`Tel: 571-272-7822
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`Paper 26
`Entered: March 23, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`REACTIVE SURFACES LTD., LLP,
`Petitioner,
`
`v.
`
`TOYOTA MOTOR CORPORATION,
`Patent Owner.
`
`Case IPR2016-01914
`Patent 8,394,618 B2
`
`Before CHRISTOPHER M. KAISER, JEFFREY W. ABRAHAM, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2016-01914
`Patent 8,394,618 B2
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`INTRODUCTION
`
`A. Background
`Reactive Surfaces Ltd., LLP (“Petitioner”) filed a Petition (Paper 1,
`“Pet.”) requesting inter partes review of claims 1–11 of U.S. Patent No.
`8,394,618 B2 (Ex. 1001, “the ’618 patent”). The Patent Owner did not file a
`Preliminary Response.
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). The standard for
`instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted unless “there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition.”
`After considering the Petition and the evidence currently of record, we
`determine that Petitioner has demonstrated that there is a reasonable
`likelihood that it would prevail with respect to at least one of the claims
`challenged in the Petition. Accordingly, we institute inter partes review.
`
`B. Related Matters
`The parties have not identified any judicial or administrative matters
`that involve the ’618 patent or that are otherwise related to this case.1 Pet. 1;
`Paper 4, 1.
`
`
`1 The parties note that the ’618 patent was the subject of Reactive Surfaces
`Ltd. LLP v. Toyota Motor Engineering & Manufacturing North America,
`Inc., Case No. 1-13-CV-1098-LY (W.D. Tex.), and Reactive Surfaces Ltd.
`LLP v. Toyota Motor Corporation, Case No. 1:14-CV-1009-LY (W.D.
`Tex.), both of which have been dismissed without prejudice. Pet. 1–2; Paper
`4, 1.
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`Patent 8,394,618 B2
`C. The Asserted Grounds of Unpatentability
`Petitioner contends that claims 1–11 of the ’618 patent are
`unpatentable based on the following grounds (Pet. 32, 35–63):2
`Statutory
`Basis
`Challenged Claim(s)
`Ground
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`§ 103
`
`Van Antwerp3
`Van Antwerp and Bostek4
`Van Antwerp and Moon5
`Van Antwerp and Hamade6
`Schneider7
`Schneider and McDaniel8
`Drevon9
`Drevon and Schneider
`
`1–3
`4 and 5
`6–9
`10 and 11
`1–8, 10, and 11
`9
`1–9
`10 and 11
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`2 Petitioner also relies on a declaration from Dr. David Rozzell. Ex. 1010.
`3 Van Antwerp, U.S. Patent No. 5,868,720, issued Feb. 9, 1999 (Ex. 1005,
`“Van Antwerp”).
`4 C. Carl Bostek, Effective Methods of In-Line Intravenous Fluid Warming at
`Low to Moderate Infusion Rates, 60 J. AM. ASS’N NURSE ANESTHETISTS 561,
`561–66 (Dec. 1992) (Ex. 1009, “Bostek”).
`5 Moon et al., US 2005/0176905 A1, published Aug. 11, 2005 (Ex. 1006,
`“Moon”).
`6 Hamade et al., U.S. Patent No. 6,150,146, issued Nov. 21, 2000 (Ex. 1007,
`“Hamade”).
`7 Schneider et al., US 2005/0147579 A1, published July 7, 2005 (Ex. 1004,
`“Schneider”).
`8 McDaniel, US 2004/0109853 A1, published June 10, 2004 (Ex. 1008,
`“McDaniel”).
`9 Géraldine F. Drevon, Enzyme Immobilization into Polymers and Coatings
`(Ph.D. Thesis, University of Pittsburgh, Nov. 2002) (Ex. 1003, “Drevon”).
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`D. The ’618 Patent
`The ’618 patent is directed to a “substrate or coating . . . that includes
`a lipase with enzymatic activity toward a component of a fingerprint” and “a
`process for facilitating the removal of fingerprints . . . wherein an inventive
`substrate or coating including a lipase is capable of enzymatically
`degrading . . . one or more components of the fingerprint to facilitate
`fingerprint removal from the substrate or said coating.” Ex. 1001, at [57].
`“Fingerprint” is defined in the ’618 patent as “a bioorganic stain, mark, or
`residue left behind after an organism touches a substrate or coating,” and it
`“is not limited to marks or residue left behind after a substrate is touched by
`a finger.” Id. at 3:1–4. “Other sources of bioorganic stains are illustratively,
`palms, toes, feet, face, any other skin surface area, hair, stains from fats used
`in cooking such as cis-fatty acids, or fatty acids from any other source.” Id.
`at 3:4–8.
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`E. Illustrative Claims
`All the claims of the ’618 patent are challenged. Claim 1 is
`independent and illustrative; it recites:
`
`1. A method of facilitating the removal of a fingerprint on a
`substrate or a coating comprising:
`providing a substrate or a coating;
`associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a
`component of a fingerprint, and
`facilitating the removal of a fingerprint by vaporization
`from the lipase associated substrate or coating when
`contacted by a fingerprint.
`Id. at 15:18–27.
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`ANALYSIS
`
`A. Claim Construction
`In an inter partes review, we construe claim terms in an unexpired
`patent according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); see
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144 (2016) (upholding
`the use of the broadest reasonable interpretation standard). Claim terms
`generally are given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`Petitioner proposes construing “facilitating the removal of a
`fingerprint by vaporization,” a term that appears in claim 1, as “enabling a
`bioorganic material deposited by an organism through touching a lipase
`associated substrate or coating to transition from an initial quantity of
`visually apparent bioorganic material being on such substrate or coating to a
`lesser quantity of visually apparent bioorganic material being thereon.”
`Pet. 22 (citing Pet. 8–22). This proposed construction generally is supported
`by the Specification of the ’618 patent. Ex. 1001, 3:1–9 (defining
`“fingerprint” as not limited to marks left by touching a surface with a finger,
`but also including other “bioorganic stains”). It does, however, expand the
`scope of the phrase beyond removal of fingerprints “by vaporization” to
`include removal by any and all means. Petitioner explains its deletion of the
`limitation “by vaporization” from its proposed construction by arguing that
`“‘removal of a fingerprint by vaporization’ does not find antecedent basis”
`earlier in claim 1. Pet. 21–22. According to Petitioner, because of this lack
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`of antecedent basis, the “removal of a fingerprint by vaporization” is not
`“necessarily . . . dependent on enzymatic degradation of a component of a
`fingerprint.” Id. at 22. This does not explain why a person of ordinary skill
`in the art would understand “facilitating the removal of a fingerprint by
`vaporization” to include enabling the reduction of the amount of bioorganic
`material by any and all means. Accordingly, we do not adopt Petitioner’s
`proposed construction to the extent that it extends the permissible means of
`fingerprint removal beyond vaporization. For purposes of the present
`decision, and based on the current record, we construe “facilitating the
`removal of a fingerprint by vaporization” as “enabling a bioorganic material
`deposited by an organism through touching a surface to transition, by
`vaporization of the bioorganic material, from an initial quantity of visually
`apparent bioorganic material being on such substrate or coating to a lesser
`quantity of visually apparent bioorganic material being thereon.”
`
`B. Asserted Obviousness over Van Antwerp
`Petitioner argues that the subject matter of claims 1–3 would have
`been obvious to a person of ordinary skill in the art given the teachings of
`Van Antwerp. Pet. 32, 35–39.
`
`1. Van Antwerp
`Van Antwerp relates to “[a]n improved indwelling catheter adapted
`for long-term usage [that] includes a stable enzyme coating to prevent
`occlusion of the catheter lumen.” Ex. 1005, at [57]. The catheter of
`Van Antwerp “includes a stable and substantially immobilized enzyme
`coating to prevent formation of and/or to dissolve occlusions along the
`catheter lumen,” and the enzyme is disclosed as “fibrinolytic and/or
`lipolytic.” Id. at 2:34–40. The catheter itself “is commonly constructed
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`from a polymeric material, such as medical grade silicone rubber,
`polyethylene, or the like.” Id. at 3:65–67. The lipolytic enzyme of the
`catheter coating “combines with grease or soap-like phospholipids produced
`in the presence of body fluids and certain medications, to produce soluble
`lipase compounds,” which causes the occlusion to be dissolved. Id. at 6:14–
`24.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–3 are taught or
`suggested by Van Antwerp. Pet. 36–39.
`
`a. Claim 1
`There is sufficient evidence, on the present record and for present
`purposes, that Van Antwerp teaches or suggests “providing a substrate or a
`coating” and “associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a component of a
`fingerprint.” Pet. 36–37 (citing Ex. 1005, 2:34–42, 3:41–44, 3:65–67, 4:8–
`26, 6:14–18, Fig. 4).
`It is a closer case whether Van Antwerp teaches or suggests
`“facilitating the removal of a fingerprint by vaporization from the lipase
`associated substrate or coating when contacted by a fingerprint.”
`Van Antwerp does not disclose the evaporation of bioorganic stains, because
`the enzyme coating of Van Antwerp is designed for “long-term interaction
`with body fluids to prevent and/or dissolve clots and occlusions within the
`catheter lumen.” Ex. 1005, 1:16–20. Petitioner relies on the disclosure of
`the ’618 patent and the testimony of Dr. Rozzell to show that lipase
`facilitates the vaporization of fingerprints inherently when the fingerprints
`are “in an environment that would support such vaporization,” such as “an
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`ambient environment consisting of air.” Pet. 37–38 (citing Pet. 13–15;
`Ex. 1010 ¶¶ 35–41, 94–96). The ’618 patent does not support a finding that
`it would have been known by a person of ordinary skill in the art either that
`fingerprints contain low-volatility lipids or that fingerprint lipids could be
`broken into smaller, higher-volatility molecules by contact with a lipase,
`because the disclosure cited refers to the inventors’ discovery of these facts,
`not the general knowledge in the art. Ex. 1001, 2:34–56. Dr. Rozzell’s
`testimony, however, does suggest that a person of ordinary skill in the art
`would have known (1) that fingerprints contain compounds of different
`volatilities, (2) that the presence of more high-volatility compounds would
`increase the rate at which fingerprints vaporize, and (3) that lipase could
`catalyze degradation of lipids in fingerprints to break those lipids into
`smaller molecules of higher volatility. Ex. 1010 ¶¶ 40–41 (citing Ex. 1013,
`at [57], ¶¶ 89, 91). Although Dr. Rozzell’s testimony borders on conclusory,
`it is not, on the present record, contradicted by any evidence or argument to
`the contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 1
`over Van Antwerp.
`
`b. Claim 2
`Claim 2 of the ’618 patent depends from claim 1 and adds a limitation
`requiring that the lipase be “covalently attached to [the] substrate or [the]
`coating.” Ex. 1001, 15:28–29. Petitioner argues that Van Antwerp teaches
`or suggests this limitation. Pet. 38 (citing Ex. 1005, 5:29–43, 5:59–6:9).
`Van Antwerp discloses “chemically bond[ing]” enzyme-containing capsules
`to a catheter “by silicone chemistry,” where at least some of the bonds are
`covalent. Ex. 1005, 5:29–43, 5:59–6:9. Accordingly, on the present record,
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`we determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 2 over Van Antwerp.
`
`c. Claim 3
`Claim 3 depends from claim 1 and requires that the lipase be “non-
`covalently adhered to or admixed into [the] substrate or [the] coating.”
`Ex. 1001, 15:30–32. Petitioner argues that Van Antwerp teaches or suggests
`this limitation. Pet. 38–39 (citing Ex. 1005, 2:46–50, 4:36–47).
`Van Antwerp discloses applying the enzyme to the catheter “as a thin
`micellar coating.” Ex. 1005, 2:46–50. This coating adheres to the catheter
`“in a micellar array of microsphere particles.” Id. at 4:36–47. Accordingly,
`on the present record, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 3
`over Van Antwerp.
`
`C. Asserted Obviousness over Van Antwerp and Bostek
`Petitioner argues that claims 4 and 5 would have been obvious to a
`person of ordinary skill in the art given the teachings of Van Antwerp and
`Bostek. Pet. 32, 39–40.
`
`1. Bostek
`Bostek relates to warming intravenous fluids during the administration
`of those fluids to patients. Ex. 1009, 561. Bostek discloses warming a bag
`of intravenous fluids to increase the temperature of the fluids being infused
`to 25 degrees Celsius or higher at the site of the infusion catheter. Id. at
`564–65.
`
`2. Analysis
`Petitioner argues that all limitations of claims 4 and 5 are taught or
`suggested by the combination of Van Antwerp and Bostek. Pet. 39–40.
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`a. Claim 4
`Claim 4 depends from claim 1 and adds a limitation requiring
`“heating [the] substrate or [the] coating or applying heat to a surface of said
`substrate or said coating subsequent to being contacted by a fingerprint.”
`Ex. 1001, 15:33–35. Petitioner argues that this limitation is taught or
`suggested by Bostek. Pet. 39–40 (citing Ex. 1009, 564–65). Bostek
`discloses heating intravenous fluid before it is infused into a patient, and
`Bostek teaches that this heating causes the temperature of the fluid passing
`through the catheter to rise, which would cause the catheter and its coating
`to be warmed. Ex. 1009, 564–65. In addition, Petitioner argues that a
`person of ordinary skill in the art would have been motivated to combine the
`teachings of Bostek with those of Van Antwerp because Bostek provides
`specific examples of using a catheter, such as the catheter described in
`Van Antwerp, to administer fluids to a patient. Pet. 40. The use of
`Van Antwerp’s catheter in Bostek’s heating and infusing process appears on
`the present record to be no more than the combination of prior-art elements
`according to known methods to yield predictable results. KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 417 (2007). Accordingly, on the present record,
`we determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 4 over the combination of
`Van Antwerp and Bostek.
`
`b. Claim 5
`Claim 5 depends from claim 4 and adds a limitation requiring that the
`heating take place “for at least 30 minutes.” Ex. 1001, 15:36–37. Petitioner
`argues that this limitation is taught or suggested by Bostek. Pet. 40 (citing
`Ex. 1009, 564–65). Bostek discloses infusing heated intravenous solution
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`for up to two hours. Ex. 1009, 564. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 5 over the combination of
`Van Antwerp and Bostek.
`
`D. Asserted Obviousness over Van Antwerp and Moon
`Petitioner argues that claims 6–9 would have been obvious to a person
`of ordinary skill in the art given the teachings of Van Antwerp and Moon.
`Pet. 32, 40–43.
`
`1. Moon
`Moon “relates to a monomer with anti-microbial characteristics, a
`polymeric compound with anti-microbial characteristics using the same, and
`manufacturing methods thereof.” Ex. 1006, at [57]. Moon discloses a
`“polymeric resin composition” that is “particularly useful for medical
`supplies . . . such as catheters.” Id. ¶ 59.
`
`2. Analysis
`Petitioner argues that all limitations of claims 6–9 are taught or
`suggested by the combination of Van Antwerp and Moon. Pet. 40–43.
`
`a. Claim 6
`Claim 6 depends from claim 1 and adds a limitation requiring that the
`substrate or coating “comprise[] an organic crosslinkable polymer resin.”
`Ex. 1001, 16:17–18. Petitioner argues that Van Antwerp teaches or suggests
`this limitation.10 Pet. 40 (citing Ex. 1005, 3:65–67). Van Antwerp discloses
`
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`10 Although Petitioner includes claim 6 in the group of claims challenged as
`obvious over the combination of Van Antwerp and Moon, Petitioner does
`not rely on Moon to teach or suggest any limitation of claim 6. Pet. 32, 40.
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`making its catheter from polyethylene, which is an organic crosslinkable
`polymer resin. Ex. 1005, 3:65–67. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 6 over the combination of
`Van Antwerp and Moon.
`
`b. Claim 7
`Claim 7 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin comprise[] a functional group of
`acetoacetate, acid, amine, carboxyl, epoxy, hydroxyl, isocyanate, silane,
`vinyl, or combinations thereof.” Ex. 1001, 16:19–22. Petitioner argues that
`Moon teaches or suggests this limitation. Pet. 40–41 (citing Ex. 1006 ¶¶ 59,
`112, 115, 119). Moon discloses antimicrobial polymeric resin materials for
`use in medical supplies, such as catheters, and Moon discloses that these
`materials may include isocyanate, hydroxyl, or epoxy functional groups.
`Ex. 1006 ¶¶ 59, 112, 115, 119. In addition, Petitioner argues that a person of
`ordinary skill in the art would have been motivated to combine the teachings
`of Moon with those of Van Antwerp because Moon discloses making a
`catheter, such as that disclosed in Van Antwerp, from materials that have
`improved antimicrobial characteristics. Pet. 41. The use of Moon’s
`materials to make Van Antwerp’s catheter appears on the present record to
`be no more than the combination of prior-art elements according to known
`methods to yield predictable results. KSR, 550 U.S. at 417. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 7 over the
`combination of Van Antwerp and Moon.
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`c. Claim 8
`Claim 8 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin [be] aminoplasts, melamine
`formaldehydes, carbamates, polyurethanes, polyacrylates, epoxies,
`polycarbonates, alkyds, vinyls, polyamides, polyolefins, phenolic resins,
`polyesters, polysiloxanes, or combinations thereof.” Ex. 1001, 16:23–27.
`Petitioner argues that Van Antwerp teaches or suggests this limitation.11
`Pet. 41–42 (citing Ex. 1005, 3:65–67). Van Antwerp discloses making its
`catheter from polyethylene, which is a polyolefin. Ex. 1005, 3:65–67.
`Accordingly, on the present record, we determine that Petitioner has
`established a reasonable likelihood of prevailing in showing the obviousness
`of claim 8 over the combination of Van Antwerp and Moon.
`
`d. Claim 9
`Claim 9 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer [be] a hydroxyl-functionalized acrylate
`resin.” Ex. 1001, 16:28–29. Petitioner argues that Moon teaches or suggests
`this limitation. Pet. 42–43 (citing Ex. 1006 ¶¶ 59, 112, 115, 120–22). Moon
`discloses some polymers that are hydroxyl-functionalized acrylate resins.
`Ex. 1006 ¶¶ 120–22. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 9 over the combination of Van Antwerp and Moon.
`
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`11 Although Petitioner includes claim 8 in the group of claims challenged as
`obvious over the combination of Van Antwerp and Moon, Petitioner does
`not rely on Moon to teach or suggest any limitation of claim 8. Pet. 32, 41–
`42.
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`E. Asserted Obviousness over Van Antwerp and Hamade
`Petitioner argues that claims 10 and 11 would have been obvious to a
`person of ordinary skill in the art given the teachings of Van Antwerp and
`Hamade. Pet. 32, 43–45.
`
`1. Hamade
`Hamade relates to “[a] novel method for controlled release of
`compounds having antimicrobial activity and a novel coating composition
`capable of controlled release of compounds having antimicrobial activity.”
`Ex. 1007, at [57]. Hamade discloses producing a “compound having
`antimicrobial activity . . . by enzymatic reaction between an enzyme and a
`substrate.” Id. at 3:29–31. The enzymes used in Hamade include an
`esterase, such as triacylglycerol lipase and lipoprotein lipase. Id. at 4:5–15.
`
`2. Analysis
`Petitioner argues that all limitations of claims 10 and 11 are taught or
`suggested by the combination of Van Antwerp and Hamade. Pet. 43–45.
`
`a. Claim 10
`Claim 10 depends from claim 1 and adds a limitation requiring that
`the lipase be “lipoprotein lipase, acylglycerol lipase, hormone-sensitive
`lipase, phospholipase A1, phospholipase A2, phospholipase C,
`phospholipase D, phosphoinositide phospholipase C, a lysophospholipase, or
`a galactolipase.” Ex. 1001, 16:30–34. Petitioner argues that Hamade
`teaches or suggests this limitation. Pet. 43–44 (citing Ex. 1007, 4:7–15,
`7:31–35). Hamade discloses a coating that produces antimicrobial activity
`using an enzyme that can be lipase, such as triacylglycerol lipase or
`lipoprotein lipase. Ex. 1007, 4:7–15, 7:31–35. In addition, Petitioner argues
`that a person of ordinary skill in the art would have been motivated to
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`combine the teachings of Hamade with those of Van Antwerp because a
`person of ordinary skill in the art would have sought enzymes that “exhibit
`enzymatic activity against various lipids.” Pet. 44. The use of Hamade’s
`lipases to coat Van Antwerp’s catheter appears on the present record to be
`no more than the combination of prior-art elements according to known
`methods to yield predictable results. KSR, 550 U.S. at 417. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 10 over the
`combination of Van Antwerp and Hamade.
`
`b. Claim 11
`Claim 11 depends from claim 1 and adds a limitation requiring that
`the lipase be “a triacylglycerol lipase.” Ex. 1001, 16:35–36. Petitioner
`argues that Hamade teaches or suggests this limitation. Pet. 44–45 (citing
`Ex. 1007, 4:7–15, 7:31–35). Hamade discloses a coating that produces
`antimicrobial activity using an enzyme that can be lipase, such as
`triacylglycerol lipase or lipoprotein lipase. Ex. 1007, 4:7–15, 7:31–35.
`Accordingly, on the present record, we determine that Petitioner has
`established a reasonable likelihood of prevailing in showing the obviousness
`of claim 11 over the combination of Van Antwerp and Hamade.
`
`F. Asserted Obviousness over Schneider
`Petitioner argues that claims 1–8, 10, and 11 would have been obvious
`to a person of ordinary skill in the art given the teachings of Schneider.
`Pet. 32, 45–53.
`
`1. Schneider
`Schneider “relates to a coating composition comprising at least one
`enzyme capable of acting on a compound, wherein said action results in the
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`formation of an antifouling species comprising an antifouling activity.”
`Ex. 1004, at [57]. The enzymes used in Schneider include “an esterase,
`including a lipase.” Id. ¶ 52. When a lipase is used, Schneider teaches that
`it “degrade[s] cell wall lipids and other lipid associated macro-molecules at
`the surface of microbial organisms.” Id. ¶ 72.
`
`2. Analysis
`Petitioner argues that all limitations of claims 1–8, 10, and 11 are
`taught or suggested by Schneider. Pet. 46–53.
`
`a. Claim 1
`There is sufficient evidence, on the present record and for present
`purposes, that Schneider teaches or suggests “providing a substrate or a
`coating” and “associating a lipase with said substrate or said coating such
`that said lipase is capable of enzymatically degrading a component of a
`fingerprint.” Pet. 46–47 (citing Ex. 1004 ¶¶ 50, 52, 74, 88–90, 96, 125, 247,
`248, 253, 262, 269).
`It is a closer case whether Schneider teaches or suggests “facilitating
`the removal of a fingerprint by vaporization from the lipase associated
`substrate or coating when contacted by a fingerprint.” Petitioner has not
`directed us to record evidence that Schneider itself teaches or suggests the
`evaporation of bioorganic stains. Instead, Petitioner relies on the disclosure
`of the ’618 patent and the testimony of Dr. Rozzell to show that lipase
`facilitates the vaporization of fingerprints inherently when the fingerprints
`are “in an environment that would support such vaporization,” such as “an
`ambient environment consisting of air.” Pet. 47–48 (citing Pet. 13–15;
`Ex. 1010 ¶¶ 35–41, 142–44). The ’618 patent does not support a finding
`that it would have been known by a person of ordinary skill in the art either
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`that fingerprints contain low-volatility lipids or that fingerprint lipids could
`be broken into smaller, higher-volatility molecules by contact with a lipase,
`because the disclosure cited refers to the inventors’ discovery of these facts,
`not the general knowledge in the art. Ex. 1001, 2:34–56. Dr. Rozzell’s
`testimony, however, does suggest that a person of ordinary skill in the art
`would have known (1) that fingerprints contain compounds of different
`volatilities, (2) that the presence of more high-volatility compounds would
`increase the rate at which fingerprints vaporize, and (3) that lipase could
`catalyze degradation of lipids in fingerprints to break those lipids into
`smaller molecules of higher volatility. Ex. 1010 ¶¶ 40–41 (citing Ex. 1013,
`at [57], ¶¶ 89, 91). Although Dr. Rozzell’s testimony borders on conclusory,
`it is not, on the present record, contradicted by any evidence or argument to
`the contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 1
`over Schneider.
`
`b. Claim 2
`Claim 2 of the ’618 patent depends from claim 1 and adds a limitation
`requiring that the lipase be “covalently attached to [the] substrate or [the]
`coating.” Ex. 1001, 15:28–29. Petitioner argues that this type of enzyme-
`substrate bonding was well known in the art. Pet. 48–49 (citing Ex. 1010
`¶ 42). The testimony of Dr. Rozzell, to which Petitioner cites, is supported
`by some evidence that covalent bonding of enzymes was known in the art.
`Ex. 1010, Attachment G. Also, on the present record, it is not contradicted
`by any evidence or argument to the contrary. Accordingly, we determine
`that Petitioner has established a reasonable likelihood of prevailing in
`showing the obviousness of claim 2 over Schneider.
`
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`c. Claim 3
`Claim 3 depends from claim 1 and requires that the lipase be “non-
`covalently adhered to or admixed into [the] substrate or [the] coating.”
`Ex. 1001, 15:30–32. Petitioner argues that Schneider teaches or suggests
`this limitation. Pet. 49 (citing Ex. 1004 ¶¶ 110, 263). Schneider discloses
`that its compositions “can be prepared simply by mixing the various
`ingredients at a temperature at which they are not adversely affected.”
`Ex. 1004 ¶ 263. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 3 over Schneider.
`
`d. Claim 4
`Claim 4 depends from claim 1 and adds a limitation requiring
`“heating [the] substrate or [the] coating or applying heat to a surface of said
`substrate or said coating subsequent to being contacted by a fingerprint.”
`Ex. 1001, 15:33–35. Petitioner argues that this limitation is taught or
`suggested by Schneider. Pet. 49–50 (citing Ex. 1004 ¶¶ 249, 269).
`Schneider discloses using its coating on the “external surface of a central
`heating system.” Ex. 1004 ¶ 249. Accordingly, on the present record, we
`determine that Petitioner has established a reasonable likelihood of
`prevailing in showing the obviousness of claim 4 over Schneider.
`
`e. Claim 5
`Claim 5 depends from claim 4 and adds a limitation requiring that the
`heating take place “for at least 30 minutes.” Ex. 1001, 15:36–37. Citing to
`the testimony of Dr. Rozzell, Petitioner argues that this limitation is taught
`or suggested by Schneider. Pet. 49–50 (citing Ex. 1004 ¶¶ 249, 269;
`Ex. 1010 ¶ 149). Dr. Rozzell’s testimony is some evidence that a person of
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`ordinary skill in the art would have known that the “external surface of a
`central heating system” of Schneider could be “exposed to heated air for
`several hours each day.” Ex. 1004 ¶ 249; Ex. 1010 ¶ 149. That testimony is
`not, on the present record, contradicted by any evidence or argument to the
`contrary. Accordingly, we determine that Petitioner has established a
`reasonable likelihood of prevailing in showing the obviousness of claim 5
`over Schneider.
`
`f. Claim 6
`Claim 6 depends from claim 1 and adds a limitation requiring that the
`substrate or coating “comprise[] an organic crosslinkable polymer resin.”
`Ex. 1001, 16:17–18. Petitioner argues that Schneider teaches or suggests
`this limitation. Pet. 50 (citing Ex. 1004 ¶¶ 225, 253). Schneider discloses
`making its coatings from alkyd, epoxy, urethane, polyester, vinyl, or
`phenolic resins, all of which are organic crosslinkable polymer resins.
`Ex. 1004 ¶ 253. Accordingly, on the present record, we determine that
`Petitioner has established a reasonable likelihood of prevailing in showing
`the obviousness of claim 6 over Schneider.
`
`g. Claim 7
`Claim 7 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin comprise[] a functional group of
`acetoacetate, acid, amine, carboxyl, epoxy, hydroxyl, isocyanate, silane,
`vinyl, or combinations thereof.” Ex. 1001, 16:19–22. Petitioner argues that
`Schneider teaches or suggests this limitation. Pet. 50–51 (citing Ex. 1004
`¶ 253; Ex. 1010 ¶ 153). Schneider discloses making its coatings from alkyd,
`epoxy, urethane, or phenolic resins. Ex. 1004 ¶ 253. Dr. Rozzell testifies
`that epoxy, urethane, and phenolic resins “comprise epoxy, isocyanate, and
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`hydroxyl functional groups, respectively.” Ex. 1010 ¶ 153. Accordingly, on
`the present record, we determine that Petitioner has established a reasonable
`likelihood of prevailing in showing the obviousness of claim 7 over
`Schneider.
`
`h. Claim 8
`Claim 8 depends from claim 6 and adds a limitation requiring that the
`“organic crosslinkable polymer resin [be] aminoplasts, melamine
`formaldehydes, carbamates, polyurethanes, polyacrylates, epoxies,
`polycarbonates, alkyds, vinyls, polyamides, polyolefins, phenolic resins,
`polyesters, polysiloxanes, or combinations thereof.” Ex. 1001, 16:23–27.
`Petitioner argues that Schneider teaches or suggests this limitation. Pet. 51
`(citing Ex. 1004 ¶ 253). Schneider discloses making its coatings from alkyd,
`epoxy, urethane, polyester, vinyl, or phenolic resins, all of which are organic
`crosslinkable polymer resins. Ex. 1004 ¶ 253. Accordingly, on the present
`record, we determine that Petitioner has established a reasonable likelihood
`of prevailing in showing the obviousness of claim 8 over Schneider.
`
`i. Claim 10
`Claim 10 depends from claim 1 and adds a limitation