`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TIETEX INTERNATIONAL, LTD.
`Petitioner
`
`v.
`
`PRECISION FABRICS GROUP, INC
`Patent Owner
`
`U.S. Patent No. 8,796,162
`IPR Case No.: Unassigned
`
`DECLARATION OF DR. A. RICHARD HORROCKS
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`
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`
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`Tietex International, Ltd. 1003
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`
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`DECLARATION OF DR. A. RICHARD HORROCKS ...................................... 1
`
`DECLARATION OF DR. A. RICHARD HORROCKS .................................... .. 1
`
`I.
`
`I.
`
`INTRODUCTION .................................................................................... 1
`
`INTRODUCTION .................................................................................. .. 1
`
`A.
`
`B.
`
`C.
`
`II.
`
`Engagement .............................................................................................. 1
`Engagement ............................................................................................ .. 1
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`Background and Qualifications ................................................................. 1
`Background and Qualifications ............................................................... .. 1
`
`Compensation ........................................................................................... 2
`Compensation ......................................................................................... .. 2
`
`DECLARATION OF MR. BRIAN CALLAWAY .................................... 3
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`DECLARATION OF MR. BRIAN CALLAWAY .................................. .. 3
`
`P’FOP“?
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`III. LEGAL STANDARDS FOR PATENTABILITY ..................................... 4
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`LEGAL STANDARDS FOR PATENTABILITY ................................... .. 4
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`A. General ..................................................................................................... 4
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`General ................................................................................................... .. 4
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`B.
`
`C.
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`Effective Filing Date of Claimed Subject Matter ....................................... 5
`Effective Filing Date of Claimed Subject Matter ..................................... .. 5
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`Claim Construction Standard .................................................................... 5
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`Claim Construction Standard .................................................................. .. 5
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`D. Obviousness.............................................................................................. 5
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`Obviousness ............................................................................................ .. 5
`
`IV.
`
`THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
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`IV. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND IN THE RELEVANT TIMEFRAME .............................................. 9
`
`AND IN THE RELEVANT TIMEFRAME ............................................ .. 9
`
`V.
`
`THE STATE OF THE ART IN THE RELEVANT FIELD AND IN
`
`THE STATE OF THE ART IN THE RELEVANT FIELD AND IN
`THE RELEVANT TIMEFRAME ........................................................... 10
`
`THE RELEVANT TIMEFRAME ......................................................... .. 10
`
`VI. THE ˈ162 patent ..................................................................................... 14
`THE '162 patent ................................................................................... .. 14
`
`VI.
`
`A.
`
`Content of the ˈ162 patent subject matter ................................................ 14
`Content of the ' 162 patent subject matter .............................................. .. 14
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`VII. PATENTABILITY ANALYSIS OF THE CHALLENGED CLAIMS .... 16
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`PATENTABILITY ANALYSIS OF THE CHALLENGED CLAIMS 16
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`VII.
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`
`
`
`i
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`I.
`
`INTRODUCTION
`A.
`
`Engagement
`1.
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`My name is A. Richard Horrocks. I have been retained by
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`counsel for Tietex International, Ltd. (“Tietex”) as an expert witness in the above-
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`captioned proceeding. I have been asked to provide analysis regarding the Patent
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`Owner’s reply and its supporting evidence regarding claims 1 – 30 ("challenged
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`claims") of U.S. Patent 8,796,162 ("the '162 patent”).
`B.
`
`Background and Qualifications
`2.
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`I currently hold the position of Research Professor in Textiles at
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`the Institute for Materials Research and Innovation at the University of Bolton in
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`England where I have been employed for 43 years.
`3.
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`I hold a Ph.D. in chemistry from the University of East Anglia
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`in Norwich, England.
`4.
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`I have worked and published extensively in the field of
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`technical textiles, including numerous publications that focus on flame retardant
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`textiles and fibers and related flame retardant treatments of textiles.
`5.
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`I am a Chartered Textile Technologist (CText) as confirmed by
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`the Textile Institute, which is the only worldwide organization that recognizes the
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`professional status of Textile Technologists.
`6.
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`I have been a Fellow of the Textile Institute (FTI) since 1989,
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`
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`1
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`
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`
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`which is a title that was awarded to me for significant contributions in the area of
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`flame retardant textiles.
`7.
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`Through my education and experience, I am familiar with
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`stitchbonding as a technique for non-woven fabric formation and with intumescent
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`barrier chemistry for use in treating textiles. Through my research, which has
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`included developing technology for which patent applications were filed and
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`issued in the area of intumescent-containing fabrics, I have treated a range of non-
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`woven fabrics including stitchbonded fabrics with intumescent materials and have
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`analyzed their performance characteristics. My colleagues recognize me as one of
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`the world’s leading experts regarding the use of intumescent materials, including
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`coatings, in connection with various substrates, and particularly the use of
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`intumescent coatings on textiles.
`8. My Curriculum Vitae, which is attached, includes a list of
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`honors, publications, presentations, and other information that shows my expertise
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`in the area to which the '162 patent is directed.
`C. Compensation
`9.
`I am being compensated as follows:
`
`(a)
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`Professional activities: £120 per hour or £950 per day:
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`this includes writing researching and producing reports; appearing at
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`meetings and in legal environments;
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`
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`2
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`
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`(b) Travel time: £450 per 24 hour period or a pro rata
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`fraction thereof with a minimum charge of £300 if travelling there and back
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`within a "day/evening" period is possible from Bolton; and
`(c) All expenses such as travel costs, accommodation,
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`subsistence and other "out of pocket" expenses are in addition to the above.
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`My compensation is not contingent on the outcome of any matter or the
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`specifics of my testimony. I have no financial interest in the Petitioner or in the
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`ˈ639 patent.
`D. Materials and Information Considered
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`10. My opinions, as explained below, are based on my years of
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`education, research, experience, and background as discussed above, as well as my
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`investigation and study of materials relevant to the issues addressed herein. In
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`forming my opinions, I have considered the materials I identify in this declaration.
`11. Additionally, I am aware of information generally available to,
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`and relied upon by, persons of ordinary skill in the art today and at the time period
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`during which the application for the '162 patent was filed, including technical
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`reference materials such as textbooks, manuals, technical papers and published
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`articles.
`II. DECLARATION OF MR. BRIAN CALLAWAY
`12.
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`I have reviewed the declaration of Mr. Brian Callaway (the “Callaway
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`
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`3
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`
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`Declaration”, Ex. 1002) being submitted in conjunction with the petition for inter
`partes review of the ˈ162 patent and I agree with the technical content of that
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`declaration and his conclusions reached therein.
`III. LEGAL STANDARDS FOR PATENTABILITY
`A. General
`13.
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`In expressing my opinions and considering the subject matter
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`of the challenged claims of the ˈ162 patent, I am relying upon certain basic legal
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`principles that have been provided to me.
`14.
`
`I understand that in this proceeding Tietex has the burden of
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`proving that the challenged claims of the ˈ162 patent are unpatentable by a
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`preponderance of the evidence. I understand that under “a preponderance of the
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`evidence” standard, Tietex must show that evidence is more likely true than it is
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`not.
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`15.
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`I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from
`
`what was known before the invention was made.
`16.
`
`I understand that only the obviousness of the challenged claims
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`of the '162 patent are at issue here.
`17.
`
`I understand the information that is used to evaluate whether a
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`claimed invention is patentable is generally referred to as “prior art” and includes,
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`4
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`
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`for purposes of the Petition, patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
`B.
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`Effective Filing Date of Claimed Subject Matter
`18.
`
`I understand that in order to be considered “prior art" for
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`the purposes of the present Petition, patents or printed publications must predate
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`the effective filing date for the subject matter claimed in the ˈ162 patent.
`19.
`
`I have been advised that the effective filing date of the
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`challenged claims of the ˈ162 patent is May 14, 2001.
`C. Claim Construction Standard
`20.
`I understand that d ur i n g i n t e r p a r t e s r e v ie w o f the
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`ˈ162 patent the claims must be given their broadest reasonable interpretation
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`consistent with the specification. The claims after being construed in this
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`manner are then to be compared to the information in the prior art, which for
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`this proceeding is limited to patents and printed publications. I also understand
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`that, at the same time, absent some reason to the contrary, claim terms are
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`typically given their ordinary and accustomed meaning as would be understood by
`
`one of ordinary skill in the art.
`D. Obviousness
`21.
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`I understand that for a single reference or a combination of
`
`references to render obvious a claimed invention, a person of ordinary skill in
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`5
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`
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`the art must have been able to arrive at the claimed invention by modifying
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`and/or combining the applied references.
`22.
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`I have been informed that a patent claim can be found
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`unpatentable as obvious where the differences between the subject matter patented
`
`and the prior art are such that the subject matter as a whole would have been
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`obvious at the time the invention was made to a person of ordinary skill in the
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`relevant field. Specifically, I understand that the obviousness question involves a
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`consideration of:
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`x the scope and content of the prior art;
`x the differences between the prior art and the claims at issue;
`x the knowledge of a person of ordinary skill in the pertinent art;
`and
`x whatever objective factors indicating obviousness or non-
`obviousness may be present
`in any particular case –
`referred to as “secondary considerations.”
`
`23.
`
`I understand that "secondary considerations" include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unmet need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) the taking of licenses under the patent by
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`others and (h) the patentee proceeded contrary to the accepted wisdom of the prior
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`art. I have been informed that secondary considerations are relevant where there is a
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`6
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`connection, or nexus, between the evidence and the claimed invention.
`24.
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`In addition, I understand that the obviousness inquiry should
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`not be done in hindsight, but must be done using the perspective of a person of
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`ordinary skill in the relevant art as of the effective filing date of the patent claim.
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`25.
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`I understand that in order for a claimed invention to be
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`considered obvious, there must be some rationale for combining cited references as
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`proposed; that obviousness may also be shown by demonstrating that it would have
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`been obvious to modify what is taught in a single piece of prior art to create the
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`patented invention; and that obviousness may be shown by establishing that it
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`would have been obvious to combine the teachings of more than one item of
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`prior art. I have been told that, in determining whether a piece of prior art could
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`have been combined with other prior art or with other information within the
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`knowledge of one of ordinary skill in the art, the following are examples of
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`approaches and rationales that may be considered:
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`(A) Combining prior art elements according to known methods
`to yield predictable results;
`(B) Simple substitution of one known element for another to
`obtain predictable results;
`
`(C) Use of a known technique to improve similar devices
`(methods or products) in the same way;
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`(D) Applying a known technique to a known device (method or
`product) ready for improvement to yield predictable results;
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`7
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`
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`(E) Applying a technique or approach chosen from a finite
`number of identified, predictable solutions, with a reasonable
`expectation of success;
`
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`(F) Known work in one field of endeavor may prompt variations
`of it for use in either the same field or a different one based on
`design incentives or other market forces if the variations would
`have been predictable to one of ordinary skill in the art; or
`
`
`(G) Some teaching, suggestion, or motivation in the prior art that
`would have led one of ordinary skill to modify the prior art reference
`or to combine prior art reference teachings to arrive at the claimed
`invention.
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`I also understand that this suggestion or motivation may come from such
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`sources as explicit statements in the prior art, or from the knowledge or
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`common sense of one of ordinary skill in the art.
`26.
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`I understand that an invention that might be considered an
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`obvious variation or modification of the prior art may be considered non-obvious
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`if one or more prior art references discourages or lead away from the line of
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`inquiry disclosed in the reference(s). However, I have been informed that a
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`reference does not “teach away” from an invention simply because the reference
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`suggests that another embodiment of the invention is better or preferred. My
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`understanding of the doctrine of teaching away requires a clear indication that
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`the combination should not be attempted (e.g., because it would not work or
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`explicit statement saying the combination should not be made).
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`8
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`IV. THE PERSON OF ORDINARY SKILL IN THE RELEVANT FIELD
`AND IN THE RELEVANT TIMEFRAME
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`27. Based on my review of these materials, I believe that the relevant
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`field for purposes of the ˈ162 patent is thermally protective nonwoven fabric.
`28. As described above, I am familiar with stitchbonding as a technique
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`for non-woven fabric formation and with intumescent barrier chemistry for use in
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`treating textiles. Based on my education and experience, I therefore have
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`an established understanding of the relevant field.
`29.
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`I understand that a “person of ordinary skill in the art” is one who is
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`presumed to be aware of all pertinent art as of the relevant timeframe, thinks along
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`conventional wisdom in the art, and is a person of ordinary creativity. I understand
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`that the level of o rd inar y skill in the art is evidenced by the prior art
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`references. It is my understanding that the ˈ162 patent is to be interpreted based
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`on how it would be read by a person of ordinary skill in the art. It is my
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`understanding that factors such as the education level of those working in the field,
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`the sophistication of the technology, the types of problems encountered in the art,
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`the prior art solutions to those problems, and the speed at which innovations are
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`made may help establish the level of skill in the art. I understand that a person of
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`ordinary skill in the art is not a specific real individual, but rather is a hypothetical
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`individual having the qualities reflected by the factors above.
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`9
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`30.
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`I understand the relevant timeframe for evaluating a claim is at the
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`time of the invention, which is based on the effective filing date of each claim, or
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`the date at which the subject matter of the claim was first disclosed in an
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`application in such full, clear, concise, and exact terms as to enable the person
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`skilled in the art to make and use the claimed invention.
`31. My opinion is that one of ordinary skill in the art would have an
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`undergraduate degree in a discipline such as chemistry, chemical engineering or
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`other related engineering disciplines, materials science, textile engineering, or
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`textile or paper chemistry, or related disciplines. Such person would most likely be
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`employed in the textile industry but should also have some experience in flame
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`retardancy. Such a person would be familiar with man-made and natural fibers and
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`flame retardant treatments for substrates. I believe that a minimum of two years of
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`experience with textiles and a minimum of two years of flame retardancy
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`experience would likely be required.
`32. Based on my experience, I have an understanding of the capabilities
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`of a person of ordinary skill in the relevant field as of May 14, 2001.
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`V.
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`THE STATE OF THE ART IN THE RELEVANT FIELD AND
`IN THE RELEVANT TIMEFRAME
`
`33. Prior to the relevant date of May 14, 2001, thermal protective fabrics
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`were known in the art. (ˈ162 patent, col.1, lns. 25 – 31)
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`
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`10
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`
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`34. Prior to the relevant date, coatings formed from one or more
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`intumescent compositions had been used to absorb heat and had been used on
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`textiles. ('162 patent, col.1, lns. 57 – 61)
`35. Prior to the relevant date, phosphorous-based flame retardants had
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`been used to treat nonwoven, single layer, stitchbonded webs containing cellulosic
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`and/or polyester fibers and having a basis weight of from 50 to 500 grams per
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`square meter (i.e., 1.5 to 14.7 ounces per square yard) and thicknesses of from 100
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`to 3000 microns (i.e., 0.004 to 0.12 inches). (U.S. Patent No. 6,436,528 "Külper",
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`col. 2, ln 49 – col. 3, ln 28; col. 5, lns 47 – 52; col. 5: lns 32 – 36)
`36. Prior to the relevant date, many commercial flame-retardant products
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`were available for use on fabrics and some of the products are listed in Table 2 of
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`the ˈ162 patent.
`37. Prior to the relevant date, intumescent coatings were available for use
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`on fabrics to provide thermal protection and some of those intumescent coatings
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`are listed in Table 3 of the ˈ162 patent.
`38. Prior to the relevant date, phosphorous-based intumescent coatings
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`were known to be applied to stitchbonded fabrics containing cellulosic and aramid
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`fibers. (GB Patent Application No. 2,293,572 "Rowan", pgs. 7 – 8, carryover
`
`paragraph).
`39. Prior to the relevant date, single layer nonwoven webs having a basis
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`11
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`
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`weight of from 15 to 200 grams per square meter (i.e., 0.4 to 5.9 ounces per square
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`yard) and containing cellulosic, and/or thermoplastic fibers had been coated with a
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`phosphorous-containing flame retardant coating in amounts ranging from 15 to 35
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`weight % solids. (U.S. Patent No. 5,912,196, "Radwanski" col.10, lns 2 – 3, 13 –
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`15, 29 – 53; col. 12, lns 51 – 55; col. 16, lns 41-42)
`40. Prior to the relevant date, it was known to apply flame retardant
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`intumescent coatings onto non-woven webs containing cellulosic and polyester
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`fibers and heat resistant fibers such as asbestos and metal fibers and being from
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`0.005 to 1.0 inch. (U.S. Patent No. 3,934,066 "Murch", col.4, lns 6 – 12, lns 15 –
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`19; col. 10, lns 13 – 15)
`
`41. Prior to the relevant date, one of ordinary skill in the art would have
`
`found it obvious to construct a flame retardant, intumescent fabric in accordance
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`with the teachings of the prior art with a thermal protective performance value of at
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`least 4.5. This finding was made in USPTO Board of Patent Appeals and
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`Interferences Appeal Decision 2011-001870 dated 7 September 2011 (“USPTO
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`Appeal Decision”) in patent application 12/172,681 which issued as the ˈ162 patent.
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`(“USPTO Appeal Decision” p.3, ln 17 – p. 4, ln. 2).
`
`42. The TPP test referenced in the ˈ162 patent is one of several testing
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`procedures for determining the protective performance of materials when the
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`materials are exposed to defined heat flux intensities. The TPP test, to my
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`12
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`
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`knowledge, has been confined to the field of protective clothing such as that used
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`by firefighters. In order to carry out the test, specialized equipment and specialized
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`procedures are required.
`43. The TPP test, and
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`its related thermal protective performance
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`efficiency, measures the performance of a material to protect a wearer against a
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`defined level of burn injury. The performance of the material, and thus the results
`
`of the TPP test, is determined by the structure of the material and any treatment of
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`the material that increases the general protective characteristics of the material.
`44. The common denominators that allow a material to be an effective
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`thermal barrier fabric are the thickness of the fabric, the amount of air entrapped
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`within the fabric, and the ability of the fabric to retain a sufficient level of
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`entrapment during exposure to heat. If an appropriate material structure is
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`employed to create a thermally protective barrier, then the TPP and thermal
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`protective performance efficiencies set forth in the ˈ162 patent will be necessarily
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`met. In other words, it is the material structure and any treatment of the material
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`that will result in acceptable performance test results such as TPP values. That is,
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`materials that have the necessary structure or treatment will necessarily meet the
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`performance tests set forth in the ˈ162 patent.
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`13
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`
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`VI. THE ˈ162 PATENT
`A. Content of the ˈ162 patent subject matter
`45. The ˈ162 patent relates generally
`
`to a nonwoven fabric of
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`stitchbonded construction treated with a commercially available intumescent flame
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`retardant finish.
`46.
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`In my opinion, the technology of the challenged claims 1 - 3 0 of
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`the ˈ162 patent was the result of the combination of two well known and
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`commercially available components (i.e. known, off-the-shelf intumescent finishes
`
`such as those listed in Table 3 of the written description and known stitchbonded
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`fabrics containing blends of well known fibers) resulting in a fully predictable
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`flame retardant product. Any person of ordinary skill in the art with knowledge of
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`the prior art references cited therein would have been motivated to make the
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`claimed invention by applying any one of the numerous available intumescent
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`finishes to a known stitchbonded fabric (which was described by both Murch and
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`by Rowan) and to have optimized the details of that combination to yield desired
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`performance characteristics such as TPP.
`47.
`
`In my opinion it would have been obvious to arrive at the combination
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`claimed in the ˈ162 patent based on the recognized benefits of intumescent finishes
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`in providing thermal protection to stitchbonded fabrics as taught by Rowan.
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`(Rowan, pgs. 7 – 8, carryover paragraph).
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`
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`14
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`
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`48. The ˈ162 patent does not specify any unique treatment conditions,
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`fiber percentages, yarn types or stitching details necessary to realize the benefit of
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`the claimed combination.
`49.
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`It was known prior to the priority date of the ˈ162 patent to apply to
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`fabrics, such as nonwoven stitchbonded fabrics, intumescent materials that included
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`an acid source, a carbonific material, a spumific compound, and a skin-forming soft
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`resin binder. (Rowan, pgs. 7 – 8, carry-over paragraph and first full paragraph))
`50.
`
`In my opinion, the patent examiner's allowance of the ˈ162 patent
`
`indicates a possible lack of understanding of the teachings in the Rowan prior art
`
`reference as the feature of treating a single layer stitchbonded fabric with a
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`phosphorous containing intumescent finish is clearly taught in that reference at
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`Figure 1 and pages 7 – 8.
`51. The Rowan application explains that "any of the conventional
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`techniques of fabric production may be employed to produce the fabric of the
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`present invention, including weaving, knitting, needle punching, stitch bonding and
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`adhesive bonding." Rowan at Fig. 1 & pgs. 7 – 8, carry-over paragraph.
`52. The listing of weaving, knitting, needle punching, stitch bonding and
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`adhesive bonding as alternatives only makes sense in the context of forming one of
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`the coated single layers of Rowan. Weaving and knitting, for example, cannot be
`
`used to form a multi-layer composite of the type illustrated in Figure 2 of Rowan.
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`
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`15
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`
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`Instead, they could only be used to create the single layer fabric shown in Figure 1
`
`of Rowan.
`53. Accordingly, one of ordinary skill in the art would understand Rowan
`
`to teach that stitchbonding, as well as weaving, knitting, needle punching and
`
`adhesive bonding, may be used to form the single layer non-woven web of Figure
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`1.
`
`B. Construction of Terms in the Challenged Claims
`54.
`
`I understand that the '162 patent is to be used to determine what the
`
`claims encompass. I also understand that, at the same time, absent some reason
`
`to the contrary, claim terms are typically given their ordinary and accustomed
`
`meaning as would be understood by one of ordinary skill in the art. I have used
`
`this standard in evaluating what the claims define, as well as terms used in the
`
`claims.
`VII. PATENTABILITY ANALYSIS OF THE CHALLENGED CLAIMS
`A. Ground 1: Claims 1 – 30 are invalid under 35 U.S.C. § 103(a) over
`U.S. Patent 6,436,528 to Külper in view of GB 2293572 (Rowan)
`
`55.
`
`I agree with Mr. Callaway’s explanation of the content of the cited
`
`patents in Ground 1. (Callaway Declaration at ¶¶ 60-64)
`56. Külper discloses a stitch-bonded nonwoven material for use in
`
`construction of a tape. (Külper, col. 3, lns 13 – 21)
`57.
`
`In Külper, the starting materials for the textile are disclosed to be
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`16
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`
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`polyester fibers, polypropylene fibers, viscose (i.e. rayon) fibers or cotton fibers.
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`Külper further discloses that a large number of further fibers can be used to
`
`produce the webs which are evident to the person skilled in the art without the need
`
`for an inventive step. (Külper, col. 3, lns 22 – 28)
`
`58. Külper discloses that the textile web may be flameproofed by the
`
`addition of phosphorus-containing
`
`flame
`
`retardants such as ammonium
`
`polyphosphate and or/the selection of suitable fibers of low or zero flammability.
`
`(Külper, col. 5, lns. 47 – 52)
`59. Aramid fibers are common low or zero flammability fibers.
`60. Külper further discloses basis weights for the nonwoven web of 50
`
`grams per square meter to 500 grams per square meter, which equates to 1.5 to
`
`14.7 ounces per square yard, and web thicknesses of from 100 µm to 3000 µm,
`
`which equates to 0.004 to 0.12 inch. (Külper, col. 5, lns. 31 – 36)
`61. Rowan specifically discloses a single layer stitch-bonded fabric sheet
`
`(Fig. 1) incorporating a combination of cellulosic viscose rayon fibers (pg. 6, last
`
`carry-over paragraph to pg. 7) and aramid fibers (pg. 9, third paragraph). This
`
`fabric sheet is treated with an intumescent finish to provide thermal protection.
`
`(pgs. 7 – 8, carry-over paragraph and first paragraph on pg. 8). Moreover, the
`
`intumescent composition disclosed in Rowan corresponds precisely to the
`
`description of the intumescent system set forth in the ˈ162 patent. In particular,
`
`
`
`17
`
`
`
`
`
`Rowan discloses that the organic intumescent material may comprise an acid
`
`source, a carbonific material, a spumific compound and a skin-forming soft resin
`
`binder. (pg. 8, first full paragraph) Moreover, Rowan discloses that the acid
`
`source may be, for example mono- or di-ammonium phosphate, ammonium
`
`polyphosphate, melamine phosphate, guanyl phosphate, and urea phosphate. (pg. 8,
`
`first full paragraph).
`
`Claim 1
`62. Claim 1 of the ˈ162 patent recites the following elements:
`
`x A fabric consisting of a single layer of a non-woven substrate;
`
` x
`
` x
`
` wherein the non-woven substrate comprises cellulosic fibers,
`polyester fibers and aramid fibers;
`
` wherein
`treated with an
`is
`substrate
`the non-woven
`intumescent, flame retardant finish comprising one or more
`compounds comprising phosphorous and/or nitrogen;
`
` wherein the non-woven substrate has a basis weight
`ranging from 2.0 to 15.0 ounces per square yard;
`
` wherein the non-woven substrate is a non-woven, stitchbonded
`substrate; and
`
` x
`
` x
`
` wherein the fabric has a thickness ranging from 0.01 to 0.15
`inches.
`
` x
`
`63.
`
`I am in agreement with Mr. Callaway’s analysis of Claim 1 relative to
`
`the documents cited in Ground 1 (Callaway Declaration at ¶¶ 69- 82). I will not
`
`repeat that analysis here.
`
`
`
`18
`
`
`
`
`
`64.
`
`It would have been obvious to a person of ordinary skill in the art in
`
`May 2001 to utilize in Külper a single layer non-woven substrate containing
`
`cellulosic fibers and polyester fibers and coated with a phosphorous-containing
`
`flame retardant and having a basis weight within the range of 2.0 to 15.0 ounces
`
`per square yard, and having a thickness within the range of from 0.1 and 0.15 inch
`
`and wherein the non-woven substrate is a non-woven stitchbonded substrate all as
`
`taught by Külper, and wherein the substrate further includes aramid fibers and
`
`wherein
`
`the phosphorous-containing
`
`flame
`
`retardant
`
`is an
`
`intumescent
`
`phosphorous-containing finish, based on the teaching in Rowan to use aramid
`
`fibers in combination with cellulosic fibers and to use intumescent finishes on
`
`stitchbonded fabrics containing cellulose and aramid fibers for heat and fire
`
`resistance. This combination results in the construction recited in claim 1.
`
`Claim 2 - The fabric of claim 1, wherein the fabric has a contact
`
`thermal protective performance value of at least 6.5.
`65. As noted above, the TPP test, to my knowledge, has been confined to
`
`the field of protective clothing such as that used by firefighters. In order to carry
`
`out the test, specialized equipment and specialized procedures are required.
`66. The performance of the material, and thus the results of the TPP test,
`
`is determined by the structure of the material and any treatment of the material that
`
`increases the general protective characteristics of the material.
`67. The common denominators that allow a material to be an effective
`19
`
`
`
`
`
`
`
`thermal barrier fabric are the thickness of the fabric, the amount of air entrapped
`
`within the fabric, and the ability of the fabric to retain a sufficient level of
`
`entrapment during exposure to heat. If an appropriate material structure is
`
`employed to create a thermally protective barrier, then the TPP and thermal
`
`protective performance efficiencies set forth in the ˈ162 patent will necessarily be
`
`met. In other words, it is the material structure and any treatment of the material
`
`that will result in acceptable performance test results such as TPP values. That is,
`
`materials that have the necessary structure or treatment will necessarily meet the
`
`performance tests set forth in the ˈ162 patent.
`68. Moreover, as found by the Board of Patent Appeals and Interferences,
`
`one of ordinary skill in the art would have found it obvious to construct a flame
`
`retardant, intumescent fabric in accordance with the teachings of the prior art with
`
`a thermal protective performance value of at least 4.5 (USPTO Appeal Decision,
`
`pg. 3, ln 17 – pg. 4, ln 2) and 6.5 is at least 4.5, thus making a thermal protective
`
`performance value of at least 6.5 obvious.
`69. Therefore, the combination of Külper and Rowan, taken together with
`
`the obviousness of thermal protective performance values of at least 4.5 as
`
`established by the Board of Appeals, teaches all the limitations of claim 2, thus
`
`making the claimed invention of claim 2 obvious since the claimed invention is
`
`merely the result of combining prior art elements according to known methods to
`
`
`
`20
`
`
`
`
`
`yield predictable results.
`
`Claim 3 - The fabric of claim 1, wherein the fabric has a contact
`thermal protective performance value of at least 9.0.
`70. The combination of Külper and Rowan, taken tog
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