UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`REACTIVE SURFACES LTD. LLP,
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`Petitioner,
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`v.
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`TOYOTA MOTOR CORPORATION,
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`Patent Owner.
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`Case IPR2016-01914
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`Patent No. 8,394,618 B2
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`PATENT OWNER RESPONSE
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES .................................................................................... ii
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 2
`
`BACKGROUND ............................................................................................. 6
`
`A. The Invention ........................................................................................ 6
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`B.
`
`C.
`
`The Asserted Prior Art .......................................................................... 8
`
`The Level of Ordinary Skill in the Art ................................................ 10
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`III. PETITIONER HAS NOT SHOWN THAT CLAIMS 1-11
`WOULD HAVE BEEN OBVIOUS. ............................................................. 11
`
`A.
`
`Petitioner Must Show That It Would Have Been Obvious
`to Employ Lipase Specifically for the Purpose of
`Facilitating Removal of Fingerprints by Vaporization. ...................... 11
`
`1.
`
`2.
`
`3.
`
`Federal Circuit Law Allows A Method Claim to
`Be Limited to a Particular Purpose ........................................... 14
`
`The “Facilitating” Language of Claim 1 Is
`Limiting and Requires the Claimed Method to Be
`Performed for the Specific Purpose of Facilitating
`the Removal of Fingerprints. .................................................... 20
`
`Petitioner’s Case as to Why It Would Have Been
`Obvious to Use Lipase to Facilitate Evaporative
`Fingerprint Removal Rests Entirely on Buchanan. .................. 22
`
`B.
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`Petitioner Has Not Shown That It Would Have Been
`Obvious to Use Lipase for the Purpose of Facilitating the
`Removal of Fingerprints by Vaporization. .......................................... 23
`
`1.
`
`2.
`
`Petitioner Has Not Shown That Buchanan Is a
`“Printed Publication.” ............................................................... 23
`
`A POSITA Would Have Had No Reason or
`Motivation to Consult Buchanan Even if It Were a
`“Printed Publication” Because Buchanan Is Non-
`Analogous Art. .......................................................................... 27
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`
`
`i
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`

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`3.
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`The Use of Lipase for the Claimed Purpose Would
`Not Have Been Obvious Even if Buchanan Were
`Analogous Art. .......................................................................... 35
`
`a.
`
`b.
`
`c.
`
`The Flaws in Buchanan’s Data and
`Conclusions Would Have Been Apparent
`Even to Non-Experts in Forensics Science. ................... 38
`
`The Buchanan Data on the Chemical
`Characterization of Fingerprints Was Not
`Obtained Using a Reliable Method.. .............................. 41
`
`Even Taken at Face Value, the Buchanan
`Data Does Not Support the Inference That
`Fingerprints Can Disappear From a Surface
`Through Vaporization. .................................................... 44
`
`III. CONCLUSION. ............................................................................................. 49
`
`
`
`ii
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`

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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`TABLE OF AUTHORITIES
`
`Cases
`
`In re Bigio,
`
`381 F.3d 1320 (Fed. Cir. 2004) ............................................................... 28, 29
`
`Bruckelmyer v. Ground Heaters, Inc.,
`
`445 F.3d 1374 (Fed. Cir. 2006) ..................................................................... 24
`
`Catalina Mktg. Int’l v. Coolsavings.com, Inc.,
`
`289 F.3d 801 (Fed. Cir. 2002) ................................................................. 20, 21
`
`Coalition for Affordable Drugs IV LLC v. Pharmacyclics, Inc.,
`
`IPR2015-01076, Paper 33 (P.T.A.B. Oct. 19, 2015) ..................................... 24
`
`Dell, Inc. v. Selene Commc’n Techs.,
`IPR2014-01411, Paper 23 (P.T.A.B. Feb. 26, 2015) .............................. 26, 27
`
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) ..................................................................... 23
`
`Griffin v. Bertina,
`285 F.3d 1029 (Fed. Cir. 2002) ...................................... 14, 15, 16, 17, 20, 22
`
`In re Clay,
`966 F.2d 656 (1992) ...................................................................................... 30
`
`In re Jasinski,
`508 Fed. Appx. 950 (Fed. Circ. 2013) ..................................................... 19, 20
`
`In re Klein,
`647 F.3d 1343 (Fed. Cir. 2011) ........................................................... 3, 27, 33
`
`In re Oetiker,
`977 F.2d 1443 (Fed. Cir. 1992) ..................................................................... 28
`
`K/S HIMPP v. Hear-Wear Techs., LLC,
`751 F.3d 1362 (Fed. Cir. 2014) ..................................................................... 37
`
`L.A. Biomedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly
`& Co., 849 F.3d 1049 (Fed. Cir. 2017) ......................................................... 38
`
`
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`
`iii
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Monarch Knitting Mach. Corp. v. Sulzer Morat GmbH,
`139 F.3d 877 (Fed. Cir. 1998) ....................................................................... 35
`
`Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim Int’l GmbH,
`IPR2016-01566, Paper 15 (P.T.A.B. Feb. 3, 2017) ...................................... 24
`
`Nat’l Steel Car, Ltd. v. Canadian Pac. Ry., Ltd.,
`357 F.3d 1319 (Fed. Cir. 2004) ..................................................................... 12
`
`Pentec, Inc. v. Graphic Controls Corp.,
`776 F.2d 309 (Fed. Cir. 1985) ....................................................................... 34
`
`Rapoport v. Dement,
`254 F.3d 1053 (Fed. Cir. 2001) ..................................................... 2, 17, 18, 22
`
`SCHOTT Gemtron Corp., v. SSW Holding Company, Inc.,
`IPR2014-00367, Paper 62 (P.T.A.B. May 26, 2015) .................................... 33
`
`Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.,
`655 F.3d 1364 (Fed. Cir. 2011) .........................................................................
`
`Statutes and Regulations
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`35 U.S.C. § 103 .................................................................................................. 21, 27
`
`37 C.F.R. § 42.100(b) .............................................................................................. 12
`
`
`
`iv
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`
`I.
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`
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`INTRODUCTION
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`The ’618 patent discloses and claims a new and unique use of lipase
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`enzymes— namely, attaching a lipase to a surface to facilitate removal of visible
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`fingerprint stains from the surface through vaporization. There is no dispute that
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`the seven references cited in Petitioner’s alleged grounds of unpatentability do not
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`teach or suggest using lipase for the purpose required by the ’618 patent’s claims
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`(facilitating removal of fingerprints by vaporization). Indeed, Petitioner’s
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`obviousness case hangs by a thin thread—a few paragraphs in its expert’s
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`declaration (charitably described as “border[ing] on conclusory” in the Institution
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`Decision), which in turn rely solely on the Buchanan paper (which is barely
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`mentioned by Petitioner itself). The Board should give no weight to Dr. Rozzell’s
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`hindsight-driven speculation that using lipase to facilitate fingerprint removal
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`would have been obvious in light of Buchanan. Buchanan is not even a “printed
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`publication.” Nor is it analogous art, since it has nothing to do with lipase or other
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`bioactive materials or with methods for removing visible fingerprint stains, but is
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`instead addressed to crime scene investigators concerned with detecting, collecting,
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`and analyzing, not destroying, “latent” fingerprints. Finally, contrary to Dr.
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`Rozzell’s suggestion, Buchanan fails to reasonably support an expectation that a
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`fingerprint can actually be removed from a surface by vaporization.
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`Petitioner attempts to make up for the prior art’s failure to teach or suggest
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`1
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`

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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`the use of lipase for facilitating evaporative fingerprint removal by alleging that
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`“‘passive fingerprint removal functionality” would have been “inherently present”
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`in prior art lipase-containing materials. Pet. 38, 48, 55-56. However, given that
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`the prior art employed lipase for completely different purposes (as is undisputed),
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`Petitioner cannot rely on alleged inherency to prove the obviousness of using
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`lipase to facilitate fingerprint removal. Rather, Petitioner must show that, at the
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`time of the invention, a person of ordinary skill in the art (“POSITA”) would have
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`had some reason or motivation to use lipase specifically for the purpose of
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`facilitating evaporative fingerprint removal (as opposed to some other purpose).
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`See, e.g., Rapoport v. Dement, 254 F.3d 1053, 1062-63 (Fed. Cir. 2001) (rejecting
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`the argument that a method was “inherently” taught in the prior art where the prior
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`art performed the method for a different reason).
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`As recognized in the Institution Decision, Petitioner’s case as to why it
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`would have been obvious to use lipase to facilitate fingerprint removal rests not on
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`the disclosure of any of the seven references cited in the alleged grounds of
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`unpatentability,1 but rather exclusively on the testimony of its expert Dr. David
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`Rozzell, which in turn rests exclusively on the Buchanan paper. See Inst. Dec. 7-8,
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`
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`1 These references are Van Antwerp (Ex. 1005), Schneider (Ex. 1004),
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`Drevon (Ex. 1003), Bostek (Ex. 1009), Moon (Ex. 1006), Hamade (Ex. 1007), and
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`McDaniel (Ex. 1008).
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`
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`2
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`

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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`16-17, 23-24. Indeed, although Buchanan is not actually cited as a reference in the
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`alleged grounds of unpatentability and is not even discussed by Petitioner aside
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`from a cursory reference in a footnote, it is the only alleged piece of prior art relied
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`upon by either Petitioner or Dr. Rozzell that even deals with the subject of
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`fingerprints (though in a manner that is not even relevant to the ’618 patent, as
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`explained below). Dr. Rozzell’s speculative and unsupported testimony fails to
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`establish obviousness for several reasons.
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`First, Buchanan is not a prior art “printed publication.” Petitioner appears to
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`assume that Buchanan was published on December 4, 1996. See Pet. iv. However,
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`this date is not actually indicated anywhere in the document, as even Dr. Rozell
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`has acknowledged. In addition, Petitioner fails to as much as allege where and
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`how Buchanan was published (in a book, a periodical, etc.). Instead, Petitioner
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`simply asserts, in a generic and conclusory fashion, that Buchanan is a “[p]rinted
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`[p]ublication” without providing any detail or explanation, let alone proof. Ibid.
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`Petitioner has not come close to meeting its burden of establishing that Buchanan
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`is a prior art printed publication.
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`Second, even if Buchanan were a prior art printed publication, it would not
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`qualify as art analogous to the ’618 patent, which means a POSITA would have
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`never even consulted it. A reference can be used in an obviousness finding only if
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`it is analogous to the challenged patent. In re Klein, 647 F.3d 1343, 1348 (Fed.
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`3
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Cir. 2011). To qualify as analogous art, the reference must either be from the same
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`“field of endeavor” as the patent or be “reasonably pertinent to the particular
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`problem” addressed by it. Ibid. Buchanan is not from the same “field of
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`endeavor” as the ’618 patent, as it has nothing to do with bioactive materials such
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`as enzymes or their practical applications. Nor is it “reasonably pertinent to the
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`particular problem” solved by the ’618 patent. The patent addresses the problem
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`of facilitating the removal of “patent” (visible) fingerprints. In contrast, Buchanan
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`is concerned not with “patent” fingerprints, but rather with “latent” fingerprints
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`(i.e., fingerprints invisible to the naked eye). Moreover, Buchanan’s concern with
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`“latent” fingerprints is not with facilitating their removal, but rather with
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`improving how such fingerprints can be better detected, collected, and analyzed,
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`specifically in aid of a criminal investigation. Because the problems addressed by
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`the ’618 patent and Buchanan are significantly different, Buchanan would not have
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`“logically . . . commended itself to an inventor’s attention in considering [the]
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`problem” solved by the ’618 patent. Ibid.
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`Third, even if Buchanan were analogous art, it would not have given a
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`POSITA any reason or motivation to use lipase to facilitate the vaporization of
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`fingerprint stains, much less a reasonable expectation of achieving success. Using
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`only hindsight to bring Buchanan to the fore, Dr. Rozzell then incorrectly suggests
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`that Buchanan would have made it obvious that fingerprints can disappear through
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`4
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`

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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`vaporization. See Ex. 1010 ¶¶ 32-34. From this false premise, Dr. Rozzell,
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`employing yet more hindsight, jumps to the conclusion that it would have been
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`obvious to use lipase to break down the components of a fingerprint into more
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`volatile compounds in order to promote vaporization of the fingerprint. Id. ¶¶ 40-
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`41. In fact, the POSITA would not have expected from reading Buchanan that
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`fingerprints would be susceptible to vaporization, but instead would have
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`recognized, based on the authors’ numerous admissions as well as information
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`gleaned from other technical literature on the subject, that the methodology
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`employed by the authors to collect their data was too flawed, and the inferences
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`they drew from the data too speculative, to permit a conclusion that fingerprints
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`can disappear through vaporization. Indeed, Buchanan on its face suggests only
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`that vaporization “may account for” or “could explain” why fingerprints disappear
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`from surfaces. Ex. 1013 at 3. Such admittedly “speculative and tentative
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`disclosure of what ‘might’ or ‘may’ [explain the cause of a desired effect] does not
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`sufficiently direct or instruct one of skill in this art.” Star Scientific, Inc. v. R.J.
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`Reynolds Tobacco Co., 655 F.3d 1364, 1375-76 (Fed. Cir. 2011).
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`Because the entire premise of Dr. Rozzell’s testimony is wrong (i.e.,
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`Buchanan would not have reasonably suggested to a POSITA that a fingerprint can
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`be removed by vaporization and that breaking down the components of a
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`fingerprint into more volatile compounds would accelerate that process), the
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`
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`5
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`POSITA would have come away from Buchanan with no reason or motivation to
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`use lipase in a method for facilitating fingerprint removal. The POSITA certainly
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`would have had no reasonable expectation that lipase could be successfully used
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`for that purpose. Further, because none of the other prior art asserted by Petitioner
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`even remotely suggests using lipase for the purpose required by challenged claims
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`1-11, the Board should enter a judgement in Patent Owner’s favor.
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`II. BACKGROUND
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`
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`A.
`
`The Invention
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`The inventors of the ‘618 patent discovered a new and unique use for lipase-
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`containing materials. In particular, the inventors discovered that a lipase
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`associated with a material can enzymatically degrade components of a fingerprint
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`stain to facilitate the evaporation of the fingerprint stain from the surface of the
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`material. Ex. 1001 at 1:47-51. This discovery solved an existing need for methods
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`of promoting the removal of unwanted fingerprint residue left behind on many
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`consumer products (e.g., cell phones, touch-screen displays, automobile door
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`handles) after contact with the user’s hands and fingers. Id. at 1:16-20.
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`Notably, previous approaches for promoting the removal of fingerprint
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`stains did not rely on either the catalytic action of enzymes or on vaporization as a
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`mechanism for fingerprint removal. Thus, one prior art approach described in the
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`’618 patent attempted to reduce the depositing of fingerprint stains and facilitate
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`their removal from a surface with coatings containing certain nanocomposites,
`6
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`such as fluorine and silicon nanocomposites. Ex. 1001 at 1:21-34. When applied
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`to a rough surface like sandblasted glass, such nanocoatings would confer
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`hydrophobic, oleophobic, and super-amphiphobic properties on the surface,
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`thereby making it harder for a fingerprint to adhere to the surface. Ibid. However,
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`this approach suffered from at least two drawbacks. First, it required rinsing with
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`water to finally remove the fingerprint from the surface. Ibid. Second, it was not
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`suitable for high gloss surfaces with low surface roughness. Ibid. Another prior
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`art approach described in the patent relied on titanium dioxide (a photocatalyst) to
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`promote the decomposition of fingerprint stains. Id. at 1:35-39. However, a major
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`drawback of this approach was that it could not be used with polymer coatings due
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`to the oxidative impairment of the polymer coating by titanium dioxide. Ibid.
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`The ’618 patent’s specification explains that “the catalytic activity of a
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`lipase enzyme . . . selectively degrade[s] and volatilize[s] components of
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`fingerprints.” Ex. 1001 at 34-37. “The lipase that is either immobilized in
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`coatings or substrates catalyzes the hydrolysis, esterification, or transesterification
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`of lipids including triacylglycerols, cholesterol esters, and other fingerprint
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`components into smaller molecules.” Id. at 2:43-47. “The smaller molecules may
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`have higher volatility than their precursors and more easily vaporize at ambient or
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`elevated temperatures thereby allowing for complete stain removal.” Id. at 2:47-
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`50.
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`
`7
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`Claim 1, the sole independent claim of the ’618 patent, reads as follows:
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`1.
`
`A method of facilitating the removal of a fingerprint on a
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`substrate or a coating comprising:
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`providing a substrate or a coating;
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`associating a lipase with said substrate or said coating such that
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`said lipase is capable of enzymatically degrading a
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`component of a fingerprint, and
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`facilitating the removal of a fingerprint by vaporization from
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`the lipase associated substrate or coating when contacted
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`by a fingerprint.
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`B.
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`The Asserted Prior Art
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`Petitioner flatly admits that none of the three lead references included in
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`
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`Grounds 1, 2, and 3 (Van Antwerp, Schneider, and Drevon, respectively) discloses
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`using lipase-containing materials for the specific purpose required by the ’618
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`patent—facilitating the removal of fingerprints by vaporization. Pet. 37, 47, 55.
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`Van Antwerp discloses an enzyme coating designed for “long-term interaction
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`with body fluids to prevent and/or dissolve clots and occlusions within the catheter
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`lumen.” Ex. 1005 at 1:16-20. Schneider discloses enzyme compositions having
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`anti-fouling properties. Ex. 1004 ¶ [0002]. Drevon is broadly addressed to
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`“strategies to immobilize enzymes into various polymer[s] and coatings.”
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`Ex. 1003 at 3. Thus, it is undisputed that none of these references suggests using
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`lipase to facilitate fingerprint vaporization. Similarly, Petitioner does not contend
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`
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`8
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`that any of the four secondary references included in the alleged grounds of
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`unpatentability (Bostek, Moon, Hamade, and McDaniel) in any way relate to
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`fingerprint removal. Two of the references (Bostek and Moon) do not even relate
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`to enzymes. See Pet. 28-30, 31.
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`
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`The sole reference submitted by Petitioner (though Petitioner has not shown
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`that it was actually available as a “printed publication” as of the ’618 patent’s
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`filing date) that deals with the general subject of fingerprints is the Buchanan
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`paper. See Ex. 1013. However, Buchanan has nothing to do with enzymes,
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`coatings, or methods for facilitating the removal of visible fingerprints. See infra
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`at 28-33. The only issues with which Buchanan is concerned relate to methods of
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`detecting, collecting, and analyzing “latent” fingerprints in the context of crime
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`scene investigation and other law enforcement activities. Specifically, Buchanan
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`studied samples obtained from children and adults to find possible explanations as
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`to why children’s fingerprints tended to disappear faster than adults’ fingerprints
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`from the scene of a crime. Ex. 1013 at 1. Buchanan suggested that the results of
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`the study “could be used to develop improved methods for fingerprint detection at
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`a crime scene” and “identify personal traits (gender, habits, diseases, etc.) via the
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`analysis of components in fingerprints and/or skin.” Ibid. However, nowhere did
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`Buchanan suggest that those results may be relevant to the design of methods for
`
`facilitating the removal of visible fingerprint stains.
`
`
`
`9
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`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`The Level of Ordinary Skill in the Art
`
`C.
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`
`
`Petitioner does not discuss the level of ordinary skill in the art. The only
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`discussion of this issue appears in the declaration of Dr. Rozzell, who opines that a
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`POSITA would have “at least a bachelor’s degree plus 5 or more years of
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`experience, or a Masters or PhD degree with 2 or more years of experience in
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`chemistry, biochemistry, molecular biology, biochemical engineering, or a related
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`discipline.” Ex. 1010 ¶ 31. Patent Owner disagrees with Dr. Rozzell’s definition,
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`particularly because “chemistry, biochemistry, molecular biology, biochemical
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`engineering, or a related discipline” covers an extremely broad range of
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`commercial industries and areas of academic research instead of actually defining
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`any particular field of endeavor.
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`The ’618 patent relates specifically to bioactive coatings. See Ex. 1001 at
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`1:7-9 (“The present invention relates generally to coating compositions including
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`bioactive substances and methods of their use to facilitate removal of
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`fingerprints.”). Accordingly, Patent Owner submits that a POSITA has at least a
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`bachelor’s degree in Biochemistry or Biochemical Engineering and at least 3-5
`
`years of experience in research and development of bioactive coatings. See Ex.
`
`2010 ¶ 22. How the POSITA is defined, particularly with respect to her field of
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`endeavor, is relevant to whether the Buchanan paper constitutes art analogous to
`
`the ’618 patent. As discussed below in Section III.B.2, because Buchanan (which
`
`
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`10
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`

`

`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`is a crucial part of Petitioner’s case) is not addressed to persons working in the
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`field of bioactive coatings, it falls outside the inventors’ “field of endeavor,” and as
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`such fails to qualify as analogous art under the same-field-of-endeavor test.
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`III. PETITIONER HAS NOT SHOWN THAT CLAIMS 1-11 WOULD
`HAVE BEEN OBVIOUS.
`
`
`
`As explained in Section III.A below, Petitioner’s burden with respect to
`
`proving the obviousness of claims 1-11 includes the burden of proving that it
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`would have been obvious to associate a lipase with a substrate or a coating
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`specifically for the purpose of facilitating the removal of fingerprints from the
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`substrate or the coating by vaporization. As explained in Section III.B below,
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`Petitioner has not shown that this use of lipase would have been obvious.
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`Petitioner’s case rests entirely on the testimony of Dr. Rozzell, who himself relies
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`exclusively on the Buchanan paper. Dr. Rozzell’s testimony fails to establish
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`obviousness at least because Buchanan (1) has not been shown to be a prior art
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`“printed publication,” (2) has not been shown to be art analogous to the ’618
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`patent, and (3) would not have given a POSITA any reason or motivation to use
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`lipase for the purpose of facilitating the removal of fingerprints, not to mention a
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`reasonable expectation that this could be done successfully.
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`A.
`
`Petitioner Must Show That It Would Have Been Obvious to
`Employ Lipase Specifically for the Purpose of Facilitating
`Removal of Fingerprints by Vaporization.
`
`The first step of an unpatentability or invalidity analysis is to determine the
`
`
`
`11
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`

`

`IPR2016-01914
`U.S. Patent No. 8,394,618 B2
`meaning and scope of each claim in question. Nat’l Steel Car, Ltd. v. Canadian
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`Pac. Ry., Ltd., 357 F.3d 1319, 1334 (Fed. Cir. 2004) (internal citation omitted). In
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`an inter partes review, claims of an unexpired patent that will not expire before a
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`final written decision is issued are given their broadest reasonable construction in
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`light of the specification. 37 C.F.R. § 42.100(b).
`
`The preamble of claim 1 states that the claimed method is directed to
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`“facilitating the removal of a fingerprint on a substrate or a coating.” This aspect
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`of the invention is again stated in the body of the claim, which requires
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`“facilitating the removal of a fingerprint by vaporization from the lipase associated
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`substrate or coating when contacted by a fingerprint.” Petitioner does not argue
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`that the “facilitating” claim language is not limiting. However, Petitioner
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`seemingly attempts to circumvent the limiting effect of this claim language by
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`suggesting that the “‘passive’ fingerprint removal functionality” would have been
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`“inherently present” in prior art lipase-associated materials. See Pet. 38, 48, 55-56.
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`To the extent that Petitioner’s position is that the claims would be obvious so long
`
`as prior art lipase-associated materials were “inherently” capable of facilitating the
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`vaporization of a fingerprint, regardless of whether the prior art actually suggested
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`any reason or motivation to use lipase for that specific purpose, that position is
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`incorrect as a matter of law.
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`The “facilitating” claim language is clearly limiting at least because it gives
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`“meaning,” “purpose,” and “utility” to the manipulative steps of the method;
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`captures the “essence of the invention”; and was relied upon by the applicants
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`during prosecution to distinguish the inventive method from the prior art. As
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`explained below, the limiting effect of the “facilitating” language means that the
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`manipulative steps of the method (“providing a substrate or a coating” and
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`“associating a lipase with said substrate or said coating such that said lipase is
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`capable of enzymatically degrading a component of a fingerprint”) must be
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`performed for a specific purpose: facilitating the removal of a fingerprint through
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`vaporization.
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`Notably, the Institution Decision correctly focused on whether “a [POSITA]
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`would have known” that associating a lipase with a material would facilitate the
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`vaporization of a fingerprint, not simply on whether “‘passive’ fingerprint removal
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`functionality” would have been “inherently present” in prior art lipase-associated
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`materials. See Inst Dec. 8, 17, 24. In other words, the Institution Decision
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`recognized that the challenged claims are not limited to their manipulative steps,
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`but further require those steps to be carried out for a specific purpose. 2 The
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`2 The Institution Decision construed the phrase “facilitating the removal of a
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`fingerprint by vaporization” in the body of claim 1 as follows: “enabling a
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`bioorganic material deposited by an organism through touching a surface to
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`transition, by vaporization of the bioorganic material, from an initial quantity of
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`decision further recognized that Petitioner’s case as to why it would have been
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`obvious to associate a lipase with a substrate or a coating for the specific purpose
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`required by the claims rests not on the disclosure of any of the seven prior art
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`references explicitly cited in the alleged grounds of unpatentability, but rather
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`exclusively on the testimony of Dr. Rozzell, who himself relies exclusively on the
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`Buchanan paper. See Inst. Dec. 7-8, 16-17, 23-24. In fact, Buchanan is the only
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`alleged piece of prior art of record in this proceeding that even deals with the
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`subject of fingerprints (though not even in a manner relevant to the ’618 patent, as
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`discussed at 30-34).
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`1.
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`Federal Circuit Law Allows A Method Claim to Be Limited
`to a Particular Purpose.
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`Claim language that gives “meaning,” “purpose,” and “utility” to the
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`manipulative steps of a method claim and captures the “essence of the invention”
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`must be considered limiting. See Griffin v. Bertina, 285 F.3d 1029, 1033-34 (Fed.
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`Cir. 2002). Griffin involved an interference between two applications claiming a
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`
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`visually apparent bioorganic material being on such substrate or coating to a lesser
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`quantity of visually apparent bioorganic material being thereon.” Inst. Dec. 6.
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`Patent Owner accepts this construction, and seeks only to clarify that the term is
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`limiting insofar as it requires the claimed method to be carried out for the stated
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`purpose.
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`method for diagnosing thrombosis (excessive blood clotting). The method
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`comprised obtaining nucleic acid from a subject and assaying for a point mutation
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`that correlated to an increased risk of thrombosis. The interference count read as
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`follows:
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`A method for diagnosing an increased risk for thrombosis or a
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`genetic defect causing thrombosis comprising the steps of:
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`(A) obtaining, from a test subject, test nucleic acid . . .; and
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`(B) assaying for the presence of a point mutation in [said test nucleic
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`acid], wherein said point mutation correlates to [an increase in
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`activated protein C resistance],
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`wherein the presence of said point mutation in said test nucleic acid
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`indicates an increased risk for thrombosis or a genetic defect causing
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`thrombosis.
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`Id. at 1031 (emphasis added in original). Griffin, the junior party, attempted to
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`establish an actual reduction to practice prior to Bertina’s accorded benefit date.
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`He submitted evidence that, prior to that date, he had identified the point mutation
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`at issue in a patient prone to excessive blood clotting. Id. at 1031-32. However,
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`the Board of Patent Appeals and Interferences (“BPAI”) construed the count as
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`also “requiring ‘an appreciation of the significance of [the point mutation] to the
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`diagnosis of an increased risk of thrombosis due to a genetic defect.’” Id. at 1032
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`(internal citation omitted). Because Griffin’s evidence showed that he had only
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`identified the point mutation but had not yet appreciated its relevance to the
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`diagnosis of thrombosis, the BPAI awarded priority to Bertina. Id. at 1032.
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`
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`On appeal, Griffin argued that the BPAI should have construed the count as
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`“limited only to its manipulative steps, i.e., obtaining test nucleic acid and
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`identifying [the point mutation].” Griffin, 285 F.3d at 1032-33. According to
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`Griffin, the count was not limited by either the preamble “for diagnosing an
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`increased risk of thrombosis or a genetic defect causing thrombosis” or by the
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`“wherein” clauses directed to a correlation between the point mutation and an
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`increased risk of thrombosis, which Griffin argued “merely stated the inherent
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`result of performing the manipulative steps.” Id. at 1033. The Federal Circuit
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`rejected this argument, pointing out that “[t]he manipulative steps set forth in the
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`count have little meaning or utility unless they are placed within the context of the
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`diagnosis of an increased risk of developing thrombosis, recited in the preamble
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`and ‘wherein’ clauses.” Ibid.
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`The Court specifically held that the BPAI “did not err in construing the
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`count to be limited by the preamble,” because diagnosis was “the essence of th[e]
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`invention; its appearance in the count [gave] ‘life and meaning’ to the manipulative
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`steps.” Griffin, 285 F.3d at 1333 (internal citation omitted). Similarly, the Court
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`held that the BPAI “did not err in givin