UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`HYDRITE CHEMICAL CO.,
`Petitioner,
`
`v.
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`SOLENIS TECHNOLOGIES, L.P.,
`Patent Owner.
`
`___________
`
`Case IPR2015-01592
`Patent No. 8,841,469
`___________
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`
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`
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`DECLARATION OF SCOTT D. KOHL, PH.D
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`TABLE OF CONTENTS
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`I.
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`Introduction and Qualifications ....................................................................... 1
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`II. Materials Reviewed ......................................................................................... 2
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`III. Background and Qualifications ....................................................................... 2
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`IV. The Law ........................................................................................................... 6
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`V. Overview of the Petition and Rockstraw Declaration ................................... 10
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`A.
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`B.
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`Prior Publications ................................................................................ 10
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`Summary of the Proposed Grounds of Rejection ................................ 11
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`VI. Description of the Invention of the 469 Patent .............................................. 12
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`VII. Corn-to-Ethanol Processing and the Level of Skill in the Art ...................... 13
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`VIII. Grounds Based on Bonanno and ICI (Grounds 1-5) ..................................... 16
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`A. Hydrite’s Combination Of Bonanno And ICI Would Not Lead To
`The Challenged Claims ....................................................................... 16
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`B. Hydrite’s Argument Regarding Claims 16 ......................................... 21
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`C.
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`The Remaining References Do Not Cure The Deficiencies Of
`Bonanno And ICI ................................................................................ 22
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`IX. Grounds Based on Winsness (Grounds 6-10) ............................................... 24
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`A. Winsness Is Not Directed To Handling Emulsions ............................ 25
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`B. Winsness Discloses An Efficient And Effective Oil Recovery
`Method ................................................................................................. 26
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`C. Alther Does Not Suggest The Use Of Polysorbate 80 For Use In
`Winsness’s Process.............................................................................. 28
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`D. Hydrite’s Reliance On ICI And The Alleged Predictability Of
`Using HLB Values To Form Or Break An Emulsion Is Misplaced ... 32
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`E.
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`The Remaining References ................................................................. 36
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`X. Objective Considerations ............................................................................... 39
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`XI. Conclusion ..................................................................................................... 40
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`I.
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`Introduction and Qualifications
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`I, Dr. Scott D. Kohl, declare as follows:
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`1.
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`I have been retained by Solenis Technologies, L.P. (“Solenis”) to
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`offer technical opinions regarding U.S. Patent No. 8,841,469 (“469 Patent,” Ex.
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`1001) and certain references relating to its subject matter. This Declaration
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`contains my opinions on this matter and the reasons and bases therefor. I
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`understand that this Declaration is being submitted together with a Patent Owner’s
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`response to the Petition by Hydrite Chemical Co. (“Hydrite”)seeking inter partes
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`review of claims 1-19 of the 469 Patent, and a declaration by Jennifer Bailey,
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`Solenis’s Global Strategic Product Director for Biorefining.
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`2.
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`I have been asked to testify regarding the views expressed in
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`Hydrite’s Petition and the accompanying declaration of Dr. David A. Rockstraw,
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`Ph.D., P.E. (“Rockstraw Declaration”) (Ex. 1005). This declaration provides a
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`rebuttal of the proposed grounds of rejection set forth in the Petition and
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`Rockstraw Declaration. It further provides an analysis of the 469 Patent and its
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`validity in light of the law of obviousness as it has been explained to me and in
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`light of the references upon which the Petition and Dr. Rockstraw rely and
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`information regarding Solenis products and their use in methods claimed in the 469
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`Patent.
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`3.
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`I do not believe that the methods that are claimed in the 469 Patent
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`would have been obvious to those of ordinary skill in the relevant technical field at
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`the time that the 469 Patent was filed. Specifically, I do not believe that the
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`claimed methods would have been obvious in view of the prior publications that
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`Hydrite and Dr. Rockstaw have identified. In my view, the modifications to those
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`publications that Hydrite and Dr. Rockstraw have proposed are ones that a person
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`of ordinary skill either would not have had a reason to make or that would have led
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`such a person to a method that was different than those claimed. This declaration
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`provides the opinions that I have formed to date. I may modify my opinions, if
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`necessary, based on further review and analysis of information provided to me
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`subsequent to the filing of this declaration.
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`II. Materials Reviewed
`4.
`I have reviewed the Petition, the Rockstraw Declaration (Ex. 1005),
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`the Rockstraw deposition transcript (Ex. 2005), and each exhibit cited therein. I
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`have also reviewed the declaration of Jennifer Bailey (Ex. 2004) and selected
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`exhibits cited therein.
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`III. Background and Qualifications
`5.
`I hold a Bachelor of Science degree in chemistry from South
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`Dakota State University, which I earned in 1994. I also earned a Ph.D in chemistry
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`from South Dakota State University in 1999. I obtained further training in
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`Fermentation Technology and Downstream Processing at the Massachusetts
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`Institute of Technology under the direction of Dr. Daniel Wang and Dr. Charles
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`Cooney in 2006.
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`6.
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`I am currently the Vice President of Technology and Process
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`Improvement for White Energy, Inc., where I have been employed for the last year.
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`White Energy owns three fuel ethanol plants having a combined capacity of 280
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`million gallons per year (MMGY), as well as a vital gluten food ingredient
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`production plant.
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`7.
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`Prior to joining White Energy, I worked at ICM, Inc., a process
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`design engineering firm that designed over 100 new fuel ethanol plants and over 25
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`major retrofits of other process technology systems during the twelve years of my
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`employment. During my tenure at ICM, I served as a Principal Scientist,
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`Laboratory Manager and Technical Director. In those roles, I was involved with
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`the development of several new technologies related to oil recovery in ethanol
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`production, including ICM’s SMT™ (Selective Milling Technology™) system,
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`FST™ (Fiber Separation Technology™) system, and BTSTM (“Base Tricanter
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`SystemTM) system (which became the most widely purchased oil recovery system
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`in fuel ethanol plants in North America). I also was involved in the development
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`of the AOSTM (Advanced Oil SeparationTM) oil recovery system, which was
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`designed for use in fuel ethanol plants having oil recovery challenges.
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`8.
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`Prior to working at ICM, I worked at Glacial Lakes Energy, LLC,
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`as Plant Chemist and Environmental, Health and Safety Manager on a 40 MMGY
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`fuel ethanol plant. I was hired when the plant was under construction and was
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`involved with the initial setup of the physical laboratory equipment as well as
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`testing procedures. After construction was completed, my responsibilities included
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`selection and hiring of production staff, training for operations, managing and
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`operating all equipment for the laboratory and successful startup of the facility to
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`full operational rate.
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`9.
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`In total, I have approximately fourteen years of experience in the
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`fuel ethanol industry including experience with oil recovery at over 20 ethanol
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`facilities. I have been involved with startup and/or ongoing operations of over 30
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`ethanol facilities. My experience includes day-to-day operations to plant upset
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`issues in the areas of laboratory systems, cook, yeast propagation, fermentation, oil
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`recovery, enzyme systems, wastewater treatment, distillation, drying, whole
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`stillage centrifugation, air emissions, and CO2 scrubber process. I have optimized
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`oil recovery systems at ethanol facilities, worked with SSSTM (Selective Solids
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`SeparationTM) systems in front of the oil recovery systems, and worked with plants
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`to alter their whole stillage decanter operations to increase the performance of the
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`oil recovery system. I have also helped plants understand the cause and effect for:
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`thin stillage retention time, evaporator body operation, feed temperature to oil
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`recovery system, buoyant suspended solids effect on oil recovery, fermentation
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`performance on oil recovery, amylase dosing on oil recovery, protease dosing on
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`oil recovery, total solids in centrate effect on oil recovery, suspended solids in
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`centrate effect on oil recovery, oil centrifuge weir placement on oil recovery, trash
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`recycling within oil system on recovery purity and amount.
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`10.
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`Additionally, I have taught at over 30 training courses in the U.S.,
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`Canada, and Europe on ethanol production. After earning my doctorate in 1999,
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`and until 2002, I worked as a post-doctoral research associate in South Dakota
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`State University’s chemistry and biochemistry departments. From 2000-2002, I
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`also served as an adjunct professor in the Department of Chemistry at the
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`University of South Dakota.
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`11.
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`I am a named inventor on two issued patents and on four pending
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`patent applications that are related to fuel ethanol production or equipment for use
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`in fuel ethanol production. I also co-authored two textbook chapters in the Alcohol
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`Textbook (5th Edition) and one chapter in Advanced Biorefineries for the
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`Production of Fuel Ethanol, and authored 26 trade journal articles covering major
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`unit operations in dry grind fuel ethanol production and corn wet milling. My
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`curriculum vitae, which includes a list of my publications, presentations, patents,
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`and professional activities, is attached hereto at Appendix A.
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`12.
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`I am being compensated at my normal consulting rate of $325 per
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`hour for my work in this matter.
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`IV. The Law
`13.
`I am not an attorney and do not purport to provide any expert
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`opinions on the law. I have, however, been advised of certain basic legal
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`principles applicable to the analysis set forth in this report. I have assumed these
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`principles to be correct and applicable for purposes of my analysis. I set forth
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`these principles below.
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`14.
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`I understand that a petitioner in an inter-partes review has the
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`burden of showing that a patent claim is unpatentable and that this burden requires
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`a showing (by a preponderance of the evidence) that the claimed invention would
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`have been obvious to persons of ordinary skill in the relevant technical field at the
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`time that the invention was made. I also understand that “preponderance of the
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`evidence” basically means “more likely than not.”
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`15.
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`For purposes of assessing whether or not the claimed subject matter
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`of the 469 Patent would have been obvious, I understand that the time of invention
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`was on or before March 21, 2011, which is the earliest filing date listed for the
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`patent.
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`16.
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`I understand that a patent claim is unpatentable if, at the time the
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`invention was made, the differences between the patented subject matter and the
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`prior art are such that the subject matter as a whole would have been obvious to a
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`person having ordinary skill in the relevant technical field.
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`17.
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`I understand that an obviousness inquiry involves a four-step
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`analysis that includes determining:
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`(1) the scope and content of the prior art at the time that the claimed
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`invention was made;
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`(2)
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`the differences, if any, between the claimed invention(s) and the prior
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`art;
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`(3)
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`the level of ordinary skill in the art at the time that the claimed
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`invention was made; and
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`(4) whether or not there is evidence of certain objective considerations
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`relating to the obviousness or non-obviousness of the invention.
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`18.
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`Once these determinations have been made, I understand that one
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`must decide whether or not the invention, considered as a whole, would have been
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`obvious to one having ordinary skill in the relevant technical field at the time that
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`the invention was made.
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`19.
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`I understand that it is not permissible to use hindsight in assessing
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`whether or not the claimed invention would have been obvious. For example,
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`someone assessing the issue of obviousness may not consider information that is
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`known today but was not known at the time that the invention was made. Rather,
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`one must place oneself in the shoes of a person having ordinary skill in the patent’s
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`technical field at the time the invention was made.
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`20.
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`I understand that there are no factors that must be considered in
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`determining the level of ordinary skill in the 469 Patent’s technical field, but I have
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`been instructed to consider the following, to the extent that I can, in making this
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`determination:
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`(1) The educational level of the inventor;
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`(2) Types of problems encountered in the relevant technical field;
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`(3) Prior solutions to those problems;
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`(4) Rapidity with which innovations are made;
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`(5) Sophistication of the technology; and
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`(6) Educational levels of active workers in the field.
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`21.
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`Regarding the fourth step in the above-noted process for assessing
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`obviousness, specifically the step involving “objective considerations,” I have been
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`told that some of the factors that may be considered are copying of the claimed
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`invention, a long felt but unsolved need for it, failure by others in achieving the
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`results of the claimed invention, commercial success of the claimed invention,
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`unexpected results created by the claimed invention, unexpected properties of the
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`claimed invention, licenses showing industry respect for the invention, and
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`skepticism of skilled artisans before the invention was made.
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`22.
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`I also understand that where a claimed invention is a combination
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`of several elements, each of which previously had been separately known, there
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`had to have been some objective reason to combine or modify those elements in a
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`way that would achieve the claimed invention. In addition, known disadvantages
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`of the prior elements that might have taught away from the claimed combination
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`may be taken into account in determining whether or not the claimed invention
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`would have been obvious.
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`V. Overview of the Petition and Rockstraw Declaration
`A.
`Prior Publications
`23.
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`The Petition and Rockstraw Declaration assert that the claims of the
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`469 Patent would have been obvious in view of various combinations of the
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`following publications:
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` U.S. Patent No. 4,702,798 (“Bonanno”) (Ex. 1006);
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` George Alther, “Put the Breaks On Wastewater Emulsions,” Chemical
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`Engineering, Vol. 5, No. 3 (March 1998) (“Alther”) (Ex. 1007);
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` “The HLB System a time-saving guide to emulsifier selection,” ICI
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`Americas Inc. (March 1980) (“ICI”) (Ex. 1008);
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` Suzanne Frison-Norrie and Peter Sporns, “Investigating the Molecular
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`Heterogeneity of Polysorbate Emulsifiers by MALD-TOF MS,” J.
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`Agric. Food Chem., vol. 49, issue 7, pp. 3335-3340 (July 2001)
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`(“Frison”) (Ex. 1009);
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` U.S. Patent No. 5,283,322 (“Martin”) (Ex. 1010);
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` U.S. Patent No. 5,558,781 (“Buchold”) (Ex. 1011);
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` U.S. Patent Application Pub. No. 2008/0110577 (“Winsness”) (Ex.
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`1012);
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` U.S. Patent No. 6,013,157 (“Li”) (Ex. 1013);
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` U.S. Patent Application Pub. NO. 2007/0210007 (“Scheimann”) (Ex.
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`1014);
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` U.S. Patent No. 6,548,102 (“Fenske”).
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`B.
`24.
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`Summary of the Proposed Grounds of Rejection
`I understand that inter partes review of the 469 Patent was
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`instituted on the following grounds:
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`1) Claims 1, 12, 13, 15, and 16 as obvious in view of Bonanno, Frison,
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`and ICI;
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`2) Claims 2-11 amd 17 as obvious in view of Bonanno, Frison, ICI, and
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`Martin;
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`3) Claim 14 as obvious in view of Bonanno, Frison, ICI, and Buchold;
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`4) Claim 18 as obvious in view of Bonanno, Frison, ICI, Martin, and
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`Buchold;
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`5) Claim 19 as obvious in view of Bonanno, Frison, ICI, Buchold,
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`Winsness, Scheimann, and Fenske;
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`6) Claims 1 and 2 as obvious in view of Winsness, Alther, ICI, and
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`Frison;
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`7) Claims 3-11 as obvious in view of Winsness, Alther, ICI, Frison, and
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`Martin;
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`8) Claims 12, 13, and 15-17 as obvious in view of Winsness, Alther, ICI,
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`Frison, and Bonanno;
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`9) Claims 14 and 18 as obvious in view of Winsness, Alther, ICI, Frison,
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`Bonanno, and Buchold; and
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`10)
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`Claim 19 as obvious in view of Winsness, Alther, ICI, Frison,
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`Bonanno, Buchold, Scheimann, and Fenske.
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`25.
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`For reasons explained below, I do not believe that those of ordinary
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`skill would have made these combinations and/or that the combinations would not
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`have led them to the challenged claims.
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`VI. Description of the Invention of the 469 Patent
`26.
`The 469 Patent is directed to methods of recovering oil in the
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`production of ethanol from corn (Ex. 1001 at 1:10-11). In particular, the methods
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`involve adding a chemical additive to a process stream that is generated as a
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`byproduct in corn to ethanol production, thereby enhancing oil recovery (id. at
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`1:64 to 2:7). As explained in the patent, corn to ethanol production includes a
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`number of different mashing and fermentation steps that convert the corn to a
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`material referred to as “beer” (id. at 3:16-19). The beer is then distilled to separate
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`the crude ethanol from the thick (whole) stillage byproduct (id. at 3:20-22). The
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`whole stillage is subjected to a solid separation process to yield distillers wet grain
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`and thin stillage (id. at 3:22-24). The thin stillage is then typically evaporated to
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`yield a concentrated syrup that can then be further processed by, for example,
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`centrifugation to separate the oil (id. at 3:24-27).
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`27.
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`The 469 Patent discloses that the chemical additive may be added to
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`the process stream at different points in the separation process (id. at 3:30-32).
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`One class of chemical additives said to be useful are functionalized polyols derived
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`from sorbitol, isosorbide, or a sorbitan, including 1,4-sorbitan (id. at 3:52-54).
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`VII. Corn-to-Ethanol Processing and the Level of Skill in the Art
`28.
`Dr. Rockstraw alleges that a hypothetical person of ordinary skill in
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`the art would be someone holding a degree in chemical engineering with
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`approximately five years of post-graduation experience in the design and
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`application of chemical processes, and having before him/her all of the relevant
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`prior art (Ex. 1005 at ¶ 20).
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`29.
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`Although I agree with Dr. Rockstraw that a person of ordinary skill
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`may have a chemical engineering degree, or closely related technical degree, I
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`believe that, given the unique problems that one encounters when converting corn
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`to ethanol, a person having ordinary skill in this field would have had actual
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`experience with corn-to-ethanol processing. This experience would include first-
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`hand familiarity with at least the majority of the production equipment and normal
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`operational parameters for that equipment in corn to ethanol production. In
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`addition, one of ordinary skill in the art would also have familiarity with the
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`chemistry of the constituents that make up a corn-to-ethanol process stream.
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`30.
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`There are a number of constituents in a corn-to-ethanol byproduct
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`stream, including soluble starches, proteins, gums, and waxes (Ex. 2001 at 5:13-
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`16). The overall oil profile may include a relatively diverse range of triglycerides
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`having a diverse range of fatty acids bound thereon (id. at 5:21-23). The oil
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`profile varies according to the source species, breed, and with variable
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`environmental and seasonal factors under which the source grew (id. at 5:25-28).
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`In other words, the chemistry of one product stream as compared to the next may
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`vary widely.
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`31.
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`A corn-to-ethanol production process is a complex system. There
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`are a number of different plant (facility) designs used in the industry that can affect
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`the ease of oil recovery. And even within plants that have the same design, owner-
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`defined operational parameters will alter the ease or difficulty of oil recovery from
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`the system. For example, the grind size, enzyme package, solids loading, nitrogen
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`addition for fermentation, yeasting practice, pH, temperature, unit operation
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`residence time, pump style, and length of piping between pumps and tanks can all
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`have an effect. In fact, these parameters often determine whether an emulsion
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`problem exists or not at a given corn to ethanol plant.
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`32.
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` Without any practical experience with a corn-to-ethanol production
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`process, it may be tempting to focus on corn oil emulsions in the theoretical way
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`that Hydrite and Dr. Rockstraw did. This approach, however, does not take into
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`account the actual constituents of the various types of corn-to-ethanol process
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`streams that one might encounter, or the complexities that those constituents, along
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`with the processing conditions, can produce. There is more to evaluating your oil
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`recovery options than simply identifying your continuous (water) and oil phase
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`(see Ex. 2005 at 99:13-22; 100:8-24).
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`33.
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`Prior to March 2011, there was not much publically available
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`information on the chemistry or assessment of emulsions in the byproduct stream
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`of a corn-to-ethanol process. This is borne out by the fact that the only reference
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`cited in the Petition that refers to an emulsion in a corn-to-ethanol process stream
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`is the Winsness reference, which devotes only two sentences to it (Ex. 1012 at
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`[0007]). In addition, the Bonanno, ICI, and Alther references were available since
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`1998, but no one arrived at the claimed methods for many years, despite a general
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`desire to increase efficiency. It simply was not as easy to arrive at the claimed
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`methods as Hydrite proposes.
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`VIII. Grounds Based on Bonanno and ICI (Grounds 1-5)
`A. Hydrite’s Combination Of Bonanno And ICI Would Not Lead To
`The Challenged Claims
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`34.
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`According to Hydrite, a person of ordinary skill having knowledge
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`of Bonanno would have been motivated by ICI to use a polyoxyethylene sorbitan
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`fatty ester in Bonanno’s process to break an emulsion of water and corn oil (Pet. at
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`10-11). I do not believe that one of ordinary skill in the art would have made this
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`combination, at least because Bonanno expresses an interest in keeping the water
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`and oil phases together in its evaporative drying process.
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`35.
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`Bonanno relates to a process and apparatus for continuously drying
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`solids by boiling away the water associated with those solids (see Ex. 1006 at 1:63-
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`66). Although Hydrite relies on an example that includes corn stillage (Pet. at 51),
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`Bonanno’s disclosure is generally directed to a wide variety of aqueous solids
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`mixtures. For example, Bonanno refers to drying products such as food, food
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`wastes, chemicals, pharmaceutical wastes, and sewage in fluidizing oil (see Ex.
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`1006 at 2:2-4). In other words, many different product streams are represented.
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`36.
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`As explained in Bonanno, the recovery of dry solids from aqueous
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`solids mixtures is facilitated by the addition of a fluidizing oil so that the process
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`streams can be dried at high temperatures and still remain pumpable (Ex.1006 at
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`1:26-29). However, problems arise when the water wetted solids are not properly
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`dispersed and suspended within the fluidizing oil. There is a need to keep the
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`water phase and oil phase mixed together in the process. The phrase “water wetted
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`solids” in Bonanno refers to all the water plus non-oil components in the system.
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`The water associated with these solids has a natural repulsion to the fluidizing oil
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`added into the system, resulting in phase separation and a lack of homogeneity
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`between the rapidly moving fluidizing oil and the water wetted solids in the
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`system. To prevent this phase separation, Bonanno teaches the addition of
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`surfactant to the mixture.
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`37.
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`Bonanno provides a number of examples of problems that are said
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`to occur when the oil and water phases separate:
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` “[T]he solids sometimes tend to form large masses that adhere to the
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`inner walls of the pipeline, vapor chamber and heat exchanger tubes
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`while the oil phase may be circulating with little or no wet solids”
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`(Ex. 1006 at 1:33-37).
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` “Those wet solids, when not properly dispersed and suspended, may
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`coat the heat exchanger surfaces and then dry as a scale reducing the
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`heat transfer rate in the heat exchanger so that the evaporation rate is
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`reduced markedly and the efficiency of the evaporation is very low”
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`(id. at 1:40-45).
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` “There are also cases where a mixture of wet solids and oil in the
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`fluidizing tank or feed tank are not pumped uniformly to the
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`evaporator due to the settling of the solids and the immiscibility of the
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`two phases. That action tends to result in a disproportional amount of
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`either wet solids or oil in the mixture sent to the evaporator and tends
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`to upset the system” (id. at 1:49-55).
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`
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` “The pumping rate is adversely affected when water wetted solids are
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`not properly dispersed in the oil phase” (id. at 17:36-37).
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`38.
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`And with respect to the improved evaporative drying that is a key
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`feature of Bonanno, the reference teaches that “evaporative drying of a wetted
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`material is most efficient when the particles are small, uniform in size and evenly
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`dispersed in the circulating fluidizing oil medium” (id. at 4:26-29).
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`39.
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`As a result, Bonanno teaches that surfactants are desirable for use
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`“as an aid to causing a suspension or condition of miscibility, in a multiple phase
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`system of oil, water and solids” (id. at 1:66 to 2:4, emphasis added). This would
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`indicate to one of ordinary skill in the art that any surfactant selected should be one
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`that keeps water and oil phases together, regardless of whether they are present in
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`the form of a dispersion, suspension, or emulsion (see id. at 5:44-51).
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`40.
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`As stated by Dr. Rockstraw during his deposition, the number of
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`surfactants disclosed by Bonanno at col. 5, lines 25, is significant and would
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`include thousands of surfactants when taking into account blends (Ex. 2005 at
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`176:6-16; 181:9 – 183:9). I also agree with Dr. Rockstraw that Bonanno does not
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`teach one how to reduce this pool of surfactants further (Ex. 2005 at 172:9-24).
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`41.
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`To do so, Dr. Rockstraw turns to ICI, concluding that ICI suggests
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`that “the high HLB of any of the identified TWEENs will demulsify an emulsion
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`of corn oil and water, thereby promoting the water/corn oil separation of corn
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`stillage as used in Example II of Bonanno” (Pet. at 11, emphasis in original). As
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`noted in Section IX.D, however, reliance on HLB to predict surfactant
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`effectiveness is not something that a person of ordinary skill would have done.
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`And, in any event, selecting the surfactant in order to produce a water/oil phase
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`separation would have been inconsistent with Bonanno’s goals.
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`42.
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`In particular, Bonanno does not start with an emulsion that the
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`authors seek to de-stabilize or break. Instead, Bonanno is attempting to form a
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`suspension or condition of miscibility of oil, water, and solids and keep that
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`mixture together as long as possible. In this respect, Bonanno advises that the
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`water wet particles will stay suspended longer in a triglyceride oil than in a
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`hydrocarbon oil (Ex. 1006 at 5:39-43).
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`43.
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`Although Dr. Rockstraw testified that “Bonanno wants to keep the
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`solid and oil phase together but exclude the water phase” (Ex. 2005 at 167:6-7),
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`this is not consistent with the teachings of Bonanno concerning the water wetted
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`solids being well dispersed in the oil phase. Although Bonanno ultimately
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`evaporates away the water, Bonanno wants the water (water wetted solids) to
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`remain within the mixture throughout the evaporation process until the water is
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`completely boiled away, leaving dry solids, fluidizing oil, and surfactant (see, e.g.,
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`Ex. 1006 at 19:5-18). If the water wetted solids separate from the fluidizing oil,
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`they become quiescent and, being denser than the oil, will tend to settle out in low
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`points of the evaporation device. Once settled out, the solids will be in contact
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`with a metal surface and the water will continue to boil out. The solids remaining
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`after the water evaporates will tend to nucleate on the steel surface and form a
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`deposit on that surface – referred to as “fouling.” In order to avoid a fouling event,
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`the water and solids need to stay in intimate contact with the fluidizing oil where
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`the water is boiled out from the rapidly moving fluidizing oil and the remaining
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`solids nucleate on themselves rather than the internal surfaces of the evaporation
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`system.
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`44.
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`Moreover, if the water is removed from the oil phase, there will be
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`poor heat transfer from the oil to the water. Having the water dispersed within the
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`oil will optimize heat transfer and improve the evaporation rate.
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`45.
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`Given Bonanno’s emphasis on the importance of keeping its
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`disclosed oil phase and water phase together, I do not believe that one of ordinary
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`skill in the art would have modified the Bonanno process in a way that would
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`cause those phases to separate.
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`B. Hydrite’s Argument Regarding Claims 16
`46.
`Claim 16 of the 469 patent is directed to a method in which, in
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`addition to the chemical additive that is added to the process stream, a triglyceride
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`(oil) is added to the recited process stream in an amount that constitutes from 1 to
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`100% by weight based on the weight of the chemical additive. In other words, the
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`claim requires that the amount of triglyceride (oil) that is added be less than or
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`equal to the amount of the chemical additive.
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`47.
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`In contrast, Bonanno discloses the addition of a surfactant and a
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`fluidizing oil, but teaches that the surfactant should be used in an amount that
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`constitutes from about 0.05 to 10.0% by weight of the fluidizing oil (Ex. 1006 at
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`5:1-2). In other words, Bonanno teaches that the added oil should be at least ten
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`times greater than (and up to 2000 times