exhibit 1024:
`
`Exhibit 1025:
`Exhibit 1026:
`Exhibit 1027:
`Exhibit 2003:
`Exhibit 2016:
`
`
`
`
`LISTING OF EXHIBITS
`
`U.S. Patent No. 5,633,329 (Issued May 27, 1997)
`U.S. Patent No. 3,784,597 (Issued Jan. 8, 1974)
`U.S. Patent No. 2,918,460 (Issued Dec. 22, 1959)
`U.S. Patent No. 3,634,944 (Issued Jan. 18, 1972)
`G.B. Patent No. 1,054,028 (Issued Jan. 4, 1967)
`EP Patent No. 0 374 709 (Published Jun. 27, 1990)
`Declaration of Dr. Benny Freeman
`Jenike, A.W., Gravity Flow of Bulk Solids, Bul. No. 108
`Utah Engineering Experiment Station, Vol. 52, No. 29., 1961
`Certified English Translation of JP-A-93/57181
`Deposition Transcript of Dr. John W. Carson (Jan. 21, 2016)
`Deposition Transcript of Dr. F. Joseph Schork (Feb. 3, 2016)
`Declaration of Dr. Benny Freeman dated February 10, 2016.
`U.S. Patent No. 5,081, 215 (Issued Jan. 14, 1992)
`Hawley’s Condensed Chemical Dictionary, 11th Ed., 1987,
`555-556
`McGraw-Hill Encyclopedia of Chemistry, 5th Ed., 1983,
`413-414
`ASM Materials Engineering Dictionary, 1992, 184-185
`M.F. Cunningham and K. F. O’Driscoll, Bulk Polymerization
`in Tubular Reactors- 1. Experimental Observation on
`Fouling, The Canadian Journal of Chemical Engineering,
`Vol. 69, June, 1991
`U.S. Patent No. 2,485,249 (Issued Oct. 18, 1949)
`U.S. Patent No. 3,622,533 (Issued Nov. 23, 1971)
`U.S. Patent No. 4,530,979 (Issued Jul. 23, 1985)
`Deposition of Dr. Benny Freeman
`Declaration of Dr. F. Joseph Schork
`
`
`
`iv
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`
`
`
`
`I.
`
`INTRODUCTION
`
`BASF’s Response (p. 1) relies on misleading assertions that the ’944
`
`and ’597 patents are “entirely directed to downstream processes” after removal.
`
`Based on this mischaracterization, BASF argues that a person of ordinary skill in
`
`the art (“POSITA”) would have had no reason to review the ’944 or the ’597
`
`patents in attempting to solve the problem addressed by the ’329 patent. See id. at
`
`1-2. This improper “problem-solution” approach to obviousness permeates
`
`BASF’s Response. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
`
`As the rebuttal evidence shows, the prior art solved that same problem, which
`
`BASF’s experts could not deny on cross exam.
`
`BASF’s attempts to mischaracterize the prior art only served to undermine
`
`the credibility of its own experts. The testimony of BASF’s Dr. Carson
`
`contradicted BASF’s arguments and the declaration of BASF’s expert, Dr. Schork,
`
`regarding the gelatinous nature of the polymers in the prior art. Exh. 1017 92:11-9.
`
`Subsequently, Dr. Schork admitted an “error” in his declaration. Exh. 1018 109:4-
`
`110:10. This fundamental error undermined the basis of his entire analysis of the
`
`prior art patents.
`
`BASF’s assertions also have no merit because experts on both sides now
`
`agree that the ’944 and ’597 patents disclosed the same monomers and initiators, to
`
`produce the same polymers in aqueous solution, having the same molecular weight
`
`
`
`
`
`
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`and concentration, as the ’329 patent. Exh. 1018 113:5-114:19, Exh. 1019 ¶ 40. As
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`such, the ’944 and ’597 polymers have the same gelatinous properties as those of
`
`the ’329 patent. Exh. 1018 156:22-158:11; Exh. 1019 ¶ 41.
`
`BASF relies upon Dr. Schork’s declaration that “dead zones” were not a
`
`known concern in reactor design. However, Dr. Schork confirmed on cross exam
`
`that this was a design criteria that motivated a POSITA. He was simply unaware
`
`that, as Petitioner’s Dr. Freeman previously testified, it was known in the art to
`
`design polymerization reactors to avoid dead zones. Exh. 1018 43:17-45:4.
`
`Dr. Schork admitted that BASF’s own prior ’215 patent (“Exh. 1020”)
`
`disclosed a conical taper and inert gas, even though he previously declared that
`
`such combination was unknown to “the art as a whole.” The ’215 patent is
`
`admitted prior art discussed in the background of the ’329 patent, but Dr. Schork
`
`had not reviewed it and admitted reviewing only art that counsel for BASF gave to
`
`him. Exh. 1018 180:5-182:3; 16:10-16:16.
`
`BASF’s Response asserts that the ’944 and ’597 patents lack “explicit”
`
`disclosure of the “specific” conical taper angles of the ’329 claims. However, the
`
`claimed angles are anything but “specific.” They are broad ranges that would be
`
`instinctual to the POSITA. Dr. Schork testified on cross that, once conical taper
`
`and inert gas were decided upon, a POSITA would “of course have optimized the
`
`dimensions.” Exh. 1018 190:22-191:3. Dr. Carson admitted that a 75º taper would
`
`
`
`2
`
`
`
`
`
`have been obvious to try, and that there was a perception in the art that 70º would
`
`be sufficient for mass flow, thus confirming Petitioner’s position that selecting a
`
`taper angle within the ’329 preferred range was well within the capabilities of a
`
`POSITA. Exh. 1017 175:1-14.
`
`II. CLAIM INTERPRETATION
`BASF’s Response (p. 12) asserts that the claim term “‘removing’ does not
`
`preclude some insignificant amount of material remaining in the reactor,” but does
`
`not explain what is meant by “insignificant.” However, BASF’s Dr. Carson
`
`testified that “removing” requires discharging at least 90%. Exh. 1017 120:10-
`
`120:14. Petitioner does not object to Dr. Carson’s construction: “‘removing’ does
`
`not preclude less than 10% of material remaining in the reactor.” There is no
`
`dispute that the prior art ’944 and ’597 patents removed at least 90%.
`
`BASF’s Response (p. 12) asserts that “gelatinous” means “a viscoelastic
`
`rubber-like gel.” The ’329 specification and claims never say “rubber-like,” which
`
`adds no clarity and instead would result in § 112 indefiniteness. Not even Dr.
`
`Schork could define the bounds of “rubber-like.” Exh. 1018 103:12-14 (“It’s not
`
`possible for me to say.”).
`
`As proposed in the Petition, the phrase “gelatinous reaction mixture” needs
`
`no construction; it should be given its plain and ordinary meaning. No special
`
`
`
`3
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`
`
`
`
`definition appears in the intrinsic evidence. Dr. Schork testified that a POSITA
`
`knows what the term “gelatinous” means. Id. at 96:19-21; Exh. 1019 ¶¶ 46, 47.
`
`It also is unnecessary to construe “gelatinous” to resolve this dispute. The
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`prior art ’944 and ’597 reactors made and removed gels having the same
`
`chemistry, and at least the same concentration and molecular weight, as the
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`preferred gels of the ’329 specification and claims. Exh. 1018 113:5-114:19. Dr.
`
`Schork agreed on cross exam that viscosity is determined by polymer
`
`concentration and molecular weight. Id., 152:19-153:3. Therefore, the prior art
`
`polymers necessarily had the same viscosities as the polymers covered by the
`
`“gelatinous reaction mixture” language of claim 1. Exh. 1019 ¶ 47.
`
`In addition, the ’944 patent discloses that its polyacrylamide gels are “self-
`
`supporting” in the form of “a 1-inch cube.” Exh. 1004, 1/21-25. Dr. Schork
`
`admitted that “self-supporting” polymers are within BASF’s proposed definition of
`
`“viscoelastic rubber-like gels.” Exh. 1018 101:20-102:9, 102:11-13. The ’597
`
`patent describes the same polyacrylamides as the ’944 patent but at greater
`
`concentration and molecular weight, making them more viscous than the ’944
`
`patent's gels. Exh. 1019 ¶ 37. There is no genuine dispute that if the claimed ’329
`
`gels are “rubber-like,” then the gels of the ’944 and ’597 patents also are. Exh.
`
`1019 ¶¶ 42-45; Exh. 1018 153:7-154-15.
`
`
`
`4
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`
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`
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`If the Board should determine that the phrase requires construction, then it
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`means “a mixture containing viscoelastic material formed during polymerization.”
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`Exh. 1019 ¶ 50. As such, the phrase covers a range of materials due to the broad
`
`polymerizing step in claim 1, and the ’329 patent’s description of monomers for
`
`forming trillions of different gel mixtures. See Exh. 1001, 3:23-5:52; Exh. 1018
`
`59:11-60:1.
`
`BASF’s Response also argues that “gelatinous” means “homogeneous” and
`
`never in the form of “particles.” However, Dr. Schork admitted that he was “not
`
`certain” that all gels made under the claims were homogeneous. Exh. 1018 60:3-6.
`
`Dr. Schork admitted on cross exam that he could not find anything in the ’329
`
`patent to support his assertion that the claims were so limited. Id. at 81:14-82:13.
`
`Dr. Schork initially declared that, because the ’329 monomers are in a
`
`homogeneous solution before polymerization, the resulting “gelatinous” reaction
`
`mixture is “mutually soluble” with the reactants and creates a homogeneous mass
`
`having no gel particles. Exh. 2016, ¶ 22. Chemical dictionaries define “gel” as
`
`including particles. See e.g., Exh. 1021; Exh. 1022; Exh. 1023. Dr. Schork later
`
`admitted that an exception to his assertion of “mutual solubility” exists at least
`
`when cross linkers are added (as in claim 4 and optionally in claim 1). Exh. 1018
`
`49:1-50:7.
`
`
`
`5
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`
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`
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`Dr. Schork’s expertise1 is not in gels formed by polymerization as in
`
`the ’329 patent. Dr. Schork was not sufficiently familiar with the described
`
`process to know that polymerization-induced phase separation (“macrosyneresis”)
`
`is common and results in gel particles. Exh. 1018 27:14-17; Exh. 1019 ¶ 25. The
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`technical literature is replete with polymerization in aqueous solution, using the
`
`preferred monomers and initiators of the ’329 patent, resulting in gel particles,
`
`directly contradicting Dr. Schork’s declaration. See, e.g., Exh. 1018 63:3-80:19;
`
`Exh. 1019 ¶¶ 22-24. Dr. Schork admitted on cross that he is “not at all” familiar
`
`with “macrosyneresis;” after viewing rebuttal literature showing formation of gel
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`particles, Dr. Schork could not state whether he was or was not previously familiar
`
`with these concepts. Exh. 1018 80:20-81:1.
`
`III. BASF’S ATTEMPTS TO UNDERMINE THE DISCLOSURES OF
`THE ’944 AND ’597 PRIOR ART ARE UNTENABLE
`
`BASF relies on Dr. Schork’s declaration to argue that the ’944 and ’597
`
`patents did not disclose “rubber-like” gels, but as shown above – the claims as
`
`properly construed are not limited to “rubber-like” gels.
`
`
`1 Neither of BASF’s witnesses is an expert in polymerization of monomers in
`
`aqueous solution or the claimed “gelatinous reaction mixtures,” and both appear to
`
`be biased based on receiving long term funding by BASF. Exh. 1019 ¶ 117; Exh.
`
`1018 13:10-16; Exh. 1017 18:4-22.
`
`
`
`6
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`
`
`
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`Dr. Schork’s conclusion that the ’944 and ’597 polymers are “low viscosity
`
`liquids” is erroneous. The ’944 patent discloses that the “immediate product of
`
`polymerization” is “a clear hydrous gel so viscous as to be self-supporting.” Ex.
`
`1004, 1/21-24. BASF’s Dr. Carson agreed. Exh. 1017 92:11-93:6. Dr. Schork
`
`also admitted that his declaration, that the ’944 polymer was self-supporting “only
`
`after extrusion and after drying,” was “an error.” Exh. 1018 110:2-10. Dr. Schork
`
`also confirmed that such “a self-supporting” gel is “rubber-like” and thus within
`
`the claims. Id. at 101:20-102:9.
`
`Even assuming, arguendo, that the claims require “rubber-like” materials,
`
`then the ’597 and ’944 polymer gels also are rubber-like, because they are “self-
`
`supporting.” Exh. 1018 110:2-10; Exh. 1019 ¶ 44. The ’944 patent explicitly says
`
`so; the ’597 polymer gels are even more viscoelastic due to their greater molecular
`
`weight and concentration. Exh. 1019 ¶ 37.
`
`Experts on both sides agree that the ’944 patent discloses making and
`
`discharging polymer gels from a conically tapered reactor, and the ’597 patent
`
`discloses discharging the same gels by direct inert gas pressure. Exh. 1017 91:7-
`
`11, 229:6-14; Exh. 1007, ¶¶ 68, 120. As agreed on both sides, the ’944 and ’597
`
`patents disclose polyacrylamides having molecular weights of 10,000,000 and
`
`15,000,000, and concentrations of 10% and 25%, while the ’329 patent describes
`
`and claims making and removing these some polymers. Exh. 1007, ¶¶ 117, fn. 1,
`
`
`
`7
`
`
`
`
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`222; Exh. 1018 113:14-114:19, 148:1-4, 148:14-15. The experts agree that these
`
`polymers of the ’944, ’597, and ’329 patents will all have the same viscoelastic
`
`properties. Exh. 1018 153:7-154:15; Exh. 1019 ¶¶ 42-45.
`
`Dr. Schork’s initial “estimates” that the ’597 and ’944 patents discloses only
`
`“low viscosity liquids” are unfounded. Dr. Schork used graphs from Kulicke et al.
`
`and indicated that he “extrapolated.” However, when shown that his estimated
`
`points are significantly off the graphs, Dr. Schork said that he “created a functional
`
`form and then extrapolated” that “form”; but he failed to explain creation of any
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`such “functional form” in his declaration. Exh. 1018 149:15-150:7. His viscosity
`
`estimates are unexplained, unreliable, and inconsistent with the ’944 patent
`
`disclosures of “self-supporting” gels. Exh. 1019 ¶ 62.
`
`Dr. Schork initially asserted that the reactors disclosed in the ’597 examples
`
`are “stirred reactors,” and that one cannot stir “rubber-like” gels. In the ’597
`
`examples, the reactants are stirred prior to polymerization. After stirring, the
`
`mixture is heated, and then polymerized. Ex. 1002, 3/64-69, 4/37-42. Exh. 1019 ¶
`
`71. Dr. Schork then admitted that some gels within the ’329 patent can be stirred.
`
`Exh. 1018 89:6-17.
`
`BASF’s Response (p. 23) argues that the ’597 patent “does not describe or
`
`reference any particular feature of the reactor.” Dr. Carson admitted otherwise,
`
`
`
`8
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`
`
`
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`that the ’597 patent contains examples disclosing D1, D2, and that the gel polymer
`
`was discharged via inert gas pressure. Exh. 1017 229:6-21.
`
`BASF argues that the outlet diameters of the ’597 patent are not D2 at the
`
`end of a conical taper. However, all conically tapered reactors have a D1:D2.
`
`Exh. 1017 205:15-22. When a POSITA combines the conical reactor of the ’944
`
`patent with the ’597 reactor diameters and outlet diameters, the ’597 reactor
`
`diameter is D1 and its outlet diameter is D2 at the end of the conical taper. Exh.
`
`1007 ¶ 235. The ’597 Examples also suggest a conical taper to the POSITA. Exh.
`
`1007 ¶ 136. In addition, Dr. Carson testified that prior art vessels typically had
`
`D1:D2 ranges of 10:1 to 200:1 (Exh. 1017 206:18-22), which significantly
`
`overlaps the claimed range.
`
`IV. BASF’S ASSERTIONS THAT A POSITA WOULD NOT HAVE A
`REASON TO COMBINE ‘944 AND ‘597 WITH A REASONABLE
`EXPECTATION OF SUCCESS ARE BASELESS
`
`BASF’s Response (p. 42) argues that there was no motivation to use a
`
`conical reactor to avoid dead zones allegedly because the ’329 specification uses
`
`pre-mixing, so there is no unmixed dead zone within the reactor. Dr. Carson
`
`admitted that pre-mixing has no impact on dead zones that form after
`
`polymerizing, during the removing step. Exh. 1017 209:20-210:4.
`
`BASF’s Response (p. 3-4, 27) also argues that the removal of polymer gels
`
`“does not implicate ‘dead zones’” based on semantics, i.e., that the term “dead
`
`
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`9
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`
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`zones” only relates to bulk particulate materials in bins. BASF’s experts admitted
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`that “static” or “stagnant regions,” where material is “held up within a reactor
`
`while other material moves” during discharge, also are dead zones, and that the
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`POSITA was motivated to avoid these during reactor design. Exh. 1018 43:17-
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`44:20; 32:5-15; Exh. 1017 214:6-215:18. Dr. Freeman previously testified to that
`
`fact. Dr. Schork attempted to contradict Dr. Freeman, but Dr. Schork later also
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`admitted that the Cunningham prior art (Exh. 1024) “might appear” to be an
`
`example of avoiding dead zones during reactor design. Exh. 1018 43:17-45:1. In
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`direct rebuttal of Dr. Schork’s baseless assertions about dead zones, which
`
`Petitioner could not have previously foreseen, Cunningham discloses a reactor that
`
`was explicitly “tapered to … eliminate stagnant regions.” Exh. 1024, p. 631.
`
`BASF’s Response (p. 29) argues that any assertion of motivation to use a
`
`conical taper to create a gas seal is improper, because it was unknown in the art
`
`that a taper could provide that function. Dr. Freeman’s Declaration previously
`
`explained that a POSITA was motivated to use a tapered reactor to close any gaps
`
`and prevent gas by pass. Dr. Schork admitted that a POSITA would be motivated
`
`to prevent gas bypass and that, if they had information that a taper could prevent
`
`bypass, the POSITA would have been motivated to use a tapered reactor. Exh.
`
`1018 160:17-162:2, 167:20-168:3. While Dr. Schork initially declared that no
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`such information existed in the prior art (id., at 161:16-162:2), when confronted
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`10
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`
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`with the rebuttal ’249 patent disclosing a tapered gel reactor, he refused to admit or
`
`deny that the explicit disclosure of the ’249 patent motivated a POSITA to use a
`
`tapered reactor to prevent bypass through the gel. Id., at 164:2-19; see also, Exh.
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`1007 ¶ 137; Exh. 1025 5:25-33.
`
`BASF’s argument (p. 27) that a POSITA would not have known that a
`
`conical taper could solve “the bypass problem” is based on BASF’s experts’ lack
`
`of background knowledge and could not have been foreseen by Petitioner.
`
`The ’249 patent focuses on that same problem, and discloses that “by tapering” the
`
`reactor “at its lower portion” the gaps are “pushed together or closed,” which
`
`prevents the less viscous pressurized material from passing through the gel. Exh.
`
`1025 5/25-33. In essence, the reactor walls are pulled in to close the gaps.
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`BASF’s ’215 patent also disclosed that “the lower end of the reaction tube
`
`advantageously tapers conically” and, together with inert gas pressure, completely
`
`removed the polymer gel. Exh. 1020 4:2-3, 5:31-35; Exh. 1018 184:4-187:2; Exh.
`
`1001 2:1-4. The conical taper of the ’215 patent effectively overcame gas bypass,
`
`since the gel was discharged “virtually without residue.” Exh. 1001, 2:1-4; Exh.
`
`1017 95:14-96:5.
`
`BASF’s Response (pp. 35-36) argues that the “’329 patent’s solution was
`
`unknown.” BASF’s argument is rebutted by at least the ’249 and ’215 patents,
`
`which Dr. Schork did not deny. In addition, as Dr. Carson admitted, the Jenike
`
`
`
`11
`
`
`
`
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`prior art also teaches steep taper angles when the material to be discharged is to
`
`provide a “seal against gas.” Exh. 1012, 232; Exh. 1017 251:14-252:5.
`
`While BASF’s experts testified that the prior art “as a whole” never
`
`disclosed a conical reactor and inert gas, neither of them had reviewed the admitted
`
`prior art (“APA”) ’215 patent discussed in the ’329 patent. The ’329 patent
`
`describes the ’215 patent, also assigned to BASF, as being “tubular,” but it in fact
`
`discloses that the reactor “advantageously tapers conically.” See Exh. 1001, 2/4;
`
`Exh. 1020 4/2-3. Dr. Schork had reviewed three of the four APA references, but
`
`not the ’215 patent – he only reviewed art that counsel for BASF provided to him.
`
`Exh. 1018 16:10-16. On cross exam, Dr. Schork admitted that the ’215 patent
`
`discloses a conical taper with inert gas pressure. Id. at 181:13-182:3, 179:21-
`
`180:4.
`
`The ’944 patent identifies a co-pending application that “provided” further
`
`“details” (Exh. 1004, 4:42-43) and also rebuts Dr. Schork’s testimony. That
`
`application discloses making the polyacrylamides of the ’944 patent and that the
`
`“rubbery gel is removed from the reactor by … pressure of nitrogen.” Exh. 1026
`
`7/33-36. Dr. Schork admitted that this information from the ’533 patent “might
`
`have” motivated the POSITA to combine the disclosures of ’944 conical reactor
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`and ’597 inert gas patents. Exh. 1018 119:20-4.
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`12
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`Contrary to BASF’s baseless assertions, it is clear from the prior art and
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`BASF’s experts’ admissions that a POSITA was motivated to combine the ’944
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`conical reactor with the ’597 inert gas pressure:
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` to eliminate stagnant regions (dead zones) and fouling;
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` to prevent bypass (gaps or channeling) of the less viscous gas through the
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`gel; and
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` to use a conically tapered polymerization reactor with inert gas because a
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`conical taper was “advantageous” and, together with inert gas pressure,
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`resulted in “highly viscous” polymer gel discharge “virtually without
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`residue” (Exh. 1020).
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`BASF’s Response (pp. 32-33) asserts that “a [POSITA] would have been
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`dissuaded from using inert gas … based on the … gas bypass problem.” However,
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`the art as a whole did not teach away from inert gas, the “conventional” approach
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`(see Exh. 1014, cited by BASF); instead, Drs. Schork and Carson admitted that the
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`art taught away from using a piston. Exh. 1018 187:12-13 (“A [POSITA] was
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`motivated to avoid piston-type systems.”); Exh. 1017 153:19-154:19 (the
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`“hydraulically operated parts” explicitly avoided by the conical/inert gas ’215
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`patent are “pistons”). Assuming that certain “problems” of gas bypass had been
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`associated with inert gas, the prior art contradicted BASF and shows that the
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`13
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`
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`bypass was overcome by tapering. Exh. 1025 5:26-31; Exh. 1020 4:1-3; see, also,
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`Exh. 1012, 232, 255-256.
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`BASF asserts that a POSITA would not have had a reasonable expectation
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`of success with the ’944/’597 combination. As Dr. Carson confirmed, the ’329
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`claims only require removing at least 90% of the gel mixture. Exh. 1017 120:10-
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`14. A high expectation of success is provided by the explicit ’597 disclosure of
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`inert gas and D1:D2 ratios, the broad D1:D2 range of the ’329 claims, which
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`permits the discharge opening to be up to one-half the diameter of the reactor itself,
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`and the prior art directly rebutting Dr. Schork.
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`VI. THE CLAIMED TAPER ANGLES WERE MATTERS OF ROUTINE
`OPTIMIZATION
`
`BASF asserts that when the ’944 and ’597 patents are combined, there still
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`are “significant” differences from the claims. The only difference between the
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`explicit disclosure of the ’944 and ’597 combination and claim 1 is the taper angle
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`of > 45°. While the claim recites >45°-< 90°, the upper limit is inherent in all
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`conical reactors, because at 90° there is no taper. Exh. 1007 ¶¶ 97, 227, 245.
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`While claim 2 recites 65° to 85°, as acknowledged by the experts on both
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`sides angles above 85° were known to be “inappropriate” (Exh. 1017 176:18-
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`177:4), while angles of 70° to 75º (midway between the ’329’s preferred range)
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`were common and expected to succeed. Further, BASF has failed to show any
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`criticality for 65° to 85° (or for > 45°- > 90°).
`14
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`
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`A. Tapering Steeper than 45° was a Known Result-Effective
`Variable and a Matter of Routine Optimization
`
`BASF argues that taper angle was not known to be a result effective variable
`
`and so there would have been no reason to optimize. Dr. Schork admitted,
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`however, that once the concept of a conical reactor was known, then “of course
`
`one would be motivated to optimize the dimensions of that conical reactor.” Exh.
`
`1018 190:13-191:3.
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`As Dr. Carson confirmed, a POSITA understood that at 45°, force from
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`pressure on the gel would have a horizontal component (pushing the gel against the
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`reactor wall) equal to a vertical component (pushing the gel toward the discharge
`
`opening). When the slope is > 45°, now the downward vertical component is
`
`greater than the horizontal component. This is akin to a downhill snow skier
`
`looking at a ski slope -- the steeper the slope, the more readily downhill. Thus,
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`tapers > 45º would have been a known advantage where the desire is to move a
`
`sticky gel downward through the outlet. Exh. 1017 200:14-22. Thus, not only was
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`taper angle a known result-effective variable, but an angle >45° would have been
`
`selected as a matter of routine optimization to facilitate discharge without requiring
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`unnecessary gas pressure, and to reduce or eliminate dead zones. Exh. 1007 ¶¶
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`187, 190. As discussed below, a POSITA would have routinely selected a taper
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`angle significantly > 45°, between 65° – 85°. As Dr. Schork admitted, no data
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`exists showing any critically for the narrower range, or even for 45º versus 44º.
`
`
`
`15
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`
`
`
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`Exh. 1018 204:14-207:18. Claim 2 is therefore obvious for at least the same
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`reasons as claim 1. See In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003); In re
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`Applied Materials, Inc., 1289, 1298-98 (Fed. Cir. 2012).
`
`B.
`
`Selecting a Conical Taper between 65° to 85° Was a Matter of
`Routine Optimization
`
`Dr. Carson admitted that a POSITA knew that a taper > 85° was
`
`“inappropriate” due to unnecessary construction, costs, and ceiling heights. Exh.
`
`1017 176:22-177:4. He admitted that publications referring to “very steep” meant
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`angles of about 80°. Id. at 175:15-177:4. A POSITA would have readily selected
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`an angle < 85° as a matter of routine optimization. Exh. 1007 ¶ 245.
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`BASF’s Response (p. 45) asserts that a POSITA would not have optimized
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`taper angle to avoid dead zones, allegedly because dead zone elimination is not a
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`design criteria for polymerization reactors, but only for bulk particulate materials.
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`However, as shown above, Dr. Schork later testified that a POSITA knew that dead
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`zone elimination was a design criteria for polymer reactors, and that Cunningham
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`provided one example. Therefore, as Dr. Freeman explained in his declaration,
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`angles > 65º also would have been a matter of routine optimization by a POSITA,
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`because these angles reduce or eliminate dead zones. Exh. 1019 ¶ 92.
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`The ’460 patent cited in the Petition provides further rebuttal of BASF’s
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`argument by disclosing a polymer reactor having a “conical portion” with a taper
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`of “preferably 65 – 70 degrees.” The ’460 patent explains: “Due to the slope of the
`
`
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`16
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`
`
`
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`wall the particles readily fall to the apex, that is in the direction of the … opening
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`valve.” Exh. 1003 5/70-72. The 65º-70º angle prevented polymer from
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`“settling … on the steep walls of the cone.” Id., 4/36-43.
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`BASF does not dispute that Jenike also teaches 70º angles for mass flow and
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`avoidance of dead zones, but asserts that Jenike does not deal with gels, or
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`reactors. However, as Dr. Carson confirmed, in the ’329 removing step, the
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`reactor is merely acting as a storage container; the gel is cooled in the reactor and
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`thus in storage until discharge. Exh. 1017 30:2-5; Exh. 1001, 6/63-67. Dr. Carson
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`admitted that Jenike published dead zone studies to the chemical engineering
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`community for reactor design. Exh. 1017 23:11-15, 27:20-7, 25:12-26:16. And
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`Dr. Carson admitted that the particulate solids used in Jenike’s work included wet,
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`agglomerated, cohesive particles, and two-phase systems. Id. at 44:21-46:3,
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`120:15-20. Dr. Carson testified that these particles were as small as 1 micron. Id.
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`at 237:7-12. While BASF’s Response (pp. 13-14) misstates Dr. Freeman as
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`testifying that gel particles “only” appear on a molecular level, Dr. Freeman also
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`explained “macroscopic” gel particles. Exh. 2003 116:19-117:8. Accordingly, a
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`POSITA would readily ascertain many similarities between gels and the wet
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`particulates of Jenike (such as Jenike’s wet clay). Exh. 1017, 146:18-151:18; Exh.
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`1022, 414 (“gels such as clays”). According to Dr. Carson, “many people assumed
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`that 70 degrees is sufficient,” and a POSITA would have been motivated to at least
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`17
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`
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`try a 75º taper (the midpoint of the claim 2 range). Exh. 1017 187:3-9. The
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`testimony of Dr. Carson supports Dr. Freeman’s declaration that it would have
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`been well within the skill of a POSITA to optimize taper angles of a conical
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`reactor, to select angles within the claimed 65º-85º range. See Perfect Web Techs.,
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`Inc. v. InfoUSA Inc., 587 F.3d 1324, 1331 (Fed. Cir. 2009).
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`Similarly, BASF’s own ’215 patent teaches the advantages of a conical taper
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`to avoid funnel flow in reactors making polymer gels. Exh. 1020 4/1-3; Exh. 1017
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`127:17-128:12. BASF’s Response (p. 20) asserts that complete removal also
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`occurs with funnel flow and so there was no motivation to use steep mass flow
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`angles, but this is inconsistent with the sticky nature of the gels and the desire to
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`avoid channeling and dead zones. Dr. Carson testified that most taper angles were
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`about 70° to avoid funnel flow (Exh. 1017 188:3-190:2) and that it was known
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`from Jenike that dead zones and channeling are reduced or eliminated by using a
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`steep conical taper, typically of about 70º (see id. at 175:1-14). Jenike also
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`discloses that mass flow (at angles of about 70º and higher) is preferable for wet,
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`agglomerated, and adhesive materials and that, conversely, in funnel flow, the
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`product is held up within regions of the vessel while other material flows. By
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`selecting angles of 70° or more, dead zones are eliminated and mass flow without
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`channeling is achieved. Exh. 1017 106:4-107:4, 116:3-117:22, 158:5-159:10,
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`175:1-9.
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`18
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`
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`Dr. Carson admitted that Jenike also taught such 70º mass flow taper was
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`recommended when the discharged material needed to provide a “seal against gas.”
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`Exh. 1017 216:22-217:7; Exh. 1012, 232. At the 70° angle facilitating a gas seal,
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`the flow pattern becomes mass flow instead of funnel flow. In funnel flow,
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`channeling can occur. Conversely, in mass flow, when any of the material moves,
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`all of it moves, and thus dead zones and channeling are avoided. Exh. 1017 190:4-
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`14; Exh. 1012, p. 232.
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`C. Claims 6-7 Gas Pressures Were Matters of Routine Optimization
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`BASF’s Response (pp. 51-53) asserts that the combination of inert gas w
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