Patent Owner’s Preliminary Response
`IPR2015-00650
`
`UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OWENS CORNING,
`Petitioner
`
`v.
`
`FAST FELT CORPORATION,
`Patent Owner
`
`
`
`Case IPR2015-00650
`U.S. Patent No. 8,137,757
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`MAIL STOP “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`IPR2015-00650
`
`UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`OWENS CORNING,
`Petitioner
`
`v.
`
`FAST FELT CORPORATION,
`Patent Owner
`
`
`
`Case IPR2015-00650
`U.S. Patent No. 8,137,757
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`MAIL STOP “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-145
`
`
`
`
`
`Patent Owner’s Preliminary Response
`IPR2015-00650
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................. 1
`
`
`II. THE PRIMARY REFERENCE OF LASSITER USED FOR OBVIOUSNESS
`IN THREE OF THE FOUR ALLEGED INVALIDITY GROUNDS (1, 2,
`AND 4) EXPRESSLY TEACHES AWAY FROM THE TWO
`INDEPENDENT CLAIMS ................................................................................ 5
`
`
`III. THE SECONDARY REFERENCES IN THREE OF FOUR ALLEGED
`INVALIDITY GROUNDS
`(1, 2, AND 4) DO NOT PROVIDE
`MOTIVATION TO COMBINE ANY OF THEM WITH LASSITER AND
`DO NOT PROVIDE PERTINENT ELEMENTS ............................................12
`
`
`IV. THE PETITION SHOULD BE DENIED WITH RESPECT TO REMAINING
`GROUND (3) AS DAGHER DOES NOT DEPOSIT NAIL TAB MATERIAL
`ON ROOFING OR BUILDING COVER MATERIAL AS REQUIRED BY
`CLAIM 7 ..........................................................................................................14
`
`
`V. THE PETITION IGNORES SECONDARY CONSIDERATIONS OF NON-
`OBVIOUSNESS ..............................................................................................18
`
`
`VI. THREE OF THE FOUR ALLEGED INVALIDITY GROUNDS WERE
`COVERED IN THE ORIGINAL PROSECUTION ........................................19
`
`
`VII. TRIAL SHOULD NOT BE INSTITUTED ON CUMULATIVE GROUNDS
` ..........................................................................................................................20
`
`
`VIII. CONCLUSION ...........................................................................................21
`
`
`
`
`
`i
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`Patent Owner’s Preliminary Response
`IPR2015-00650
`
`Patent Owner Fast Felt Corporation provides this preliminary response to
`
`Petitioner Owens Corning’s petition for inter partes review of Claims 1, 2, 4, 6,
`
`and 7 of U.S. Patent No. 8,137,757 (‘757 patent) (Ex. 1001) in accordance with 37
`
`C.F.R. § 2.107(a).
`
`I.
`
`INTRODUCTION
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`The groundbreaking claimed methods of the ‘757 patent pertain to methods
`
`of making a roofing or building cover material. Advantageously, the claimed
`
`methods result in a high wind resistance rating such that the roofing or building
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`cover materials are governmentally approved for use in hurricane prone counties of
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`Florida. (Ex. 2001, Miami-Dade Notice of Acceptance). In fact, during the
`
`approval process third-party engineers reported consistently better performance of
`
`Patent Owner’s products than what was considered the industry’s toughest
`
`regulatory standard at the time. (See e.g., Ex. 2002, Exterior Research & Design
`
`Lab Report). Because the product resulting from the claims is so beneficial
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`Petitioner attempts to invalidate the instant claims. However, in its petition
`
`Petitioner covers
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`the same obviousness grounds from
`
`the original PTO
`
`examination using a primary reference that expressly teaches away from both
`
`independent claims, adds inapposite and redundant secondary references, and
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`alleges a reference somehow anticipates Claim 7 even though the reference does
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`not even pertain to the claimed “roofing or building cover material”.
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`1
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`Independent Claims 1 and 7 of the ‘757 patent are directed to methods of
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`“making a roofing or building cover material” that require either (1) “depositing
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`tab material …from a lamination roll” (Claim 1) or (2) “first depositing nail tab
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`material” and then “pressure adhering said nail tab material into nail tabs on said
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`roofing or building cover material with a pressure roll.” (Claim 7). In contrast to
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`the two independent claims of the ‘757 patent, the Petitioner’s primary reference:
`
`Lassiter, which is employed in 3 of 4 alleged invalidity grounds of the petition,
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`fundamentally teaches away from these claims. Specifically, Lassiter expressly
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`requires deposition by spraying and teaches away1 from any pressure or rollers
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`because as Lassiter states:
`
`“the rollers used tend to either melt the adhesive glue, melt the tab
`
`material itself, scrape off the tabs, or a combination of all three, any of
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`which renders the resulting saturated felt material unreliable, if not
`
`unsuited, for commercial use.” (Ex. 1003, col., 2, lines 35-40).
`
`Thus, the spray deposition from a nozzle system of Petitioner’s primary reference
`
`of Lassiter expressly teaches away from the instant independent claims that require
`
`some roller, as well as pressure or pressure adhering. Lassiter’s disclosure
`
`
`1 A prior art reference must be considered in its entirety, i.e. as a whole, including
`portions that would lead away from the claimed invention. W. L. Gore & Assoc.,
`Inc. v. Garlock, Inc. 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied,
`469 U.S. 851 (1984).
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`
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`2
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`affirmatively criticizes, discredits, or otherwise discourages the solutions claimed
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`by the ‘757 patent. (In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146
`
`(Fed. Cir. 2004)). The skilled artisan would therefore be led directly away from
`
`even looking to the secondary references suggested by Petitioner. This is
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`especially true, given (a) the significant technological difficulties depositing or
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`printing a polymer onto, for example, a heavily asphalt coated surface versus a
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`clean surface of paper or fabric substrates of Petitioner’s cited secondary
`
`references, and (b) Patent Owner’s results of a stronger nail tab from the use of a
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`pressure roll.
`
`The secondary references suggested by Petitioner all relate to printing or
`
`deposition on paper or other related surfaces via rollers. Rollers and pressure are
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`precisely what the primary reference of Lassiter says will be unreliable and
`
`unsuitable for depositing polymer on a roofing or building cover material.
`
`Moreover, the secondary references do not teach, suggest, or even mention
`
`depositing polymer on any roofing or building cover material and do not remotely
`
`suggest even the most common roofing cover material which is typically an asphalt
`
`coated surface. Petitioner attempts to justify its reliance on these references by
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`illogically stating a number of times that paper is somehow a roofing or building
`
`cover material. Of course, as explained below this is not what the references state
`
`and it defies both logic and common sense that paper would be employed to cover
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`3
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`a roof or a building. As if this alone is not enough to deny the petition, the three
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`alleged obviousness grounds by Petitioner mirror rejections that Patent Owner
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`overcame in prosecution in that they all rely on the same primary reference of
`
`Lassiter that teaches away from the claims and that would simply not be
`
`combinable with the secondary references.
`
`The only anticipation ground alleged by Petitioner relies on the Dagher
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`reference as anticipating only Claim 7. However, as explained in detail below
`
`Dagher does not disclose depositing nail tab material on a roofing or building
`
`cover material as required by the claims. Instead, Dagher relates to “reinforcement
`
`strips of fiber reinforced polymer material” incorporated onto “a wood sheathing
`
`panel.” (Ex. 1020, abst.). Dagher describes that these panels are simply the roof
`
`structure itself as opposed to any “roofing or building cover material” as required
`
`by the claims stating, “The cutaway also shows that the roof 16 is comprised of
`
`roof diaphragms 28 (the wood panels). The roof 16 is covered with an exterior
`
`roof covering in the form of shingles 30.” (Ex. 1020, abst.). Thus, Dagher does
`
`not and cannot anticipate.
`
`In addition to missing elements and not anticipating, the Dagher reference is
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`not germane to obviousness because it is far removed from being reasonably
`
`pertinent to the problem faced by the ‘757 patent inventors. (In re Bigio, 381 F.3d
`
`1320, 1325, 72 USPG2d 1209, 1212 (Fed. Cir. 2004)). Dagher does not suggest
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`4
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`the use of any coated surface and pressure rollers, but instead, employs clean-
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`surfaced wood structural roof panels onto which “reinforcement strips of fiber
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`reinforced polymer material” are deposited and trapped air removed.
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`The petition fails to mention, let alone address, evidence of nonobviousness
`
`such as the unexpected wind shear resistance and test results mentioned above that
`
`contributed to Miami-Dade approval. By ignoring this objective evidence that
`
`contradicts its case, Petitioner has failed to meet its burden of establishing a
`
`reasonable likelihood of prevailing for any challenged claim.
`
`For these reasons, the petition should be denied. Moreover, even if the
`
`Board institutes trial, Petitioner has not shown why the Board should proceed with
`
`the cumulative grounds recited in the petition that were already covered in the
`
`original examination.
`
`II. THE PRIMARY REFERENCE OF LASSITER USED FOR
`OBVIOUSNESS IN THREE OF THE FOUR ALLEGED INVALIDITY
`GROUNDS (1, 2, AND 4) EXPRESSLY TEACHES AWAY FROM
`THE TWO INDEPENDENT CLAIMS
`
`Three of the four alleged invalidity grounds, Grounds (1), (2), and (4), rely
`
`on the primary reference of Lassiter (Ex.1003). While consideration of claim
`
`construction and/or level of ordinary skill may be useful when reviewing the fourth
`
`alleged invalidity ground of anticipation, analysis of claim construction and level
`
`of ordinary skill is wholly unnecessary when reviewing Lassiter and the
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`5
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`applicability (or lack thereof) of the secondary references.2 That is, the teachings
`
`of the suggested primary reference of Lassiter are directly contrary to the express
`
`requirements of the claim language of both independent Claim 1 and independent
`
`Claim 7.
`
`Independent Claim 1 of the ‘757 patent states:
`
`1. A method of making a roofing or building cover material, which
`
`comprises treating an extended length of substrate, comprising the
`
`steps of: depositing tab material onto the surface of said roofing or
`
`building cover material at a plurality of nail tabs from a lamination
`
`roll, said tab material bonding to the surface of said roofing or
`
`building cover material by pressure between said roll and said
`
`surface. (Ex. 1001, emphasis added).
`
`Independent Claim 7 of the ‘757 patent states:
`
`7. A method of making a roofing or building cover material
`
`comprising the steps of first depositing nail tab material at a plurality
`
`of locations on said roofing or building cover material, said nail tab
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`material
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`is substantially made of a polymeric material, and
`
`
`2Patent Owner does not concede or admit that Petitioner’s asserted claim
`construction or level of ordinary skill in the art is correct, but rather, in light of the
`clear teaching away of Lassiter and deficiencies of Dagher it is unnecessary to
`decide either to properly deny the petition.
`
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`6
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`subsequently pressure adhering said nail tab material into nail
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`tabs on said roofing or building cover material with a pressure
`
`roll. (Ex. 1001, emphasis added).
`
`As shown in highlighting above, both independent claims specifically
`
`require some sort of roller in a process to bond or adhere nail tabs to a roofing or
`
`building cover material. In contrast, Petitioner’s suggested primary reference of
`
`Lassiter uses a non-contact spray method wherein asphalt saturated underlayment
`
`is conveyed “in a continuous process past appropriate sets of nozzles that are
`
`coordinated with the speed of conveyance to deposit the tabs while in a liquid
`
`state….” (Ex. 1003, abst.). Importantly, Lassiter expressly and unequivocally
`
`teaches away from using rollers to deposit tabs because “the rollers used tend
`
`to either melt the adhesive glue, melt the tab material itself, scrape off the
`
`tabs, or a combination of all three, any of which renders the resulting
`
`saturated felt material unreliable, if not unsuited, for commercial use.” (Ex.
`
`1003, col. 2, lines 36-40, emphasis added).
`
`As the United States Court of Appeals for the Federal Circuit has counseled:
`
`A reference may be said to teach away when a person of ordinary
`
`skill, upon reading the reference, would be discouraged from
`
`following the path set out in the reference, or would be led in a
`
`direction divergent from the path that was taken by the applicant. . . .
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`7
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`[I]n general, a reference will teach away if it suggests that the line of
`
`development flowing from the reference’s disclosure is unlikely to be
`
`productive of the result sought by the applicant. In re Gurley, 27 F.3d
`
`551, 553 (Fed. Cir. 1994); see also, McGinley v. Franklin Sports Inc.,
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`262 F.3d 1339, 1354 (Fed. Cir. 2001).
`
`The Gurley case is directly applicable here because as described above
`
`Lassiter teaches that using a roller to apply nail tabs to a roofing underlayment is
`
`“unreliable, if not unsuited, for commercial use.” And Lassiter gives not one
`
`but four independent reasons for these undesirable results when using a roller, i.e.,
`
`(1) melting the adhesive; (2) melting the tab material; (3) scraping off the tabs; or
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`(4) a combination of all of them. Of course, such a clear instruction leads the
`
`skilled artisan (regardless of the level of skill) directly away from the invention of
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`Claims 1 and 7 which each expressly require a roller for in a process for bonding
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`or adhering nail tabs on roofing or building cover material.
`
`Petitioner and its expert do not attempt to explain and, in fact, do not even
`
`acknowledge the existence of the above-described critical passage in the suggested
`
`primary reference of Lassiter. Nor do Petitioner or its expert explain why an
`
`artisan of any skill level would use a roller in a process for bonding or adhering a
`
`polymer onto a heavily asphalt coated surface, and expect to avoid any of the four
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`independent problems Lassiter mentions are caused when applying nail tabs with
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`rollers. What’s more, the problems with using rollers on asphalt and other roofing
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`cover materials were described not only in Lassiter but were well-known and
`
`echoed throughout the prior art.3 In sum, Petitioner and its expert do not provide
`
`any reason why one would ignore Lassiter’s and the prior art’s express teaching
`
`away from roller application and look to the secondary references that employ
`
`rollers.
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`Instead of providing any concrete reason why one would combine Lassiter
`
`with any secondary reference teaching use of pressure from a roller, to bond or
`
`adhere a polymer onto a heavily asphalt coated surface, Petitioner and its expert
`
`offer only conclusory and unsupported allegations for all three alleged obviousness
`
`grounds based on Lassiter with a secondary reference employing a roller, i.e.,
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`Grounds (1), (2), and (4). For example,
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`Ground (1) - It would have been obvious for one of ordinary skill to
`
`modify the nozzle based method of Lassiter to instead include the
`
`
`3See, for example, Petitioner’s own cited reference of Eaton Ex. 1005, col. 8, lines
`15-17 advocating only rolling materials that “do not melt, soften or otherwise
`disintegrate under the temperatures and pressures experienced during the [rolling]
`step of transferring the thermoplastic composition to the substrate.” Of course, this
`counsels against using rollers with, for example, roofing cover materials like
`asphalt underlayment, where asphalt may be hot, soft, and/or tacky.
`
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`9
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`offset method of Hefele that uses a lamination [heater] roll4. (Petition,
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`p. 24 - Ground (1) Lassiter in view of Hefele).
`
`Ground (2) - Bayer further demonstrates it was also widely known
`
`polymer tabs can be printed by contact pressure-based systems using
`
`an offset transfer5 or lamination roll6. One of ordinary skill would
`
`have readily recognize[d] the wide ranging benefits and predictable
`
`results of printing polymer nail tabs provided by such a combination.
`
`(Petition, pp. 34-35 - Ground (2) Lassiter in view of Bayer).
`
`Ground (4) - Eaton demonstrates it was also widely known polymer
`
`tabs can be printed by a sequence of “first” depositing tab material
`
`and then “subsequently” pressure adhering with a pressure roll the tab
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`material to the substrate (i.e., claim 7) and by using a transfer or
`
`lamination roll (i.e., claim 1). One of ordinary skill would have
`
`readily recognize the wide ranging benefits and predictable results
`
`provided by such combinations. (Petition, p. 47 - Ground (4) Lassiter
`
`in view of Eaton).
`
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`4 Hefele does not use “lamination roll” but instead uses the term “heater roll”.
`
`5 Bayer does not use “offset transfer” but instead uses the term “pattern roller”.
`
`6 Bayer does not use “lamination roll” but instead uses the term “application
`roller”.
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`Such conclusory and unsupported statements that ignore the actual teaching
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`away from rollers of the Lassiter primary reference should be disregarded. 37
`
`C.F.R. § 42.65(a); Samsung Elecs., Ltd. v. Arendi S.A.R.L., IPR2014-00214, Paper
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`12 at 17 (May 28, 2014) (denying institution and giving “little weight” to expert
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`declaration that is “conclusory and unsupported by the record evidence”).
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`Petitioner’s conclusory and unsupported statements also ignore the known
`
`limitations of using roller devices of Hefele, Bayer and Eaton on something other
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`than a clean surface like paper, for example, a heavily coated asphalt surface. That
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`is, Petitioner ignores and does not address the teachings in the secondary
`
`references that suggest the ineffectiveness of rolling on roofing cover materials like
`
`asphalt. For example, the secondary reference of Eaton states the following:
`
`The type and construction of the material or materials in the substrate
`
`should be considered when selecting an appropriate substrate to which
`
`a molten thermoplastic composition is applied. Generally, such
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`materials are of the type and construction that do not melt,
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`soften….(See footnote 3 above and Eaton, Ex. 1005, col. 8, lines 11–
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`18).
`
`Such melting or softening is exactly what can happen when asphalt coating
`
`on the substrate from its application. Thus, the secondary references also lead an
`
`artisan away from using rollers as employed in the ‘757 claims. As Petitioner has
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`not established that one of ordinary skill would have been motivated to combine
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`Lassiter with any reference that employs a roller, the petition should be denied as
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`to Grounds (1), (2), and (4).
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`III. THE SECONDARY REFERENCES IN THREE OF FOUR ALLEGED
`INVALIDITY GROUNDS (1, 2, AND 4) DO NOT PROVIDE
`MOTIVATION TO COMBINE ANY OF THEM WITH LASSITER
`AND DO NOT PROVIDE PERTINENT ELEMENTS
`
`The three secondary references do not remedy the deficiencies described
`
`above with respect to Petitioner’s suggested combination of each with Lassiter. In
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`fact, any proper reading of the secondary references shows that each identifies
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`additional reasons an artisan of any skill level would not be led to such
`
`combination.
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`Specifically, none of the secondary references are directed to bonding or
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`pressure adhering nail tabs (or anything else for that matter) to a roofing or
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`building cover material. Each of the secondary references Hefele, Bayer, and
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`Eaton are directed to deposition or printing on paper. (See Hefele at Ex. 1007, col.
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`3, line 2; Bayer at Ex. 1007, col. 4, lines 20-23; and Eaton at Ex. 1005, col. 22,
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`lines 54-56). Petitioner tries to remedy this deficiency by stating no less than eight
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`times in its petition that paper is somehow “a recognized form of roofing or
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`building cover material.” (Petition pages 9, 10, 12, 21, 30, 35, 48, 53, and passim).
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`The presence of, for example, a heavily asphalt coated surface, as in roofing cover
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`materials, is significantly absent in each of the secondary references and repudiates
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`any rationale for alleged “simple substitutions” or any other mechanism that does
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`not properly account for polymer deposition onto this type of complex, coated
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`surface.
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`Of course, an artisan of any skill level understands that paper is not
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`employed as any cover material for a roof or building for readily apparent reasons
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`that roofs should be and need to be resistant to water intrusion and other elements
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`to which they are exposed. Each time the petition states that paper is “a recognized
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`form of roofing or building cover material” the petition cites to, but does not quote,
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`from “(Ex 1003, (the Lassiter ‘409 patent) 1:25-28.”
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`A review of the section cited by Petitioner shows that contrary to
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`Petitioner’s statement, Lassiter does not remotely suggest that paper is somehow “a
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`recognized form of roofing or building cover material,” which includes an
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`underlayment, which “assists in making the roof resistant to water intrusion” and a
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`layer of shingles. Where Petitioner may be confused is that Lassiter says that the
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`starting material for underlayment is dry felt and the dry felt may be made from
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`“rag, paper, and fiberglass.” Thus, contrary to Petitioner’s assertion that paper is
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`some roofing or building cover material, Lassiter actually teaches that paper is
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`employed as a material that is two steps removed from the underlayment roofing
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`cover material. The relevant Lassiter section is reproduced below:
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`Normally, the underlayment assists in making the roof resistant to
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`water intrusion. The starting material for the underlayment is a base
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`material usually referred to as “dry felt”. Examples of types of dry felt
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`starting material are rag, paper and fiberglass, which is not
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`exhaustive of possible starting base materials. (Ex. 1003, col. 1, lines
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`20-28). (emphasis added).
`
`Lassiter clearly is referring to asphalt impregnated or coated felt as a finished
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`underlayment that precludes water intrusion, not paper alone. As the Board can
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`see paper is not taught as “a recognized form of roofing or building cover material”
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`as Petitioner is forced to contend to justify the combination of Lassiter with the
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`secondary references in Grounds (1), (2), and (4). Accordingly, there is no
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`motivation in the secondary references for the suggested combinations with
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`Lassiter. This is yet another independent reason that the petition should be denied
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`as to Grounds (1), (2), and (4).
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`IV. THE PETITION SHOULD BE DENIED WITH RESPECT TO
`REMAINING GROUND (3) AS DAGHER DOES NOT DEPOSIT
`NAIL TAB MATERIAL ON ROOFING OR BUILDING COVER
`MATERIAL AS REQUIRED BY CLAIM 7
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`Having dealt with the three alleged obviousness grounds based on the
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`primary reference of Lassiter above, Petitioner’s remaining invalidity ground relies
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`on the Dagher reference as allegedly anticipating independent Claim 7.
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`Specifically, Petitioner alleges Dagher anticipates, at page 43 of its Petition, stating
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`that “Dagher discloses a method of making “a wood sheathing panel, suitable for
`
`use in building construction, [that] includes reinforcement strips of fiber reinforced
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`polymer material incorporated into the panel.” (Ex.1020, Abstract see also, p. 2:20-
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`24, p. 4:18-5:8, p. 5:20-22, p. 10:24-11:2).” Petitioner is mistakenly equating the
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`“wood sheathing panels” of the wood roof deck as somehow being the “roofing or
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`building cover material” as required by Claim 7.
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`Petitioner is mistaken in asserting that the “wood sheathing panels” of the
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`wood roof deck in Dagher can somehow be a “roofing or building cover material”
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`as required by Claim 7. Indeed, Dagher itself negates this assertion by specifically
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`defining roofing cover materials as underlayments and shingles. Specifically,
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`Dagher states: “The cutaway also shows that the roof 16 is comprised of roof
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`diaphragms 28 (the wood panels). The roof 16 is covered with an exterior roof
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`covering in the form of shingles 30.” (Ex. 1020, abst.). Thus, the language of
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`Dagher itself shows that it does not and cannot anticipate Claim 7.
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`What’s more, the ‘757 patent itself makes clear that the “roofing or building
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`cover material” is not the wood roof deck. Specifically, the ‘757 patent states right
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`up front that: “The invention relates generally to roofing materials or other
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`building materials normally employed as cover materials over a wood roof
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`deck or stud wall and more specifically to such cover materials and methods for
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`incorporating therein a plurality of integrally formed nail tabs or a continuous
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`reinforcing strip.” (Ex. 1001, col. 1, lines 29-34, emphasis added). This makes it
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`clear that the “roofing or building cover material” as that phrase is used in the ‘757
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`claims does not and cannot include the wood roof deck which it covers.
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`The ‘757 patent goes on and makes it even more clear that sheaths of a roof
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`deck are not a “roofing or building cover material.” That is, the ‘757 patent
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`describes beneath the heading “The Typical Roof Composition.”
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`A roof installation generally comprises at least two distinctive
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`layers applied over a roof deck with each layer being comprised of a
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`separate roofing material. The first layer is an underlayment, usually a
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`substantially asphalt saturated substrate material that attaches directly
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`to the roof deck, oftentimes a wood frame of wood studs and plywood
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`sheets or board material. The second layer is made up of the shingles,
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`rolled roofing, wood shakes, and metal or tile roof coverings
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`themselves….Normally, the underlayment assists in making the roof
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`resistant to water intrusion….Regardless of the type of underlayment
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`roofing material that has been employed, common practice in the
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`installation industry has been to unroll a length of the underlayment
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`material and affix each length to the roof deck or building sides
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`support sheets or boards at a plurality of locations so that it stays in
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`place prior to the installation of the covering shingles….Moreover, it
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`Patent Owner’s Preliminary Response
`IPR2015-00650
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`is desirable
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`that
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`the underlayment be securely attached
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`independently of the shingles, wood shakes, metal tile or other
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`roof covering not only in the pre-shingling or pre-roof covering stage
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`of installation, but also in the final installation. This is because
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`shingles or other roof coverings do get damaged, blown or ripped off
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`the roof under adverse weather conditions and a secure independently
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`installed underlayment will provide some interim protection from the
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`weather elements prior to roof repair. (Ex. 1001, col. 1, lines 36-51,
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`emphasis added).
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`Thus, the ‘757 patent itself independently confirms in numerous places that an
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`underlayment or other “roofing or building cover material” is distinctly different
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`from and does not include wood sheaths that make up a roof deck. Instead,
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`underlayment and other “roofing or building cover materials” are affixed to wood
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`sheaths of a roof deck in the ‘757 patent. Accordingly, Dagher cannot anticipate
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`Claim 7 for at least the reason that Dagher only has “reinforcement strips of fiber
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`reinforced polymer material incorporated into the panels” of a roof deck. Dagher
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`does not disclose any nail tab material on a roofing or building cover material as
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`required by Claim 7 and the petition should be denied as to the alleged invalidity
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`ground (3).
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`In addition to missing elements and not anticipating, Dagher is irrelevant to
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`any obviousness inquiry because the reference is not reasonably pertinent to the
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`problem of depositing polymer nail tab material onto a roofing cover material
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`which is almost always a heavily asphalt coated surface as described in the ‘757
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`patent specification. Therefore, Dagher would not have commended itself to the
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`‘757 patent inventor’s attention or any skilled artisan in considering the problem.
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`(In re Health and Fitness, Inc., 496 F. 3d 1374, 1379-80 (Fed. Cir. 2007) (quoting
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`In re Clay, 966 F. 2d 656,658, 23 USPG2 1058, 1061 (Fed Cir. 1992)).
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`V. THE PETITION IGNORES SECONDARY CONSIDERATIONS OF
`NON-OBVIOUSNESS
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`Even if the Board were to find that the petition establishes a prima facie case
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`of obviousness – which it shouldn’t – the Board should deny trial because the
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`petition ignores objective indicia of nonobviousness. Objective indicia of
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`nonobviousness are “not just a cumulative or confirmatory part of the obviousness
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`calculus but constitute independent evidence of nonobviousness.” (Ortho-McNeil
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`Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008).) The
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`Federal Circuit has stated that “the Board should give the objective indicia its
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`proper weight and place in the obviousness analysis, and not treat objective indicia
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`of nonobviousness as an afterthought.” (Leo Pharmaceutical v. Rea, 726 F.3d
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`1346, 1358 (Fed. Cir. 2013).) Objective indicia “can be the most probative
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`evidence of nonobviousness in the record, and enables the … court to avert the trap
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`of hindsight.” (Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir.
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`2010).)
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`The petition fails to properly account for widely known and readily available
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`evidence concerning objective indicia of nonobviousness. Specifically, products
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`resulting from the use of the claimed process result in such a high wind resistance
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`rating that these roofing or building cover materials, with integrally applied nail
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`reinforcement tabs, were one of the first of its kind that were governmentally
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`approved for use in hurricane prone counties of Florida. (Ex. 2001, Miami-Dade
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`Notice of Acceptance). In fact, third-party engineers publicly reported consistently
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`better performance of Patent Owner’s products than the tin caps considered the
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`industry standard at the time in the high velocity hurricane zone areas of this part
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`of the country. (Ex. 2002, Exterior Research & Design Lab Report). Having
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`chosen not to tackle such readily available objective indicia of nonobviousness, the
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`petition also fails for not establishing a reasonable likelihood in prevailing on at
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`least one claim.
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`VI. THREE OF THE FOUR ALLEGED INVALIDITY GROUNDS WERE
`COVERED IN THE ORIGINAL PROSECUTION
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`Three of the four invalidity grounds advanced by Petitioner rely on Lassiter
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`(which teaches away from a roller) in combination with a secondary reference that
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`suggests a roller. These combinations are essentially the same as the Examiner
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`originally advanced - and later withdrew - during prosecution. That is, the
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`Examiner applied an obviousness rejection over the same Lassiter reference of the
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`petition in combination with a secondary “roller” reference of Halley stating, “it
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`would have been obvious to one skilled in the art to modify the process of Lassiter
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`to substitute for the nozzles, a pressure-gravure roller arrangement like that of
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`Halley, in order to apply the polymeric coating material.” (Ex. 1002, p. 102 of
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`220).
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`Even though this argument was withdrawn by the Examiner and the
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`rejection was overcome, Petitioner nevertheless advances it again here in three of
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`its four separate alleged grounds of invalidity. These grounds were already
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`covered in the original examination and therefore the petition may be rejected
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`pur
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