UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Owens Coming,
`Petitioner
`V.
`Fast Felt Corporation,
`Patent Owner
`
`Inter Parkes Review No. IPR2015-00650
`
`Declaration of Harvey R. Levenson Regarding
`U.S. Patent No. 8,137,757
`
`Petitioner - Owens Corning
`Ex. 1014, p. 1 of 66
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Owens Coming,
`Petitioner
`V.
`Fast Felt Corporation,
`Patent Owner
`
`Inter Parkes Review No. IPR2015-00650
`
`Declaration of Harvey R. Levenson Regarding
`U.S. Patent No. 8,137,757
`
`Petitioner - Owens Corning
`Ex. 1014, p. 1 of 66
`
`
`
`I, Harvey R. Levenson, do hereby declare and state, that all statements made
`
`herein of my own knowledge are true and that all statements made on information
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`and belief are believed to be true; and further that these statements were made with
`
`the knowledge that willful false statements and the like so made are punishable by
`
`tine or imprisonment. or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Dated:
`
`Harvey R. Levenson
`
`Petitioner Owens Corning
`Ex. 1014, p. 2 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`I have been retained by counsel for Petitioner Owens Coming
`
`Corporation ("Owens Corning") as an expert witness in the above-captioned
`
`proceedings. I have been asked to render an opinion regarding the validity of the
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`claims of U.S. Patent No. 8,137,757 ("the '757 Patent"). (Ex. 1001).
`
`I have been in the graphic communication industry for 53 years,
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`including my higher education. I hold four degrees in printing and communication
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`including a Ph.D. in Rhetoric and Communication from the University of
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`Pittsburgh, a M.S. degree in Printing Management from South Dakota State
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`University, a B.S. degree in Printing from the Rochester Institute of Technology,
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`and an A.A.S. degree in Graphic Arts and Advertising Technology from New York
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`City College of Technology.
`
`3.
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`I am Professor Emeritus and founder and immediate past Director of
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`the Graphic Communication Institute at Cal Poly in San Luis Obispo, California.
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`The Institute focuses on industry research, testing, product evaluations, consulting,
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`training, seminars, workshops, conferences, and publishing.
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`4.
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`From 1983 — 2013, I served as a tenured Full Professor and
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`Department Head of Graphic Communication at Cal Poly. My teaching and
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`research specialties are printing and publishing, technology, communication,
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`media, digital imaging, intellectual property, and research methods.
`
`1
`
`Petitioner - Owens Corning
`Ex. 1014, p. 3 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`5.
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`Prior to joining Cal Poly in 1983, I founded and chaired the Division
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`of Graphics, Design, and Communication at La Roche College in Pittsburgh,
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`Pennsylvania before which I was Associate Director of Technical Services for the
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`Graphic Arts Technical Foundation, also in Pittsburgh.
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`6. Over the years, I actively served on committees and boards of many
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`graphic arts organizations including the Graphic Arts Technical Foundation, the
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`Technical Association of the Graphic Arts, Electronic Document Systems
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`Foundation, the Graphic Arts Literacy Alliance, and I am past President of the
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`Accrediting Council for Collegiate Graphic Communications. I was also elected to
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`the Graphic Arts Technical Foundation (now Printing Industries of America)
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`Society of Fellows. For my work in education and industry, I received many
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`awards and accolades, which are listed in my full curriculum vitae attached hereto
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`as Attachment A hereto.
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`7.
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`I am an active researcher, consultant, expert witness and speaker on
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`matters related to printing, technology, graphic arts patents, copyrights, trade
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`secrets, media, and communication, and authored many articles and books on these
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`subjects, which are further described in Attachment A,
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`8.
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`I am not an employee of Owens Corning. I am being compensated for
`
`my time and analysis and reimbursed for any travel expenses. My compensation is
`
`Petitioner - Owens Corning
`Ex. 1014, p. 4 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`not contingent on the outcome of this proceeding or the specifics of my testimony.
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`My compensation does not impact my opinions.
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`9.
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`I believe I possess at least an ordinary level of skill in printing
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`technology.
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`10.
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`I have reviewed U.S. Patent No. 8,137,757 (the '757 Patent) (Ex.
`
`1001) and its U.S. Patent and Trademark Office prosecution history (Ex. 1002).
`
`11.
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`I have also reviewed the following references in connection with this
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`declaration:
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
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`1008).
`
`U.S. Patent No. 6,451,409 ("Lassiter") (Ex. 1003).
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`U.S. Patent No. 5,101,759 ("Hefele") (Ex. 1004).
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`U.S. Patent No. 6,875,710 ("Eaton") (Ex. 1005).
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`PCT Intl Pub. WO 00/71834 ("Allman") (Ex. 1006).
`
`U.S. Patent No. 5,597,618 ("Bayer") (Ex. 1007).
`
`U.S. Patent Publication No. 2004/0178544 ("Jackson") (Ex.
`
`g. U.S. Patent No. 4,755,545 ("Lalwani") (Ex. 1009).
`
`h.
`
`U.S. Patent No. 5,365,709 ("Lassiter II") (Ex. 1010).
`
`Gravure Process and Technology (1991), Gravure Education
`
`Foundation and Gravure Association of America ("Gravure Process") (Ex. 1011).
`
`3
`
`Petitioner - Owens Corning
`Ex. 1014, p. 5 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`J•
`
`The GATF Encyclopedia of Graphic Communication (1998),
`
`Roman and Roman, Graphic Art Technical Foundation ("GATF Encyclopedia")
`
`(Ex. 1012).
`
`k. (cid:9)
`
`1. (cid:9)
`
`PCT Int'l Pub. WO 98/06891 Al ("Halley") (Ex. 1013).
`
`PCT Int'l Pub. WO 01/62491 ("Dagher") (Ex. 1020).
`
`m. (cid:9)
`
`The references listed in Attachment B hereto.
`
`12.
`
`It my understanding that the level of ordinary skill in the art also is
`
`reflected in the disclosure of the prior art references above. The scope and content
`
`of the prior art indicates one of ordinary skill would be familiar with various
`
`methods of printing polymer on various substrates and for various purposes (see
`
`generally Lassiter, Hefele, Bayer, Eaton, Allman, Jackson and Lalwani). The prior
`
`art further indicates that one of ordinary skill would understand that various types
`
`of polymers can be printed using these methods (see generally Lassiter, Hefele,
`
`Eaton). It also indicates one of ordinary skill would be aware that various methods
`
`of printing polymer are interchangeable and provide for predictable results (see
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`generally Bayer, Allman and Lalwani).
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`13. The scope and content of the prior art further indicates one of ordinary
`
`skill in the art would possess at least a bachelor's degree with knowledge of
`
`various printing methods and several years of industry experience in the printing
`
`field.
`
`4
`
`Petitioner - Owens Corning
`Ex. 1014, p.6 of 66
`
`(cid:9)
`
`
`Declaration of Harvey R. Levenson
`
`14.
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`I may rely upon these materials in paragraph 11 and/or additional
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`materials to rebut arguments raised by the Patent Owner. Further, I may also
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`consider additional documents and information in forming any necessary opinions,
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`including documents that I may not yet have reviewed and documents that have not
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`yet been provided to me.
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`15. My analysis of the materials relating to this proceeding is ongoing,
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`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions based on new information and on my
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`continuing analysis of the materials referred to herein and listed in Paragraph 11.
`
`A. (cid:9)
`
`The '757 Patent, It Prosecution History, and Claim Construction
`
`16. The '757 Patent is titled "Print Methodology For Applying Polymer
`
`Materials To Roofing Materials To Form Nail Tabs Or Reinforcing Strips." The
`
``757 Patent discloses gravure and offset based methods for printing polymer nail
`
`tabs on roofing or building cover materials. Independent claim 1 describes a
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`method of treating a roofing or building cover material that requires depositing
`
`viscous tab material from a "lamination roll" onto the surface of the roofing or
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`building cover material and bonding the tab material by pressure between the
`
`lamination roll and the surface of the roofing or building cover material.
`
`Independent claim 7 describes a method of treating a roofing or building cover
`
`5
`
`Petitioner - Owens Corning
`Ex. 1014, p. 7 of 66
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`
`
`Declaration of Harvey R. Levenson
`
`material that requires "first depositing" viscous nail tab material onto the surface of
`
`the roofing or building cover material and then "subsequently pressure adhering"
`
`the nail tab material into nail tabs with a pressure roll. (Ex. 1001).
`
`17.
`
`Independent claim 1 of the '757 Patent was allowed because the
`
`Examiner found that neither Lassiter nor Halley disclosed a "lamination roll." (See,
`
`e.g., Ex. 1002, 12/28/10 Office Action, p. 6).
`
`18. The Examiner found Fig. 6 of Halley teaches a process in which
`
`polymeric material is applied to a substrate under the pressure of a pressure roller
`
`28 and a gravure roller 30. (Ex. 1002, 12/28/10 Office Action, p. 5).
`
`19.
`
`Independent claim 7 was initially rejected as being obvious in view of
`
`the combination of Lassiter and Halley. The Examiner found "it would have been
`
`obvious to one skilled in the art to modify the process of Lassiter to substitute for
`
`the nozzles, a pressure-gravure roller arrangement like that of Halley, in order to
`
`apply the polymeric coating material. One skilled in the art would have been
`
`motivated to do so by the desire and expectation of successfully applying the
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`polymeric material to form integral nail tabs in a desired pattern on the substrate."
`
`(Id., p. 5) Significantly, the Examiner noted that "it is clear that any means, known
`
`in the art, for depositing the polymer that could achieve the same result could be
`
`successfully substituted." (Id., p. 4). 1 agree with that statement.
`
`6
`
`Petitioner - Owens Corning
`Ex. 1014, p. 8 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`20.
`
`In response, Patent Owner argued that Lassiter's disclosure of a
`
`grooved wheel that allowed nail tabs to pass "without being subject to possible
`
`scraping action" indicated no pressure step would be desirable. (Ex. 1002,
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`06/06/11 Response to Office Action, p. 7).
`
`21.
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`In this regard, I note that Lassiter simply states that "[t]he grooves in
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`grooved wheel 32 permit the tabs to pass through without being subject to possible
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`scraping action." (Ex. 1003, 6:5-7). No mention of pressure is made--just scraping.
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`22. Patent Owner amended claim 7 by adding "first" to the depositing
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`step and "subsequently" to the pressure adhering step. Patent Owner argued there
`
`is no teaching in either Lassiter or Halley "to apply the nail tab material first, and
`
`then subsequently pressure adhere it to the substrate with a roller." (Ex. 1002,
`
`06/06/11 Response to Office Action, pp. 4-5 & 7).
`
`23. Based on the amendment, the Examiner withdrew the Lassiter/Halley
`
`rejection and stated the "prior art neither teaches nor suggests post-deposition
`
`adhering and shaping on the roofing or building cover material." (Ex. 1002,
`
`08/09/11 Office Action, p. 3).
`
`24. Hefele, Bayer, Eaton and Dagher were not before the Examiner during
`
`prosecution of the '757 Patent and are not duplicative of the disclosure of Halley.
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`For example, Hefele, Bayer, and Eaton each disclose tab material being deposited
`
`from a lamination roll. By way of further example, Hefele, Eaton and Dagher also
`
`7
`
`Petitioner - Owens Corning
`Ex. 1014, p. 9 of 66
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`
`
`Declaration of Harvey R. Levenson
`
`disclose subsequently pressure adhering tab material to a substrate with a pressure
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`roll.
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`25. (cid:9) Claim 1 of the '757 Patent recites: "depositing tab material onto the
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`surface of said roofing or building cover material ... from a lamination roll."
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`Applying the USPTO's standard, the phrase "lamination roll" should be construed
`
`according to its broadest reasonable interpretation ("BRI") (37 C.F.R. § 42.100(b)).
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`The claim language requires the "lamination roll" to be the structure "from" which
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`the tab material is deposited. (Ex. 1001). This is consistent with the Examiner's
`
`reference to "transfer" in connection with "lamination roll."' (Ex. 1002, 12/28/10
`
`Office Action, p. 6, 8/9/11 Office Action, p. 5). The claim language further
`
`requires the "the tab material bonding ... by pressure between said roll and said
`
`surface." (Ex. 1001, 13:18-20). Thus, the "lamination roll" must also apply
`
`"pressure" to bond the tab material to the surface of the roofing or building cover
`
`material. The phrase "lamination roll" is only used in the Abstract of the '757
`
`Patent. Hence, under the USPTO's BRI standard, the claim 1 language requires the
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`"lamination roll" to be the structure "from" which the tab material is deposited and
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`The Examiner's precise reference was to "transfer substrate" in
`
`its Reasons for
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`Allowance. (See, e.g., Ex. 1002, 12/28/10 Office Action, p. 6).
`
`However, that
`
`phrase is not used anywhere in the '757 Patent.
`
`8
`
`Petitioner - Owens Corning
`Ex. 1014, p. 10 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`which applies "pressure" to bond the tab material to the surface of the roofing or
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`building cover material.
`
`26. Claim 7 of the '757 Patent recites: "subsequentiv pressure adhering
`
`said nail tab material into nail tabs on said roofing or building cover material with
`
`a pressure roll." Applying the USPTO's standard, the term "subsequently" should
`
`be construed according to its broadest reasonable interpretation ("BR1") (37 C.F.R.
`
`§ 42.100(b)). The claim language requires "first depositing" nail tab material and
`
`"subsequently" pressure adhering the nail tab material. (Ex. 1001).Thus, the words
`
`of the claim require "subsequently" to mean after "first depositing." Consistent
`
`herewith, the word "subsequently" was added to the claim in order to distinguish
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`the prior art, which allegedly only taught "conventional gravure pressure being
`
`applied at or near the time of deposition." (Ex. 1002, 06/06/11 Response to Office
`
`Action, p. 7). Thus, under the USPTO's BRI standard, the claim 7 language
`
`requires "subsequently" pressure adhering to mean after first depositing the tab
`
`material on the roofing material.
`
`B. (cid:9)
`
`Background of Gravure and Offset Printing
`
`27. Gravure printing using rolls or cylinders has been known since the
`
`late 1700's where it was used to print patterns on textiles and, since then, on a
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`broad range of substrates, (Ex. 1011, Gravure Process, p. 3, 15). Gravure printing
`
`has four basic components: an engraved (gravure) cylinder, an ink fountain, a
`
`9
`
`Petitioner - Owens Corning
`Ex. 1014, p. 11 of 66
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`
`
`Declaration of Harvey R. Levenson
`
`doctor blade, and an impression cylinder. (Id.,
`
`p. 3 and p. 100; Ex. 1012, p. 361 (basic gravure
`
`Dam/ Saltialf
`Oladd
`
`shown at right). (See also, Ex. 1008, Figs. 15 &
`
`16, 11[0126]40135] & [0139]-[0140]
`
`(disclosing gravure printing of thermoplastic tabs on web structures)).
`
`The grautare printing unit.
`
`28.
`
`In the figure above, which is illustrative of the gravure printing
`
`process, the "gravure cylinder" carries the image to be printed or transferred. (Ex.
`
`1011, p. 99). The "ink fountain" is an ink well positioned to provide the gravure
`
`cylinder with ink to be printed. (Id.). The "doctor blade" wipes excess ink from the
`
`non-image areas of the gravure cylinder. (Id.). The "impression roller" holds the
`
`substrate against the gravure cylinder to obtain proper transfer of the image. (Id.).
`
`29. Offset printing (or "indirect gravure") uses one additional component:
`
`"a transfer roll[er]" or lamination roll. (Ex. 1011, p. 117; Ex. 1012, p. 365). Instead
`
`of printing direct/1i from the etched print cylinder onto the substrate material, offset
`
`printing methods print the image from the print cylinder onto a transfer roller and
`
`the "transfer roller is then used to print the image on the product." (Ex. 1011, p.
`
`117; see also, Ex. 1012, p. 365)
`
`30. Gravure and offset based printing has endured for over a hundred
`
`years due to its benefits and is widely used today in many industries.
`
`10
`
`Petitioner - Owens Corning
`Ex. 1014, p. 12 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`C. (cid:9)
`Claims 1, 2, 4, 6, and 7 of the '757 Patent Are Obvious in View of
`Lassiter in Combination with Hefele
`
`31. With regards to the preamble of claim 1 of the '757 Patent, Lassiter
`
`discloses a method of making a roofing or building cover material, which
`
`comprises treating an extended length of substrate, such as a "saturated felt
`
`material 17," "tar paper," "siding sheet materials," or "styrofoam board sheathing."
`
`(Ex. 1003, Fig. 1, 4:50-6:15 & 7:25-42). Thus, the preamble is disclosed in
`
`Lassiter.
`
`32. Hefele also discloses treating an extended length of substrate in the
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`form of "a material web 8" that can include "foils, papers, and foam materials."
`
`(Ex. 1004, Fig. 1, 3:2-3 & 3:18-4:5). Paper is a form of recognized roofing or
`
`building cover material. (Ex. 1003, 1:25-28 & 3:24-25 (specifically noting "paper"
`
`as a roofing or building cover material).
`
`33. With regards to the first step of claim 1 of the '757 Patent, Fig 1 of
`
`Lassiter discloses depositing liquid polymer tab material onto the surface of a
`
`roofing or building cover material 17 via nozzles 26 at a plurality of nail tabs 29a,
`
`29b, ... 29x. (Ex. 1003, Fig. 1, Abstract, 3:31-34 & 37-42, 4:50-6:15, & claims 1 &
`
`8).
`
`11
`
`Petitioner - Owens Corning
`Ex. 1014, p. 13 of 66
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`
`
`Declaration of Harvey R. Levenson
`
`MICRO—
`PROCESSOR
`
`29b
`
`29E
`
`Lassiter Fig. 1
`
`34. Hefele discloses a polymer printing method that deposits polymer
`
`material from a transfer or lamination roll onto webs that cannot be printed on or
`
`only printed on with difficulty by prior methods. (Ex. 1004, Fig. 1, 2:63-68 & 3:1-
`
`3).
`
`35. Fig. 1 of Hefele discloses a lamination roll in the form of "heat roller
`
`5" positioned between "a gravure roller 1" and a "material web 8."
`
`12
`
`Petitioner - Owens Corning
`Ex. 1014, p. 14 of 66
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`
`
`Declaration of Harvey R. Levenson
`
`Hefele Fig. 1
`
`Hefele discloses that roller 5 includes "a rubber coating 6" that receives polymeric
`
`tab material 7 transferred from gravure roller I. Hefele further discloses that roll 5
`
`then deposits (or transfers) the polymeric material 7 to the material web 8. (Ex.
`
`1004, 3:18-60). Hence, Hefele discloses use of a lamination roll from which
`
`polymer tabs are deposited onto a substrate as lamination roll 5 presses against web
`
`8 to apply the tab material 7 to web 8. (Id., Ex. 1004, 1:66-2:7 and 2:14-16).
`
`36. Hefele further discloses that the polymeric materials can include
`
`copolyesters, copolyamides, polyethylenes, and their mixtures. (Ex. 1004, 2:49-
`
`51). All of these materials are polymers.
`
`13
`
`Petitioner - Owens Corning
`Ex. 1014, p. 15 of 66
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`
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`Declaration of Harvey R. Levenson
`
`37. With regards to the second step of claim 1 of the '757 Patent, Lassiter
`
`specifically discloses that the nail tab material "bonds and solidifies to the surface
`
`of the saturated felt ...." (Ex. 1003, 5:19-5:52 & claims 1 & 8):
`
`38. Hefele discloses in connection with Fig. 1 that pressure between the
`
`lamination/heated roller 5 and the surface of the web material 8 is used to bond the
`
`polymeric tab material 7 to the web 8. (Ex. 1004, Fig. 1, 1:66-2:16, 2:39-52, 3:46-
`
`4:5 & claims 1 & 2). Hefele discloses as a result of the "pressure of the material
`
`web 8 [i.e., surface] against the heating roller 5 [i.e., lamination roll] and its
`
`previous winding with the material web," the polymeric material 7 transfers and
`
`bonds to the web 8 where it forms tabs 10. (Id., 3:56-4:2). Winding material web 8
`
`around roll 5 as shown in Fig. 1 generates pressure between lamination roll 5 and
`
`the surface of web 8 that bonds the polymer tab material 7 to the web 8.
`
`39. Therefore, the combination of Lassiter and Hefele discloses each and
`
`every limitation of claim 1.
`
`40.
`
`It would have been obvious for one of ordinary skill in the art to
`
`modify the nozzle-based method of Lassiter to instead include the offset method of
`
`Hefele that uses a lamination roll. Hefele discloses that an advantage of the offset
`
`gravure method using a lamination roll is that a wide variety of surface structures
`
`can be printed on or coated, even those which "cannot be coated or can only be
`
`coated with difficulty in the direct coating method." (Id., 2:62-3:3). One of
`
`14
`
`Petitioner - Owens Corning
`Ex. 1014, p. 16 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`ordinary skill in the art would certainly be aware of such an advantage which
`
`would allow Lassiter to print nail tabs on a wider range of substrates in predictable
`
`manner. (See, Ex. 1011, Gravure Printing, p. 117 also describing offset gravure
`
`printing as being particularly advantageous for printing on difficult or irregular
`
`surfaces).
`
`41. One of ordinary skill in the art would also be aware of other
`
`advantages offered by gravure and offset printing including simplicity in
`
`components and operation, ability to be automated, high print quality, high printing
`
`speeds, and ability to be combined with other processes. (See, Ex. 1011, Gravure
`
`Process, pp. 3, 99, & 103), Hefele discloses the advantages of such an
`
`arrangement include that it eliminates the need for additional structures and
`
`expense. (Ex. 1004, Abstract & 1:23-65).
`
`42. One of ordinary skill in the art would also be aware of the
`
`interchangeability of nozzle and gravure systems for depositing polymers based on
`
`Allman, which refers to nozzle-based depositing and gravure-based depositing as
`
`alternative embodiments for accomplishing the same result. (Ex. 1006, Figs. la &
`
`2, pp. 12-13). 1 generally concur with Allman's disclosure of interchangeability.
`
`The prior art further discloses that it was known to print polymeric tab material on
`
`the surface of a shingle sheet using a print wheel. (Ex. 1009, Fig. 1 & 4:5-1 l& 17-
`
`20). This is consistent with the Examiner's holding it would be obvious to modify
`
`15
`
`Petitioner - Owens Corning
`Ex. 1014, p. 17 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`Lassiter to substitute the nozzles with a pressure-gravure roller arrangement. (Ex.
`
`1002, 12/28/10 Office Action, p. 4).
`
`43. Further, such a combination is a simple substitution of one well-
`
`known polymer deposition technique for another to obtain predictable results. That
`
`is, both Lassiter and Hefele are directed to applying polymer tab material to a
`
`substrate such as paper. One of ordinary skill would have known Hefele's offset
`
`gravure method using a lamination roll could be used with Lassiter's thermoplastic
`
`liquid polymer nail tab material. This is because Hefele's polymers in powder form
`
`exhibit similar behavior to liquid polymers when used in gravure based printing
`
`systems. The gravure process using powder or liquid is identical for applying the
`
`image to the substrate (i.e., applying powder or liquid to the print cylinder,
`
`removing powder or liquid from the non-image areas of the print cylinder by a
`
`doctor blade, applying pressure to the print cylinder to transfer the powder or
`
`liquid to the substrate).
`
`44.
`
`It is also a combination of prior art elements according to known
`
`methods to obtain predictable results. Depositing polymer tab material using a
`
`transfer or lamination roll as disclosed by Hefele is old and well-known (i.e.,
`
`gravure and "offset") and, hence, well understood to provide predictable results.
`
`The combination further uses a known technique to improve a similar method and
`
`would be obvious to try with a reasonable expectation of success. Depositing
`
`16
`
`Petitioner - Owens Corning
`Ex. 1014, p. 18 of 66
`
`
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`Declaration of Harvey R. Levenson
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`polymer tab material with a transfer or lamination roll as disclosed by Hefele is
`
`one of a finite number of known ways to successfully and reliably print polymer.
`
`45. Therefore, claim 1 of the '757 Patent is obvious in view of Lassiter
`
`and Hefele.
`
`46. Claim 2 of the '757 Patent states "wherein said tab material is
`
`substantially a polymer material." Lassiter discloses the tab material includes a
`
`thermoplastic-based polymeric material. (Ex. 1003, 5:19-38). Thus, Lassiter
`
`already discloses this claim limitation.
`
`47. Hefele discloses the tab material includes copolyesters, copolyamides
`
`and polyethylenes, which are substantially polymeric materials. (Ex. 1004, 2:49-
`
`5 1).
`
`48. Claim 4 of the '757 Patent states "wherein said nail tabs are formed in
`
`a continuous strip." Lassiter discloses the nail tabs can be formed in a continuous
`
`strip, such as a "rectangle or other shape." (Ex. 1003, 6:45-54). Rectangles are one
`
`form of a continuous strip in that they are narrow and comparatively long and
`
`uninterrupted in geometry. In connection with the shape disclosure, Lassiter
`
`indicates that the length "e" of a nail tab can vary in accordance with the nozzle
`
`"on" time relative to the speed of the moving substrate. (Id.) One of ordinary skill
`
`would recognize this disclosure means a continuous nozzle "on" time would
`
`17
`
`Petitioner - Owens Corning
`Ex. 1014, p. 19 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`provide a continuous strip and not an intermittent pattern. Hence, Lassiter already
`
`discloses a "continuous strip."
`
`49. Hefele discloses its offset roll-based printing method can print shapes
`
`in "punctiform, in bar form or in linear form." (Ex. 1004, 3:60-62). One of
`
`ordinary skill would recognize "bar form" or "linear form" are continuous strips
`
`because these shapes are relatively long and uninterrupted. Grid printing of bar or
`
`linear shapes can also be continuous. Moreover, one of ordinary skill would
`
`recognize a "linear foini" as disclosed in Hefele can be a continuous line of
`
`polymer tab material extending along the length of a substrate. (See also, Ex. 1005,
`
`Fig. 15 (see right) & 18:56-59 (disclosing
`
`"line" 614 of thermoplastic material along the
`
`longitudinal length of substrate 610) and Ex.
`
`1010, 3:29-33 and Fig. 4 (disclosing and
`
`n
`
`FAG, is
`
`illustrating continuous nail strips 23 on roofing material 22)). Hence, Hefele also
`
`discloses continuous strips.
`
`50. Furthermore, the '757 Patent discloses the nail tabs can be discrete or
`
`continuous and no criticality is disclosed with respect to these alternatives. (Ex.
`
`1001, 3:64-4:5). As such, from these prior art disclosures of bar form, linear form,
`
`and continuous lines and strips and the lack of criticality identified in the '757
`
`18
`
`Petitioner - Owens Corning
`Ex. 1014, p. 20 of 66
`
`(cid:9)
`
`
`Declaration of Harvey R. Levenson
`
`Patent, one of ordinary skill would understand the shape of the nail tabs as being a
`
`routine matter of design choice that includes continuous strips.
`
`51. Claim 6 adds the following limitation to the method of claim 1:
`
`"wherein said tab material is pre-formed before contact with said lamination roll."
`
`Lassiter discloses the nail tab shapes are pre-formed by the nozzle's configuration
`
`and in the microprocessor's control logic (i.e., control of nozzle "on" time). (Ex.
`
`1003, 5:65-6:1; Figs. 3 & 4 showing different nozzle shapes).
`
`52. Hefele discloses the tab material is pre-formed before contact with the
`
`lamination roll 5 by the "cup-shaped" depressions 2 of the gravure roll 1. (Ex.
`
`1004, Fig. 1, 1:66-2:7, 3:18-45, 3:63-4:5 & claims 1 & 8). The geometry of those
`
`depressions gives fonn to the shape and volume of the tab material. (Id., 3:62-4:2).
`
`Pre-forming of tab material as disclosed by Hefele is one way of applying polymer
`
`material to the lamination roll. Hence, Hefele already discloses this pre-forming
`
`limitation. It has already been shown above relative claim 1 that it would be
`
`obvious to modify Lassiter to substitute the nozzles with Hefele's pressure-gravure
`
`roller arrangement that already includes pre-forming of tab material as claimed.
`
`53. With regards to the preamble of claim 7 of the '757 Patent, Lassiter
`
`discloses a method of making a roofing or building cover material, including
`
`"saturated felt material 17," "tar paper," "siding sheet materials," or "styrofoam
`
`board sheathing." (Ex. 1003, Fig. 1, 4:50-6:15 & 7:25-42). Thus, the preamble is
`
`19
`
`Petitioner - Owens Corning
`Ex. 1014, p. 21 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`disclosed in Lassiter. Hefele also discloses a method of making a substrate in the
`
`form of "a material web 8" that can include "foils, papers, and foam materials."
`
`(Ex. 1004, Fig. 1, 3:2-3 & 3:18-4:5). Paper is a recognized form of roofing or
`
`building cover material. (Ex. 1003, 1:25-28 (specifically noting "paper" as a
`
`roofing or building cover material).
`
`54. With regards to the first step of claim 7 of the '757 Patent, Lassiter
`
`discloses first depositing a liquid polymer nail tab material at a plurality of
`
`locations on the roofing material or building cover material 17 via nozzles 26 to
`
`form nail tabs 29a, 29b, ... 29x. The claimed plurality of locations are those where
`
`nail tabs 29a, 29b, ... and 29x have been deposited on the roofing material 17. (Id.,
`
`Fig. 1, Abstract, 3:31-34 & 37-42, 4:50-6:15, & claims 1 & 8). Lassiter further
`
`discloses the tab material includes a thermoplastic-based polymeric material. (Id.,
`
`5:19-38). Hence, Lassiter discloses this claim element.
`
`55. Hefele also discloses polymeric material 7 first deposited at a plurality
`
`of positions onto the surface of web 8 at an early point of rotation of roll 5. (Ex.
`
`1004, Fig. 1, 3:46-60). Hefele discloses the tab material includes a material that is
`
`substantially a polymeric material. (Id. at 2:49-51)
`
`56. With regards to the second step of claim 7 of the '757 Patent, Hefele
`
`provides that as rotation continues, the polymeric material 7 is then subsequently
`
`pressure adhered to the web material 8 by a nip foamed between rolls 5 and 9.
`
`20
`
`Petitioner - Owens Corning
`Ex. 1014, p. 22 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`Hefele Fig. 1
`
`(Id., 3:49-53 "heating roller 5 and an associated further roller 9 which is so
`
`arranged that it presses the material web 8 only slightly against the heating roller
`
`5") (see also 2:39-45). As shown in Fig. 1 of Hefele, as roll 5 rotates, polymer tab
`
`material 7 comes into contact with web 8 thereby first depositing the tap material 7
`
`on the web 8. (Id., Fig. 1, 3:46-60). After deposition, the roll 5 continues to rotate
`
`and the polymeric material 7 is then subsequently pressure adhered to the web
`
`material 8 by a nip formed between roll 5 and pressure roll 9. (Id., Fig. 1, 2:39-45
`
`and 3:46-60). Pressing roller 9 against roller 5 generates pressure. Hefele further
`
`discloses "flattening" of the tabs 10 during this subsequent pressure adhering
`
`process. (Id., 2:43-45). Thus, Hefele discloses this claim element.
`
`21
`
`Petitioner - Owens Corning
`Ex. 1014, p. 23 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`57. Therefore, the combination of assiter and Hefele discloses each and
`
`every limitation of claim 7.
`
`58.
`
`It would have been obvious for one of ordinary skill in the art to
`
`modify nozzle-based method of Lassiter to instead include the gravure roller
`
`arrangement of Hefele and its subsequent pressure adhering step using a pressure
`
`roll. Hefele discloses that an advantage of the offset gravure method using a
`
`transfer or lamination roll is that a wide variety of surface structures can be printed
`
`on or coated, even those which "cannot be coated or can only be coated with
`
`difficulty in the direct coating method." (Id., 2:62-3:3). One of ordinary skill in the
`
`art would certainly be aware of such an advantage which would allow Lassiter to
`
`print nail tabs on a wider range of substrates in predictable manner. (Ex. 1011,
`
`Gravure Printing, p. 117 also describing offset gravure printing as being
`
`particularly advantageous for printing on difficult or irregular surfaces)
`
`59. One of ordinary skill in the art would also be aware of other
`
`advantages offered by gravure and offset based printing including simplicity in
`
`components and operation, ability to be automated, high print quality, high printing
`
`speeds, and ability to be combined with other processes. (Id., Gravure Process, pp.
`
`3, 99, & 103). Hefele discloses the advantages of such an arrangement include that
`
`it eliminates the need for additional structures and expense. (Ex. 1004, Abstract &
`
`1:23-65). This is consistent with the Examiner's holding it would be obvious to
`
`7?
`
`Petitioner - Owens Corning
`Ex. 1014, p. 24 of 66
`
`
`
`Declaration of Harvey R. Levenson
`
`modify Lassiter to substitute the nozzles with a pressure-gravure roller
`
`arrangement. (Ex. 1002, 12/28/10 Office Action, p. 4).
`
`60. As discussed above in connection with claim 1, such a combination is
`
`a simple subs
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