Paper No. 20
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________________
`
`Owens Corning,
`Petitioner
`
`v.
`
`Fast Felt Corporation,
`Patent Owner
`
`Patent No. 8,137,757
`Issued: March 20, 2012
`Filed: February 12, 2010
`Inventors: David Allan Collins, George William Jackson
`and Miguel E. Madero O’Brien
`
`Title: PRINT METHODOLOGY FOR APPLYING POLYMER MATERIALS TO
`ROOFING MATERIALS TO FORM NAIL TABS
`OR REINFORCING STRIPS
`
`_____________________________
`
`Inter Partes Review No. IPR2015-00650
`
`PETITIONER’S REPLY UNDER 37 C.F.R. 42.23
`
`___________________________________________________________
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`Introduction......................................................................................................1
`I.
`II. Asphalt Saturated Substrates (Or Similar) Cannot Be Used To Distinguish
`The Prior Art Because No Such Limitation Is Recited In The Claims......................3
`A. Asphalt Saturated Substrates Are Not Recited In The
`Claims......................................................................................................4
`B. Asphalt Saturated Substrates Are Not New And Are
`Indisputably Disclosed by Lassiter (Ex. 1003) .......................................5
`C. The ‘757 Patent (Ex. 1001) Prints Nail Tabs On
`Unsaturated Substrates ............................................................................5
`D. Lassiter (Ex. 1003) Also Prints Nails Tabs On Unsaturated
`Substrates.................................................................................................6
`E. The ‘757 Patent (Ex. 1001) Also Discloses Printing Nail
`Tabs On Building Cover Materials For Stud Walls................................6
`The Proposed Combinations Cannot Be Distinguished On The Basis The
`III.
`Explicit Content Of The Secondary References Prevents Their Bodily
`Incorporation Into The Structure Of Lassiter ............................................................7
`A. Hefele, Bayer And Eaton Are Not Relyed On For The
`Explicit Teaching Of An Open Polymer Supply.....................................7
`B. Hot Asphalt Environment Is Not A Limitation Of The
`Claims......................................................................................................8
`Patent Owner Ignores Lassiter (Ex. 1003) Is Not Limited
`To A Hot Asphalt Environment ..............................................................8
`D. Lassiter (Ex. 1003) Discloses Building Cover Materials
`Having Unsaturated Substrates (i.e., No Hot Asphalt
`Environment)...........................................................................................9
`Patent Owner Ignores Lassiter (Ex. 1003) Discloses A
`Closed Polymer Supply And There Is No Need To Rely
`On Hefele, Bayer Or Eaton .....................................................................9
`F. Hefele (Ex. 1004) Is Not Relied On For The Temperature
`Relationship Between Rolls ....................................................................9
`IV. None Of The References Teach Away From the Proposed Combinations...10
`
`C.
`
`E.
`
`i
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`

`
`A. Bayer’s (Ex. 1004) Prosecution History Does Not Teach
`Away from Using Gravure-Based Systems For Depositing
`Polymer Tabs.........................................................................................11
`B. Eaton’s (Ex. 1005) Specification Does Not Teach Away
`from Using Gravure-Based Systems For Depositing
`Polymer Tabs.........................................................................................13
`C. Lassiter (Ex. 1003) Does Not Teach Away from Using
`Gravure-Based Systems For Depositing Polymer Tabs On
`Asphalt...................................................................................................14
`Patentability Cannot Be Shown By Attacking References Individually When
`V.
`A Combination Is Relied Upon................................................................................16
`A. Nail Tab Limitations Not Recited In The Claims Are Not
`Germane To Patentability......................................................................16
`B. The Unrecited Nail Tab Limitations Are All Taught By
`Lassiter (Ex. 1003) ................................................................................17
`Paper Is A Category Of Building Cover Material.........................................18
`VI.
`VII. Patent Owner Concedes Hefele and Bayer Disclose Pressure Bonding and
`Pressure Adhering....................................................................................................20
`VIII. Claims 1 and 7 Are Obvious..........................................................................20
`IX. Claim 6 Is Obvious As Proposed In the Petition...........................................21
`X.
`The ‘757 Patent Is Clearly Directed To Printing Technology.......................22
`XI. XI. Patent Owner’s Experts Should Be Given Little To No Weight ...........24
`XII. Conclusion .....................................................................................................25
`
`ii
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`

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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`I.
`
`Introduction
`
`Patent Owner’s Response completely misses the mark. There is no dispute
`
`the prior art teaches polymers can be printed by a variety of methods and on a
`
`variety of substrates or surfaces. There is also no dispute the prior art teaches
`
`polymers can be printed interchangeably via nozzles or via rolls (including a
`
`transfer or lamination roll) on a variety of substrates--including roofing or building
`
`cover materials. These roll-based systems are commonly referred to as gravure and
`
`offset printing and are old and well-known. There is also no dispute gravure or
`
`offset printing methods offer many advantages, e.g., ability to print on a wide
`
`range of substrates (including difficult surfaces) and with high quality and speed.
`
`Faced with overwhelming evidence of unpatentability, Patent Owner argues
`
`limitations not recited in the claims. These include “heavily asphalt coated
`
`substrates,” “asphalt saturated felt,” “heavy asphalt coating” and other related
`
`terms. Further yet, Patent Owner attacks the individual secondary references as not
`
`being able make “nail” tabs or nail tabs of proper “thickness,” “volume,” and
`
`reinforcing function including nail “pullout” and “pull-through” function. None of
`
`these arguments have merit because unclaimed limitations are not germane to
`
`patentability and, even if claimed, these limitations are all old and taught by the
`
`prior art of record (i.e., Lassiter (Ex. 1003)). Still further, the arguments based on
`
`asphalt saturated substrates are contradicted by the ‘757 Patent (Ex. 1001), which
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`discloses nail tabs can be printed on unsaturated/uncoated substrates (i.e., “roofing
`
`material prior to its saturation or coating ...” (7:24-32)).
`
`Patent Owner further argues the explicit content of Hefele, Bayer, and Eaton
`
`prevents their bodily incorporation into the structure of the Lassiter (Ex. 1003).
`
`However, the law does not require “the inventions of the references be physically
`
`combinable to render obvious the invention under review.” In re Sneed, 710 F.2d
`
`1544, 1550 (Fed. Cir. 1983). Rather, the Supreme Court has held the obviousness
`
`analysis should not be confined to “the explicit content of issued patents” because
`
`that improperly makes the obviousness analysis too rigid and limiting. KSR v.
`
`Teleflex, 550 U.S. 398, 402 (2007). One of ordinary skill is not an automaton who
`
`is relegated to only incorporating the explicit content of the prior art, but rather, is
`
`a person of ordinary skill and creativity who would consider the prior art for its
`
`technical teaching and not just its explicit content. See KSR, 550 U.S. at 416, 421;
`
`EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985).
`
`Patent Owner further attempts misdirection by arguing the prior art’s
`
`disclosure of specific embodiments teaches away from the claims. For example,
`
`Patent Owner argues Lassiter’s (Ex. 1003) nozzle-based system teaches away from
`
`a gravure-based system because nozzles are non-contact and gravure is contact.
`
`However, the law is clear that the mere disclosure of preferred embodiments in the
`
`prior art is not a teaching away. In re Mouttet, 686 F. 3d 1322 (Fed. Cir. 2012).
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`Patent Owner also wholly ignores that Allman (Ex. 1006) discloses that nozzle and
`
`gravure-based systems are interchangeable techniques for depositing polymers on
`
`roofing and building cover materials. (See also, Ex. 1021, Bohan Dep., 57:14-22
`
`(Patent Owner’s printing expert confirming nozzle (or ink jet) and gravure-based
`
`systems can print on building cover materials such as “wallpaper”)).
`
`Lastly, Patent Owner incredibly argues the ‘757 Patent is not directed to
`
`printing and, therefore, one of ordinary skill in the art need not have knowledge of
`
`printing. This argument too misses the mark. The ‘757 Patent (Ex. 1001) is titled
`
`“Print Methodology for Applying Polymer Materials to Roofing Materials to Form
`
`Nail Tabs ...” (emphasis added). The Summary of the Invention states “The
`
`invention is to the print method, ...” and the word “print” is used over 100 times in
`
`the ‘757 Patent, including in the description of every apparatus disclosed therein
`
`(emphasis added). Patent Owner does not deny any of these facts--nor can it. (See
`
`Ex. 1021, Bohan Dep., 75:14-80:24 (Patent Owner’s printing expert confirming all
`
`embodiments employ printing)).
`
`II. Asphalt Saturated Substrates Cannot Be Used To Distinguish The Prior
`Art Because No Such Limitation Is Recited In The Claims
`
`Throughout, Patent Owner argues patentability based on limitations such as,
`
`for example, “heavily asphalt coated substrates,” “asphalt saturated felt,” or “heavy
`
`asphalt coating.” However, none of these limitations are recited in the claims
`
`under review or any other claims of the ‘757 Patent (Ex. 1001). Moreover, even if
`
`3
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`recited, none of these limitations are novel and all are expressly disclosed in
`
`Lassiter (Ex. 1003). Patent Owner further ignores that the ‘757 Patent discloses
`
`building cover materials for other than roofing--e.g., those for covering stud walls.
`
`A.
`
`Asphalt Saturated Substrates Are Not Recited In The Claims
`
`Contrary to Patent Owner’s assertions, none of the claims of the ‘757 Patent
`
`recite any type of saturated or coated substrate. Independent claim 1 merely recites
`
`depositing tab material “onto the surface” of the roofing or building cover material.
`
`(Ex. 1001, 13:16-17). Likewise, independent claim 7 merely recites depositing nail
`
`tab material “on said roofing or building cover material.” (Id. at 14:12-13).
`
`Nowhere do the claims recite any limitations requiring deposition of tab material
`
`onto a saturated substrate such as “heavily asphalt coated substrates,” “asphalt
`
`saturated felt,” or “heavy asphalt coating.” This was confirmed by both of Patent
`
`Owner’s experts, who admitted that none of these limitations are recited in the
`
`asserted claims. (See, Ex. 1021, Bohan Dep., 71:13-72:12, Ex. 1022, Todd Dep.
`
`16:21-17:11). The law is clear that limitations not recited in the claims are not
`
`germane to patentability. (See MPEP §2145). Moreover, Patent Owner asserts no
`
`interpretation of any claim terms is necessary. (Resp., p. 19).1
`
`
`1 Notably, Patent Owner’s expert further conceded that if the asserted claims were
`
`limited to asphalt saturated substrates, a closed polymer supply would be required
`
`4
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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` B. Asphalt Saturated Substrates Are Not New And Are Indisputably
`Disclosed by Lassiter (Ex. 1003)
`
`Even if such limitations were recited in the claims, none are novel and all are
`
`shown in Lassiter. Lassiter (Ex. 1003) states “a suitable liquid thermoplastic-based
`
`or other material is deposited on the rapidly moving saturated felt using
`
`appropriately positioned nozzles” (3:32-35) (emphasis added). This was confirmed
`
`by Patent Owner’s expert. (Ex. 1021, Bohan Dep., 112:7-11 (admitting Lassiter’s
`
`nail tabs adhere to the surface of an asphalt saturated substrate). Therefore,
`
`assuming aguendo that such limitations were recited in the claims, they are
`
`disclosed by Lassiter.
`
` C. The ‘757 Patent (Ex. 1001) Prints Nail Tabs On Unsaturated
`Substrates
`
`With regard to what types of surfaces of roofing or building cover materials
`
`can be printed on, the ‘757 Patent discloses nail tab material can be deposited on
`
`saturated or unsaturated substrates. The ‘757 Patent (Ex. 1001) states the roofing
`
`material can comprise “a base substrate or a saturated or coated material” onto
`
`which nail tab material is deposited (4:41-45) (emphasis added). (See also, 3:64-67
`
`and 7:26-32, disclosing the same). Moreover, the ‘757 Patent further discloses the
`
`claimed invention can be employed “at any point during the manufacture ...
`
`for system operability. However, Patent Owner’s expert confirmed no such closed
`
`polymer supply is claimed. (Ex. 1021, Bohan Dep., 92:14-93:6, 109:16-110:20).
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`5
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`including immediately before or after the dipping of the substrate roofing material
`
`into the asphalt” (6:65-7:3) (emphasis added). Hence, the ‘757 Patent expressly
`
`discloses nail tab material can be deposited on roofing material that includes
`
`unsaturated substrates, and Patent Owner’s arguments to the contrary are incorrect.
`
` D. Lassiter (Ex. 1003) Also Prints Nails Tabs On Unsaturated
`Substrates
`
`Depositing nail tabs on unsaturated saturated substrates is also not new.
`
`Lassiter (Ex. 1003) discloses depositing nail tab material on unsaturated building
`
`cover materials such as “siding materials used for wrapping the side of a framed
`
`house or other structure prior to securing the finish siding” (2:57-62). One specific
`
`example of unsaturated building cover materials disclosed by Lassiter is “covering
`
`sheets or boards” such as “styrofoam board sheathing” for covering the walls of a
`
`building (7:25-8:2). Patent Owner does not dispute this fact.
`
`E.
`
`The ‘757 Patent (Ex. 1001) Also Discloses Printing Nail Tabs On
`Building Cover Materials For Stud Walls
`
`Similar to Lassiter (Ex. 1003), the ‘757 Patent (Ex. 1001) states the
`
`“invention relates generally to roofing materials or other building materials
`
`normally employed as cover materials for a wood roof deck or stud wall” (1:29-31)
`
`(emphasis added). Therefore, Patent Owner’s arguments that the “roofing or
`
`building cover material” is limited to a roofing material is contradicted by the ‘757
`
`Patent’s disclosure that building cover materials include those for a “stud wall.”
`
`6
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`III. The Proposed Combinations Cannot Be Distinguished On The Basis
`The Explicit Content Of The Secondary References Prevents Their
`Bodily Incorporation Into The Structure Of Lassiter
`
`Patent Owner argues throughout the explicit content of the secondary
`
`references (Hefele, Bayer and Eaton) prevents their bodily incorporation into the
`
`structure of the primary reference, Lassiter (Ex. 1003), because the physical
`
`combinations would allegedly be non-functional. However, the law does not
`
`require “the inventions of the references be physically combinable to render
`
`obvious the invention under review.” In re Sneed, 710 F.2d 1544; KSR, 550 U.S.
`
`398. Still further, one of ordinary skill is not an automaton who is relegated to only
`
`incorporating the explicit content of the prior art, but rather, is a person of ordinary
`
`skill and creativity who would consider the prior art for its technology teaching and
`
`not just its explicit content. See KSR, 550 U.S. at 416, 421; EWP Corp., 755 F.2d
`
`898. As described below, Patent Owner’s arguments lack merit.
`
`A.
`
`Hefele, Bayer And Eaton Are Not Relied On For The Explicit
`Teaching Of An Open Polymer Supply
`
`Patent Owner argues the open polymer supply arrangement of Hefele, Bayer
`
`and Eaton would be rendered non-functional if incorporated into Lassiter because a
`
`hot asphalt environment would contaminate an open polymer supply. (See
`
`Response at pp. 32, 42, and 47 et seq.) This argument lacks merit because it
`
`relegates Hefele, Bayer and Eaton to their explicit content (i.e., open polymer
`
`supply) while ignoring their broader teaching that polymer tabs can be deposited
`
`7
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`using gravure-based or offset roll systems. The proposed rejections are not based
`
`on an open polymer supply but on Hefele, Bayer, and Eaton’s broader technology
`
`teaching that gravure-based methods can deposit polymer tabs on a wide range of
`
`substrates. Nowhere does Patent Owner dispute this broader technical teaching.
`
`Moreover, the claims do not recite a polymer supply of any type (Ex. 1001).
`
`B.
`
`Hot Asphalt Environment Or Contamination Is Not A Limitation
`Of The Claims
`
`Patent Owner’s arguments that a hot asphalt environment or asphalt-related
`
`contamination somehow distinguishes the prior art ignores that the claims do not
`
`recite such limitations (See p. 3 et seq. discussing the absence of “asphalt” in claim
`
`language and 5 et seq. discussing the ‘757 Patent disclosure of printing on
`
`unsaturated substrates). It is well-settled limitations not recited in the claims are
`
`not germane to patentability. (See MPEP §2145).
`
`C.
`
`Patent Owner Ignores Lassiter (Ex. 1003) Is Not Limited To A
`Hot Asphalt Environment
`
`Even if the explicit content of an open polymer supply was considered,
`
`Patent Owner’s arguments still lack merit because Lassiter’s nail tab production is
`
`not limited to a hot asphalt environment. It includes saturated substrates that have
`
`been cooled by a variety of possible ways, including a cool ambient environment
`
`before they enter the nail tab production area. In this regard, Lassiter (Ex. 1003)
`
`discloses the asphalt “treatment area 14” is separate from the “nail tab production
`
`8
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`area 18” (5:9-12). Lassiter also discloses the saturated substrate is cooled before it
`
`enters nail tab production area 18 via a “water cooled chill roll 16” or other “means
`
`for cooling the saturated felt” including a “long distance in a cool ambient
`
`environment.” (Id., 4:60-65). Therefore, Patent Owner’s arguments are wrong that
`
`Lassiter is limited to a hot asphalt environment that would allegedly contaminate.
`
`D.
`
`Lassiter (Ex. 1003) Discloses Building Cover Materials Having
`Unsaturated Substrates (i.e., No Hot Asphalt Environment)
`
`Patent Owner’s arguments are also belied by the fact that Lassiter (Ex. 1003)
`
`discloses forming nail tabs on unsaturated substrates, such as “styrofoam board
`
`sheathing” for wrapping the sides of a house (7:25-8:2). Lassiter discloses such
`
`substrates need only be run through nail production area 18, thereby eliminating
`
`the need for an asphalt treatment area and any alleged contamination. (Id.)
`
`E.
`
`Patent Owner Ignores Lassiter (Ex. 1003) Discloses A Closed
`Polymer Supply And There Is No Need To Rely On Hefele, Bayer
`Or Eaton
`
`Patent Owner also ignores Lassiter (Ex. 1003) discloses a closed polymer
`
`supply system in the form of a pressurized tank and pump 28 (6:37-40). Hence,
`
`even if hot asphalt contamination of a polymer supply was a concern, Lassiter
`
`already discloses a closed polymer supply system. Therefore, there would be no
`
`need to rely on the explicit teachings of Hefele, Bayer or Eaton in this regard.
`
`F.
`
`Hefele (Ex. 1004) Is Not Relied On For The Temperature
`Relationship Between Rolls
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`9
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`Patent Owner argues the temperature associated with Hefele’s rolls is not
`
`compatible with the “high temperature of the heavily asphalt coated web” of
`
`Lassiter. (Resp., pp. 33-35). This argument lacks merit because neither “high
`
`temperature” nor “heavily asphalt coated web” are recited in the claims. (See p. 3
`
`et seq. discussing the absence of “asphalt” in claim language and 5 et seq.
`
`discussing the ‘757 Patent disclosure of printing on unsaturated substrates; Ex.
`
`1021, Bohan Dep., 126:19-25 (admitting temperature is not a limitation of the
`
`asserted claims)). It also lacks merit because Lassiter is not limited to printing nail
`
`tabs on hot asphalt, but instead also includes saturated substrates that are cooled
`
`and unsaturated substrates. (See, p. 8 et seq. discussing the same).
`
`Patent Owner’s argument further lacks merit because it relegates Hefele to
`
`its explicit content instead of its technology teaching. The proposed combination
`
`does not rely upon Hefele’s explicit disclosure of the temperature associated with
`
`its rolls, but instead on its technology teaching that polymer tabs can be deposited
`
`via gravure and offset rollers on a wide variety of substrates. (Institution, Paper
`
`No. 9, pp. 8-9). Nowhere does Patent Owner dispute this technology teaching and
`
`Patent Owner’s printing expert concedes Hefele discloses offset gravure printing
`
`(Ex. 1021, Bohan Dep., 115:3-116:1).
`
`IV. None Of The References Teach Away From the Proposed Combinations
`
`Patent Owner’s entire teaching away argument is flawed because it is based
`
`10
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`on “asphalt” saturated substrates--which are not a limitation of the claims. (Resp.
`
`at pp. 38 and 45 et seq., respectively). Specifically, the claims under review do not
`
`recite depositing polymer on any type of “asphalt” saturated substrate. (See p. 3 et
`
`seq. discussing the absence of “asphalt” in claim language and 5 et seq. discussing
`
`the ‘757 Patent disclosure of printing on unsaturated substrates). Moreover, the
`
`primary reference Lassiter is not limited to “asphalt” saturated substrates. Lassiter
`
`(Ex. 1003) also discloses nail tabs can be also deposited on cooled (as opposed to
`
`hot) asphalt substrates and unsaturated substrates of building cover materials like
`
`“styrofoam board sheathing” used to cover the walls of buildings (see, p. 8 et seq.
`
`and p. 9 et seq. discussing the same).
`
`Even if “asphalt” saturated substrates were a limitation of the claims, Patent
`
`Owner’s teaching away arguments still miss the mark. The law states that disclosed
`
`examples and preferred embodiments do not constitute a teaching away. In re Susi,
`
`440 F.2d 442 (CCPA 1971). In order for a teaching away to exist, the prior art
`
`must criticize, discredit, or otherwise indicate the undesirability of a particular
`
`solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). None of the
`
`references criticize, discredit, or otherwise indicate the undesirability of a solution
`
`that substitutes gravure-based and offset systems for depositing polymer tabs as
`
`shown in Hefele, Bayer, and Eaton for the nozzle-based system shown in Lassiter.
`
`A.
`
`Bayer’s (Ex. 1007) Prosecution History Does Not Teach Away
`from Using Gravure-Based Systems For Depositing Polymer Tabs
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`11
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`Patent Owner relies on a prosecution history statement by Bayer asserting
`
`that prior art disclosing “asphalt and hardboard plywood” was non-analogous art to
`
`Bayer’s then pending claims.2 (Resp., p. 39 and Ex. 2023, p. 72). Such a statement
`
`does not criticize, discredit, or otherwise indicate the undesirability of a solution
`
`that interchanges nozzle-based printing (i.e., Lassiter) with offset printing using a
`
`transfer or lamination roll (i.e., Bayer). Indeed, Bayer cannot teach away from a
`
`solution it expressly discloses--i.e., depositing polymer tabs using an offset
`
`printing process. (See, Ex. 1007, Fig. 4). A teaching away will not be read into a
`
`reference where no such language exists. DyStar Textilfarben GmbH & Co. v. CH
`
`Patrick Co., 464 F. 3d 1356, 1364 (Fed. Cir. 2006).
`
`Patent Owner’s argument also ignores the ‘757 Patent claims do not recite
`
`depositing polymer on “asphalt” saturated substrates. (See p. 3 et seq. discussing
`
`the absence of “asphalt” in claim language and 5 et seq. discussing the ‘757 Patent
`
`disclosure of printing on unsaturated substrates). Patent Owner’s argument further
`
`ignores the primary reference Lassiter is also not limited to “asphalt” saturated
`
`substrates, but includes unsaturated substrates like “styrofoam board sheathing”
`
`
`2 The prosecution history statement relied upon is not directed to Fig. 4 of Bayer
`
`(Ex. 1007), which is described as “prior art” and is one of the bases for
`
`obviousness. (Paper No. 1, pp. 36-39).
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`12
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`used to cover the walls of buildings (see also, p. 9 et seq. discussing the same).
`
`Hence, Patent Owner’s argument that Bayer teaches away from the proposed
`
`combination with Lassiter is not well-taken.
`
`B.
`
`Eaton’s (Ex. 1005) Specification Does Not Teach Away from
`Using Gravure-Based Systems For Depositing Polymer Tabs
`
`Patent Owner’s reliance on Eaton for teaching away from being combined
`
`with Lassiter also misses the mark. (Resp. at p. 45 et seq.). Patent Owner asserts
`
`Eaton teaches away from “heavy coated asphalt substrates” (such as those
`
`disclosed in Lassiter) because Eaton allegedly discloses the substrates must “not
`
`melt, soften, or otherwise disintegrate” when a molten thermoplastic composition
`
`is applied. (Id.) However, nowhere does Eaton specifically disclose “asphalt”
`
`saturated substrates would suffer from these effects. To the contrary, Eaton (Ex.
`
`1005) discloses a broad range of substrates for its gravure-based method including
`
`“woven material, nonwoven material, knit material, paper, film, or any other
`
`continuous media that can be fed through a nip point” (6:28-33) (emphasis added).
`
`Additionally, Eaton cannot teach away from a solution that it expressly discloses--
`
`i.e., depositing thermoplastic polymer tabs using a gravure-based system on a wide
`
`range of substrates. (Institution, Paper No. 9, pp. 20-22). A teaching away will not
`
`be read into a reference where no such language exists. DyStar, 464 F. 3d 1356.
`
`Contrary to Patent Owner’s teaching away assertions, Lassiter (Ex. 1003)
`
`already discloses depositing molten thermoplastic on asphalt saturated substrates to
`
`13
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`predictably make roofing or building cover materials (5:19-24). Therefore, there is
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`no support for the argument that Eaton teaches away from being combined with
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`Lassiter on the basis of “asphalt” saturated substrates disintegrating when used
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`with molten thermoplastic polymer material because this is exactly what Lassiter
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`does. Furthermore, as described above, the claims do not recite “asphalt” saturated
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`substrates (see, p. 3 et seq.), the ‘757 Patent specification is not limited to printing
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`on saturated substrates but also includes unsaturated substrates (see, p. 5 et seq.)
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`and Lassiter is similarly not limited to depositing nail tabs on saturated substrates,
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`but also includes unsaturated substrates (see, p. 9 et seq.) Therefore, Patent
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`Owner’s arguments that Eaton teaches away from a combination with Lassiter are
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`not supported.
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`C.
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`Lassiter (Ex. 1003) Does Not Teach Away from Using Gravure-
`Based Systems For Depositing Polymer Tabs On Asphalt
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`Patent Owner’s teaching away arguments with respect to Lassiter are all
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`faulty because they misconstrue Lassiter’s plain disclosure and misapply the law of
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`teaching away. Patent Owner argues Lassiter teaches away from using a contact-
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`based system like gravure for depositing polymer nail tabs on saturated substrates
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`because the high temperatures of asphalt saturation and the use of rolls could “melt
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`the tab material, scrape off the tabs, or cause other problems.” (Resp., p. 49 et
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`seq.) Patent Owner’s arguments miss the mark for several reasons.
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`First, Lassiter (Ex. 1003) already discloses the tab material is molten (i.e.,
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`“heated to a liquid state) at the time of deposition and deposited on a cooled
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`saturated (or unsaturated) substrate (see, p. 9 et seq.) Hence, the high temperatures
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`of asphalt saturation Patent Owner complains of are not necessarily present in
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`Lassiter’s deposition technique and therefore Lassiter cannot teach away from
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`using a gravure-based system on this basis.
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`Second, Patent Owner’s argument regarding possible scraping off of the tabs
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`also misses the mark because that disclosure in Lassiter (Ex. 1003) is made in
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`regard to after the nail tab material has already been deposited (see, 6:4-9
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`describing the possible scraping action in the context of after nail tab production
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`area 18 and in the final winding stage of product production). Nowhere does
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`Lassiter criticize, discredit, or otherwise indicate the undesirability of using a
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`gravure-based system in nail tab production area 18. Notably, the PTO asserted
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`during original prosecution of the claims that it would be obvious to modify
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`Lassiter to substitute a pressure-gravure roller arrangement for the nozzles to
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`deposit polymeric material (Ex. 1002, p. 102).
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`Finally, it is undisputed the gravure-based and offset roll systems of Hefele,
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`Bayer, and Eaton deposit polymer tab material and, therefore, it makes no sense to
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`describe such systems as potentially scraping off tab material (see, Ex. 1012,
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`Levenson, ¶ 12, describing these gravure and offset systems as depositing polymer
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`material.) A teaching away will not be read into a reference where no such
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`IPR2015-00650 Petitioner’s Reply Brief
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`Paper No. 20
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`language exists. DyStar, 464 F. 3d 1356. Therefore, Lassiter does not teach away
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`from using gravure-based systems in the nail tab production area 18 and Patent
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`Owner’s arguments otherwise are unsupported.
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`V.
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`Patentability Cannot Be Shown By Attacking References Individually
`When A Combination Is Relied Upon
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`Patent Owner incorrectly attacks Hefele, Bayer and Eaton as being
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`individually deficient as allegedly not being able to make nail tabs. (Resp., p. 31 et
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`seq., p. 39 et seq., and p, 46, respectively). Patent Owner’s bases this argument on
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`limitations not recited in the claims, such as nail tab “thickness,” “volume,”
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`“shape,” “visibility,” “reinforcement,” “pullout,” “pull-through,” etc. However,
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`Patent Owner ignores the proposed rejections are based on a combination with
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`Lassiter (Ex. 1003). Even if the alleged limitations were recited, Lassiter discloses
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`each and every one and there is no need to rely on Hefele, Bayer, and Eaton for
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`such teachings. Non-obviousness cannot be shown by attacking individual
`
`references in a combination. In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck
`
`& Co., Inc., 800 F.2d 1091, (Fed. Cir. 1986). See also MPEP §2145.
`
`A.
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`Nail Tab Limitations Not Recited In The Claims Are Not
`Germane To Patentability
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`Independent claim 1 contains a single reference to “nail tabs”: “depositing
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`tab material onto the surface of said roofing or building cover material at a
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`plurality of nail tabs from a lamination roll ....” (Ex. 1001, 13:16-20) (emphasis
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`16
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`IPR2015-00650 Petitioner’s Reply Brief
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`added). Independent claim 7 contains three references to “nail tab material” and
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`one reference to “nail tabs”: (1) “first depositing nail tab material at a plurality of
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`locations ...”; (2) “said nail tab material is substantially made of a polymeric
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`material, ...”; and (3) “subsequently pressure adhering said nail tab material into
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`nail tabs ....” (Id., 14:11-17) (emphasis added).
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`The claims do not recite nail tab “thickness,” “volume,” “shape,”
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`“visibility,” “reinforcement,” “pullout” or “pull-through,” “burst strength,” “tear
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`resistance,” or “rupture strength” as limitations. (See, Ex. 1021, Bohan Dep.,
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`124:6-127:6 and Ex. 1022, Todd Dep., 25:20-26:18 (conceding none of these
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`limitations are claimed)). The law states limitations not recited in the claims are
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`not germane to patentability (See MPEP §2145). Further, Patent Owner asserts no
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`interpretation of any claim terms is necessary. (Resp., p. 19). Hence, Patent
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`Owner’s arguments that patentability can be based on these unrecited l