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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`REACTIVE SURFACES LTD., LLP
`
`Petitioner
`
`v.
`
`TOYOTA MOTOR CORPORATION
`
`Patent Owner
`
`
`
`CASE: To Be Assigned
`
`Patent No. 8,394,618 B2
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`
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`PETITION FOR INTER PARTES REVIEW OF
`
`U.S. PATENT NO. 8,394,618 B2
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`i
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`Table of Contents
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`EXHIBIT LIST………………………………………………………….…....iii
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`I.
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`INTRODUCTION……………………………………………….…...…1
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`II. MANDATORY NOTICES UNDER 37 C.F.R §42.8(b)…………...…..1
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`A. REAL PARTY IN INTEREST…………………………….….....1
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`B. RELATED MATTERS…………………………………….…….1
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION…....2
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`D. PAYMENT OF FEES - 37 C.F.R §42.103………………….…...3
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`III. REQUIREMENTS FOR INTERPARTES REVIEW………………..….3
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`A. GROUNDS FOR STANDING…………………………………...3
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`B. IDENTIFICATION OF CHALLENGE…………………………..3
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`1) Claims Challenged……………………………………..…4
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`2) The Prior Art……………………………………….….….4
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`3) Supporting Evidence Relied Upon For The Challenge…...4
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`4) Statutory Ground(s) of Challenge And Legal Principles....4
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`5) Claim Construction………………………………….……4
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`6) How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. §42.104(b)(2)………………...…...4
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`IV. OVERVIEW OF THE ’618 PATENT…………………………………...5
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`A. PRIORITY DATE OF THE CLAIMS OF THE ’618 PATENT….5
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`B. SUMMARY OF THE ’618 PATENT…………………………...….5
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`C. SUMMARY OF PROSECTION FILE HISTORY………………....8
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`D. LEGAL PRECEDENT RELEVENT TO THE ‘618 PATENT …...13
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`E. CLAIM TERM LEXICOGRAPHER……………………….….…..16
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`F. CLAIM SCOPE SUPPORTED BY DISCLOSURE.……….….…..17
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`G. FLAWED ANTECEDENT BASIS IN CLAIM 1.…………..……..21
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`H. PROPOSED CLAIM CONSTRUCTION……………………..…...22
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`V. THERE IS A REASONABLE LIKELIHOOD THAT AT LEAST ONE
`CLAIM OF THE ’618 PATENT IS UNPATENTABLE………………...23
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`A. IDENTIFICATION OF THE REFERENCES AS PRIOR ART..…23
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`B. SUMMARY OF INVALDITY POSITIONS……………………....31
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`C. DIFFERENT INVALIDITY POSITIONS AGAINST EACH
`CLAIM ARE INDEPENDENT, DISTINCTIVE AND NOT
`REDUNDANT…………………………………………………..…33
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`VI. DETAILED EXPLANATION OF GROUNDS OF
`UNPATENTABILITY OF
`CLAIMS 1-11………………………………………………...………...….35
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`A. Basis of Van Antwerp…………………………………….…….…...35
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`B. Basis of Schneider……………………………………………....…...45
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`C. Basis of Drevon ………………………………………………..……53
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`VII. Conclusion…………………………………………………………….……63
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`ii
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`EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 8,394,618 B2 to Buthe et al. (“the ’618 Patent”)
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`Ex. 1002 U.S. Patent Application Publication No. 2011/0312057 A1 for U.S.
`
`Patent Application Serial No. 12/820,063 of Buthe et al. (“the ’063
`Application”)
`
`
`Ex. 1003 Printed Publication entitled “ENZYME IMMOBILIZATION
`INTO POLYMERS AND COATINGS” by Géraldine F. Drevon
`(“Drevon”)
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`Ex. 1004 U.S. Patent Publication No. 2005/0147579 A1 of Schneider
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`(“Schneider”)
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`Ex. 1005 U.S. Patent No. 5,868,720 to Van Antwerp (“Van Antwerp”)
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`Ex. 1006 U.S. Patent Publication No. 2005/0176905 A1 of Moon et al.
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`(“Moon”)
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`Ex. 1007 U.S. Patent No. 6,150,146 to Hamade et al. (“Hamade”)
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`Ex. 1008 U.S. Patent Publication No. 2004/0109853 A1 of McDaniel
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`(“McDaniel”)
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`Ex. 1009 Printed Publication (December 1992) entitled “EFFECTIVE
`METHODS OF IN-LINE INTRAVENEOUS FLUID WARMING
`AT LOW TO MODERATE INFUSION RATES” by Lt. Col. C.
`Carl Bostek (“Bostek”)
`
`
`
`Ex. 1010 Declaration of Dr. David Rozzell, Ph.D. (“Rozzell
`Declaration”)
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`
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`iii
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`
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`Ex. 1011 Office Action dated August 14, 2012 in the ’063 Application (“the
`’063 OA”)
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`Ex. 1012 Office Action Response filed October 22, 2012 in the ’063
`Application (“the ’063 OAR”)
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`EX. 1013 Printed Publication (December 4, 1996) entitled “CHEMICAL
`CHARACTERIZATION OF FINGERPRINTS FROM ADULTS
`AND CHILDREN” by Michelle V. Buchanan et al. (“Buchanan”)
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`
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`iv
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. §311 and 37 C.F.R. §42.100, Reactive Surfaces LTD.
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`LLP (“Petitioner”) petitions for inter partes review of claims 1-11 of U.S. Pat. No.
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`8,394,618 B2 (the ’618 Patent, Ex. 1001). The ’618 Patent issued from U.S. Patent
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`Application Serial No. 12/820,063 of Buthe et al., which published as U.S. Patent
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`Application Publication No. 2011/0312057 A1 (the ’063 Application, Ex. 1002).
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`This Petition shows that there is a reasonable likelihood that Petitioner will
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`prevail with respect to at least one of the claims 1-11 of the ’618 Patent. These claims
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`are unpatentable under at least 35 U.S.C. §103. The Office is respectfully requested
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`to institute a trial for inter partes review and to cancel claims 1-11 of the ’618 Patent.
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`II. MANDATORY NOTICES UNDER 37 C.F.R. §42.8(B)
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`A. REAL PARTY IN INTEREST
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`Reactive Surfaces Ltd., LLP is the real party in interest.
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`B. RELATED MATTERS
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`Petitioner submits that there are no related judicial or administrative matter
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`that would affect, or be affected by, a decision in the proceeding. The cases identified
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`below, which have been dismissed without prejudice, were previously filed by
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`Petitioner against Patent Owner seeking a declaratory judgment with regards to
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`certain rights in U.S. Patent No. 8,394,618 B2:
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`
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`1
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`
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`1. Cause No. 1-13-CV-1098-LY; Reactive Surfaces Ltd. LLP v. Toyota
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`Motor Engineering & Manufacturing North America, Inc. et al; In The
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`United States District Court For The Western District of Texas –Austin
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`Division, and
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`2. Cause No. 1:14-CV-1009-LY; Reactive Surfaces Ltd. LLP v. Toyota Motor
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`Corporation, In The United States District Court For The Western District
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`of Texas –Austin Division.
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`C. NOTICE OF COUNSEL AND SERVICE INFORMATION
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`
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`Pursuant to 37 C.F.R. §42.8(b)(3) and 37 C.F.R. §42.10(a), Petitioner
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`designates counsel as indicated in Table 1 below. Please address all correspondence
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`and service to counsel at the address provided in Table 1 below.
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`Table 1 - DESIGNATION OF COUNSEL
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`Lead Counsel
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`David O. Simmons
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`Reg. No. 43,124
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`IVC Patent Agency
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`P. O. Box 26584
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`Austin, Texas 78755
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`7637 Parkview Circle
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`Austin, Texas 78731
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`
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`Back-up Counsel
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`Jonathan D. Hurt
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`Reg. No. 44,790
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`
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`McDaniel & Associates, PC
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`300 West Avenue, #1316
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`Austin, Texas 78701
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`
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`Ph: (512) 472-8486
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`Fax: (512) 472-8181
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`Ph: (512) 345-9767
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`jhurt@technologylitigators.com
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`2
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`Fax: (512) 345-0021
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`dsimmons@ivcpatentagency.com
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`Petitioner consents to electronic service by email for all correspondence at:
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`dsimmons@ivcpatentagency.com,
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`jhurt@technologylitigators.com,
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`and
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`ReactiveSurfaces@wattsguerra.com.
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`Pursuant to 37 C.F.R. §42.10(b), a Power of Attorney executed by Petitioner
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`for appointing the above-designated counsel is concurrently filed herewith.
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`D.
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`PAYMENT OF FEES – 37 C.F.R §42.103
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`Petitioner authorizes the Patent and Trademark Office to charge Deposit
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`Account No. 50-1085 for the fees set in 37 C.F.R §42.15(a) for this Petition and
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`further authorizes payment for additional fees to be charged to this Deposit Account.
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`III. REQUIREMENTS FOR INTER PARTES REVIEW
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`This Petition complies with all requirements under 37 C.F.R. §42.104.
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`A. GROUNDS FOR STANDING
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`
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`Pursuant to 37 C.F.R. §42.104(a), Petitioner hereby certifies that the ’618
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`Patent is available for inter partes review and that Petitioner is not barred or
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`estopped from requesting inter partes review challenging claims of the ’618 Patent.
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`B.
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`IDENTIFICATION OF CHALLENGE
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`Pursuant to 37 C.F.R. §42.104(b), the precise relief requested is that the Board
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`cancel claims 1-11 of the ’618 Patent.
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`3
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`1. Claims Challenged
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`Claims 1-11 of the ’618 Patent are challenged in this Petition.
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`2.
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`The Prior Art
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`
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`The prior art references relied upon are Drevon (Ex. 1003), Schneider (Ex.
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`1004), Van Antwerp (Ex. 1005), Moon (Ex. 1006), Hamade (Ex. 1007), McDaniel
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`(Ex. 1008) and Bostek (Ex. 1009). See Exhibit List and Section V.A for detailed
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`description of each prior art reference.
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`3.
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`Supporting Evidence Relied Upon For The Challenge
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`The declaration by Dr. David Rozzell, Ph.D. (the Rozzell Declaration, Ex.
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`1010) and other supporting evidence in the Exhibit List are filed herewith.
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`4.
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`Statutory Ground(s) Of Challenge And Legal Principles
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`The review of the ’618 Patent is governed by pre-AIA 35 U.S.C. §102 and
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`§103 that were in effect before March 16, 2013. Further, 35 U.S.C. §§311 - 319 that
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`took effect on September 16, 2012 govern this inter partes review.
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`5.
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`Claim Construction
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`
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`The ’618 Patent is an unexpired patent. In inter partes review, a claim in the
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`’618 Patent “shall be given its broadest reasonable construction in light of the
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`specification of the patent in which it appears.” 37 C.F.R. §42.100(b).
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`6. How Claims Are Unpatentable Under Statutory Grounds
`Pursuant to 37 C.F.R. §42.104 (b)(2)
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`4
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`Section VI provides an explanation of how and why claims 1-11 of the ’618
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`Patent are unpatentable under pre-AIA 35 U.S.C. §103, including the identification
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`of where each element of the claim is found in the prior art patents, published patent
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`applications, and/or printed publications.
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`IV. OVERVIEW OF THE ’618 PATENT
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`A.
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`PRIORITY DATE OF THE CLAIMS OF THE ’618 PATENT
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`
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`The ’063 Application, from which the ’618 Patent issued, was filed on June
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`21, 2010. The ’063 Application did not claim priority to any prior-filed
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`application(s). Therefore, the earliest effective filing date for the ’618 Patent is the
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`filing date of the ’063 Application (i.e., June 21, 2010).
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`B. SUMMARY OF THE ’618 PATENT
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`
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`As an initial matter, it is important to understand that the invention of the ’618
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`Patent is not restricted to any particular intended applications or products. In this
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`regard, it is disclosed in the ’618 Patent that, “The following description of
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`embodiment(s) of the invention is merely exemplary in nature and is in no way
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`intended to limit the scope of the invention, its application, or uses, which may,
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`of course, vary.” (the ’618 Patent [Ex. 1001] at 2:25-28). Moreover, there is no
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`element or limitation in any of the claims that would necessarily limit the claimed
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`invention to a particular application or product. To the contrary, the claimed
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`invention of the ’618 Patent reads on a broad collection of applications and products,
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`5
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`including but not limited to consumer applications and products, medical
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`applications and products, industrial application and products, etc. Specific
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`examples of such products include, but are not limited to, automobiles, medical
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`devices and supplies, electronic devices, eyewear, and any other devices and articles
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`that can come into contact with a bioorganic stain that is capable of being
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`enzymatically degraded by a lipase.
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`Turning now to specific aspects of the ’618 Patent, “a composition and
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`method for fingerprint removal from a substrate surface is disclosed. The method
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`includes associating a lipase with a substrate or a coating such that the lipase is
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`capable of enzymatically degrading a component of a fingerprint.” (Id. at 1:47-
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`51). “The composition includes a substrate or coating containing a lipase. The
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`composition optionally includes an organic crosslinkable or non-crosslinkable
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`polymer resin.” (Id. at 1:59-61). See section IV.E for Patentee’s definition of
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`“fingerprint”.
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`The present invention of the ’618 Patent is based on “the catalytic activity
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`of a lipase enzyme to selectively degrade and volatilize components of
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`fingerprints, thus, promoting active fingerprint removal. Fingerprint stains
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`typically include components of sweat gland secretion and sebum which includes
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`lipids, wax, and cellular debris. Several of the substances of sebum are lipophilic
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`and have low volatility such as squalene and wax esters.” (Id. at 2:34-42). “The
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`6
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`lipase that is either immobilized in coatings or substrates catalyzes the
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`hydrolysis,
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`esterification, or
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`transesterification of
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`lipids
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`including
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`triacylglycerols, cholesterol esters, and other fingerprint components into
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`smaller molecules. The smaller molecules may have higher volatility than their
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`precursors and more easily vaporize1 at ambient or elevated temperatures
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`thereby allowing for complete stain removal.” (Id. at 2:43-50).
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`It is disclosed that, “When a surface which is optionally a substrate or a
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`coated substrate, is contacted with a fingerprint, the lipase enzyme or
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`combinations of enzymes contact the fingerprint, or components thereof. The
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`contacting allows the enzymatic activity of the substrate or coating to interact
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`with and enzymatically alter the components of the fingerprint improving their
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`removal from the substrate or coating. It is appreciated that the inventive
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`methods of facilitating fingerprint removal will function at any temperature
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`1 While enablement challenges under 35 U.S.C. §112(a) or pre-AIA 35 U.S.C. §112,
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`1st paragraph are not at issue in this Petition, petitioner notes that the products of a
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`triacylglycerol lipase’s enzymatic action on a triacylglycerol lipid as would be found
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`in a fingerprint produces glycerols and fatty acids. See Ex. 1010, ¶35. At 760 mmHg
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`pressure glycerol’s boiling point is 290°C, and the boiling point of the smallest fatty
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`acid called propanoic acid which has only 3 carbons is 141°C (CRC Handbook of
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`Chemistry and Physics. 76th ed. CRC Press: Boca Raton, FL, 1995-1996; pp. 3-1,
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`3-278, 3-279).
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`7
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`
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`whereby the lipase is active.” (Id. at 10:36-45). “The presence of lipase combined
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`with the material of a substrate or a coating on a substrate, optionally, with
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`applied heat, breaks down fingerprint stains for facilitated fingerprint removal.”
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`(Id. at 11:4-7).
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`C. SUMMARY OF PROSECUTION FILE HISTORY
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`
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`Examination of the ’063 Application included one (1) Non-Final Office
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`Action (i.e., Office Action dated August 14, 2012 (“the ’063 OA” - Ex. 1011)), one
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`(1) Applicant-Initiated Examiner Interview and one (1) Office Action Response (i.e.,
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`Office Action Response filed October 22, 2012 (“the ’063 OAR” – Ex. 1012)). The
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`Examiner Interview was held after the mailing of the ’063 OA and the ’063 OAR
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`was filed following the Examiner Interview. As presented in the ’063 OAR, the
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`substantive content of the Applicant-Initiated Examiner Interview included
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`Applicant’s assertion that “the references are silent on the use of any material taught
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`therein to facilitate fingerprint removal as well as no indication in any known
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`reference that a lipase could be used for this purpose when associated with a coating
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`or substrate material.” (’063 OAR at pg. 6, ln. 6-8). A Notice of Allowability dated
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`November 15, 2012, which did not include any reasons for allowance, was issued
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`following the ’063 OAR being filed.
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`In the ’063 OA, as-filed claims 1-11 of the ’063 Application were rejected
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`under 35 U.S.C. 103(a) as being unpatentable over Yang et al. (Biotechnol Lett.
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`8
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`
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`2010 Jul;32(7):951-6. Epub 2010 Mar 8; PTO 892) (“Yang et al.”) in view of US
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`Patent Application 20080119381 (05/22/2008; IDS filed 06/21/2010) (“Wang et
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`al.”), Chen et al. (Biomacromolecules. 2008 Feb;9(2):463-71. Epub 2008 Jan 16;
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`PTO 892) (“Chen et al.”), and Yu et al. (Biotechnol Lett. 2004 Apr;26(8):629-33;
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`PTO 892) (“Yu et al.”). The ’063 OA stated that 1.) “Yang et al. teach the lip2 gene
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`encoding the Lip2 lipase from Aspergillus niger having an amino acid sequence that
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`is 100% identical to SEQ ID NO: 1 of the instant application;” 2.) Wang et al. “teach
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`linking moiety for covalently attaching proteins to the substrate or coating;” 3.)
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`“Chen et al. teach covalently immobilizing lipase B onto epoxy-activated
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`macroporous poly(methyl methacrylate) Amberzyme beads and nanoparticles with
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`a poly(glycidyl methacrylate) outer region;” and 4.) “Yu et al. teach immobilizing
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`lipase from Candida rugosa on three commercially available macroporous
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`adsorptive resins for kinetic resolution of ibuprofen.” (’063 OA at pg. 6, ln. 1-10).
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`The ’063 OA further stated that “it would have been obvious to one of
`
`ordinary skill in the art at the time the invention was made to combine the
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`teachings of the references to arrive at the claimed method by covalently
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`attaching the Lip2 lipase of Yang et al. to substrate or coating comprising a
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`crosslinkable expoxy-activated polymer resin as taught by Chen et al., US Patent
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`Application 20080119381, and/or Yu et al and then fingerprints with the said
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`lipase associated on the said substrate or coating thereby facilitating the removal
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`9
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`
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`of the fingerprint. One of ordinary skill in the art at the time the invention was
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`made would have been motivated to combine the references in order to obtain a
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`simple method that can remove fingerprints.” (’063 OA at pg. 6, ln. 12-19).
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`In responding to the ’063 OA in the ’063 OAR, Applicant of the ’063
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`Application (“’063 Application Applicant” i.e., Toyota Motor Corporation et al.)
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`made several assertions and admission in arguing patentability in view of the cited
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`prior art. These assertions and admission included:
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`1.) none of “the teaching of any of the cited reference suggest that one would
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`be capable of using a lipase associated coating or substrate to facilitate vaporative
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`fingerprint removal;”
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`2.) “no teaching is found in Yang et al. that a lipase when associated with a
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`substrate or a coating will be capable of facilitating the removal of a fingerprint from
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`that substrate or coating after contact with the fingerprint;”
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`3.) “Wang merely teach associating a lipase with a coating” and “there is no
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`suggestion of using the materials taught in Wang to facilitate removal of a
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`fingerprint,”
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`4.) “Chen et al. merely teach a lipase associated with an Amberzyme bead;”
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`5.) while this [a lipase associated with an Amberzyme bead] “may be
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`interesting with respect to the beads use as a catalyst for polyester synthesis, it is
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`submitted that the synthesis of polyesters does not suggest removal of a fingerprint
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`10
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`or degradation of any fingerprint component;”
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`6.) “Yu et al., similar to Chen et al., merely teach associating a lipase with a
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`resin material … used to kinetically resolve ibuprophen;” and
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`7.) “as ibuprophen is not a component of a fingerprint, it is submitted that this
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`reference [Yu] is limited to teaching association of a lipase with a substrate.”
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`(’063 OAR at pg. 9, ln. 6-pg. 10, ln. 4).
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`Additionally, the ’063 Application Applicant made the further assertions and
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`admissions:
`
`1.) “the cited references when taken together as a whole are limited to teaching
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`association of a lipase with a substrate material;”
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`2.) “no teaching of fingerprint removal is present in any cited reference such
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`that the combination of the references similarly fails to suggest using such a lipase
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`associated material to facilitate fingerprint removal;”
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`3.) “the new use of facilitating fingerprint removal is not taught by any cited
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`reference;” and
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`4.) “Wang and Yang however, merely teach degradation of substrate
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`molecules by a lipase in solution or associated with a coating, not that such a
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`degradation can and will facilitate vaporative fingerprint removal.”
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`(’063 OAR at pg. 10, ln. 5-8, 10-11, and 16-19). As can be seen, with respect to the
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`cited prior art, ’063 Application Applicant 1.) admits that the prior art teaches
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`
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`11
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`
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`associating a lipase with a substrate, 2.) has asserted that non-obviousness is based
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`on removal of a fingerprint or degradation of any fingerprint component, and 3.) has
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`asserted that patentability is based on “the new use of facilitating fingerprint
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`removal.” (’063 OAR at pg. 10, ln. 10-11)
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`In alleging that facilitation of vaporative fingerprint removal is unexpected,
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`’063 Application Applicant makes the following assertions and admissions: 1.)
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`“merely degrading a substrate molecule into component parts does not necessarily
`
`result in their removal from a surface by vaporization” and 2.) “there is no
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`expectation of success that the activity of a lipase associated coating or substrate will
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`actually promote removal of the fingerprint as opposed to merely degrading one of
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`more component parts and leaving those component parts on the surface of the
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`material.” (’063 OAR at pg. 10, ln. 20 to pg. 11, ln. 1). The ’063 Application
`
`Applicant goes on to assert that “Applicants' lipase associated coatings or substrates
`
`promote fingerprint removal by vaporization, e.g. without the need for physical
`
`washing such as with water,” making the admission that “the presently claimed
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`invention provides for the first time a method of facilitating passive removal of
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`fingerprints from any surface.” (’063 OAR at pg. 11, ln. 22 to pg. 12, ln. 2). In this
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`regard, ’063 Application Applicant has admitted that the resulting removal of a
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`fingerprint from a substrate or coating having a lipase associated therewith that is
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`capable of enzymatically degrading a component of a fingerprint is a “passive” result
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`
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`12
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`
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`of an inherent property of such lipase. ’063 Application Applicant’s assertion
`
`contradicts its own disclosure that such removal of fingerprints from any surface is
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`facilitated in an “active” manner (see ’618 Patent at 2:54-56).
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`D. LEGAL PRECEDENT RELEVENT TO THE ’618 PATENT
`
`
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`Petitioner submits that it is well-known that lipases in general will hydrolyze,
`
`and thereby degrade, various lipid-based compounds and that lipases will degrade
`
`triglycerides and other lipids, wax esters, other fatty acid esters, cholesterol esters,
`
`and similar compounds, which are well-known to be among the components of
`
`fingerprints. Petitioner also submits that it is unsurprising and completely expected
`
`that a lipase would degrade lipid and ester components of a fingerprint, and therefore
`
`the degradation of fingerprint components by a lipase would have been obvious to a
`
`person of ordinary skill in the art (“POSITA”) at the time of the invention. See Ex.
`
`1010, ¶¶35-41.
`
`As presented above in section IV.C, during prosecution of the ’063
`
`Application, Applicant thereof admitted that associating a lipase with coating is
`
`taught by prior art (e.g., by Wang et al. (’063 OAR at pg. 9, ln. 18; pg. 10, ln. 16-
`
`18)). ’063 Application Applicant also admitted that a substrate or coating having a
`
`lipase capable of enzymatically degrading a component of a fingerprint associated
`
`therewith facilitates removal of a fingerprint from a surface having such lipase
`
`associated therewith in a manner that is passive. (’063 OAR at pg. 11, ln. 23-pg. 12,
`
`
`
`13
`
`
`
`ln. 3)
`
`Moreover, the ’618 Specification discloses the following:
`
`“The present invention is based on the catalytic activity of
`
`a lipase enzyme to selectively degrade and volatilize
`
`components of fingerprints,
`
`thus, promoting active
`
`fingerprint removal. Fingerprint stains typically include
`
`components of sweat gland secretion and sebum which
`
`includes lipids, wax, and cellular debris. Several of the
`
`substances of sebum are lipophilic and have low volatility
`
`such as squalene and wax esters.” (’618 Patent at 2:34-42)
`
`…
`
`“The lipase that is either immobilized in coatings or sub(cid:173)
`
`strates catalyzes
`
`the hydrolysis, esterification, or
`
`transesterification of lipids including triacylglycerols,
`
`cholesterol esters, and other fingerprint components into
`
`smaller molecules. The smaller molecules may have higher
`
`volatility than their precursors and more easily vaporize at
`
`ambient or elevated temperatures thereby allowing for
`
`complete stain removal. Without being limited to one
`
`particular
`
`theory,
`
`it
`
`is believed
`
`that
`
`the resulting
`
`degradation products may have lower boiling points or
`
`reduced adhesion promoting increased vaporization either
`
`upon heating or incubation at ambient temperatures. Thus,
`
`the invention has utility as a composition and method for
`
`the active removal of fingerprints from surfaces.” (’618
`
`
`
`14
`
`
`
`Patent at 2:43-56)
`
`As indicated by the disclosures made in the ’618 Patent, ’063 Application
`
`Applicant admits that it is known that a lipid is a component of a fingerprint. It is
`
`further admitted by ’063 Application Applicant, that it is an inherent functionality
`
`of a lipase enzyme on lipids (e.g., triacylglycerols, cholesterol esters, and other
`
`fingerprint components) that provides for the degradation of a component of a
`
`fingerprint resulting in removal of a fingerprint from a surface. Thus, this
`
`inherent functionality was well known prior to the filing of the ’063 Application.
`
`See Rozzell Declaration [Ex. 1010], ¶¶34-41.
`
`In this respect, such “passive” fingerprint removal functionality in accordance
`
`with the claimed invention of the ’618 Patent is inherently present in such a lipase
`
`associated substrate or coating because a component of a fingerprint is well known
`
`to be degraded (e.g., rapidly converted to smaller chemical products) by a lipase in
`
`a manner that supports its vaporization when in an environment that would support
`
`such vaporization. More simply stated, the lipase of the claimed lipase associated
`
`substrate or coating acts on a component of a fingerprint in the same manner in which
`
`a lipase inherently acts on such component. This inherent functionality of the recited
`
`lipase associated substrate or coating is consistent with In re Spada, 15 USPQ 2d
`
`1655 (1990), which holds that products of identical chemical composition cannot
`
`have mutually exclusive properties.
`
`
`
`15
`
`
`
`E. CLAIM TERM LEXICOGRAPHER
`
`
`
`As provided for by MPEP 2111.01, “an applicant is entitled to be his or her
`
`own lexicographer and may rebut the presumption that claim terms are to be given
`
`their ordinary and customary meaning by clearly setting forth a definition of the term
`
`that is different from its ordinary and customary meaning(s) in the specification at
`
`the time of filing.” See In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674
`
`(Fed. Cir. 1994) (holding that an inventor may define specific terms used to describe
`
`invention, but must do so “with reasonable clarity, deliberateness, and precision”
`
`and, if done, must “‘set out his uncommon definition in some manner within the
`
`patent disclosure’ so as to give one of ordinary skill in the art notice of the change”
`
`in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88,
`
`21 USPQ2d 1383, 1386 (Fed. Cir. 1992)).
`
`Petitioner submits that ’063 Application Applicant has served as its own
`
`lexicographer in defining the term “fingerprint” as recited in independent claim 1.
`
`Specifically, the ’618 Specification discloses the following:
`
`“A fingerprint as defined herein is a bioorganic stain, mark,
`
`or residue left behind after an organism touches a substrate
`
`or coating. A fingerprint is not limited to marks or residue
`
`left behind after a substrate is touched by a finger. Other
`
`sources of bioorganic stains are illustratively, palms, toes,
`
`feet, face, any other skin surface area, hair, stains from fats
`
`
`
`16
`
`
`
`used in cooking such as cis-fatty acids, or fatty acids from
`
`any other source.” (’618 Patent at 3:1-9)
`
`In being its own lexicographer, Petitioner submits that ’063 Application
`
`Applicant has defined what a “fingerprint” is and what a fingerprint is not. A
`
`fingerprint has been defined to be more then only marks or residue left behind after
`
`a substrate is touched by a finger. Conversely, a fingerprint has been defined to be
`
`a bioorganic stain, mark, or residue left behind after an organism touches a
`
`substrate or coating, wherein sources of such 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. Moreover,
`
`the disclosure of “fatty acids from any other source” in conjunction with the
`
`invention of the ‘618 Patent not being restricted to any particular intended
`
`applications or products (see section IV.B) clearly support that the term “fingerprint”
`
`has been given a substantially broader and different meaning than the plain and
`
`ordinary meaning of a mark left behind after a surface is touched with a finger.
`
`F. CLAIM SCOPE SUPPORTED BY THE DISCLOSURE
`
`
`
`A first consideration regarding claim scope supported by the disclosure is the
`
`test procedure for verifying removal of a fingerprint. The disclosures of the ’618
`
`Patent are limited to use of visual verification for making a determination that a
`
`fingerprint has been removed from a substrate or coating having a lipase associated
`
`
`
`17
`
`
`
`therewith in accordance with the disclosures of the ’618 Patent. For example, the
`
`’618 Patent discloses, “The surface temperature is optionally raised to such a level
`
`that the breakdown products volatilize to the point of no visual material
`
`remaining on the substrate within 24 hours. Optionally, the temperature is raised
`
`to such a level that the breakdown products are removed to the point of no visual
`
`material remaining on the substrate within 0.5 to 3 hours, inclusive” (Id. at 10:56-
`
`62) and “Heat is optionally applied until the breakdown products volatilize to the
`
`point of no visual material remaining on the substrate” (Id. at 10:66-11:1). In
`
`this regard, the ’618 Patent presents no disclosure other than visual observation for
`
`scientifically verifying that any component of a fingerprint has been enzymatically
`
`degraded by a lipase associated with a substrate or coating and subsequently has
`
`been removed by vaporization from such lipase associated substrate or coating2.
`
`A second consideration regarding claim scope supported by the disclosure is
`
`incubation temperature. The ’618 Patent presents various information relating to the
`
`vaporization of breakdown products3 at stated temperatures and ranges of
`
`
`2 As disclosed in Buchannan [Ex. 1013], it is well-established that fingerprints
`disappear from surfaces over time without having been contacted with an enzyme
`such as a lipase, and that the mechanism of this disappearance is by vaporization.
`See Ex. 1010, ¶¶32-34 and 40-41.
`3 The term “breakdown products” is not explicitly defined in the written description.
`Petitioner believes that breakdown products is a term that is analogous to the recited
`term “degradation products” (Id. at 2:51), which refers to the resulting products
`from lipase catalyzing the hydrolysis, esterification, or transesterification of
`lipids (Id. at 2:43-47).
`
`
`
`18
`
`
`
`temperatures. (Id. at 10:43-11:3). However, the only temperatures at which lipase
`
`associated substrates/coatings in accordance with the disclosures of the ’618 Patent
`
`were evaluated in working examples are room temperature4 (RT) and 65º C. (Id. at
`
`12:12-21 and 12:29-33). It is also important to note that room temperature is not
`
`quantitatively defined in the ’618 Patent.
`
`Although it is disclosed that the claimed “fingerprint removal” from a lipase
`
`associated substrate or coating can take place at “any temperature whereby the lipase
`
`is active,” 4°C, 25°C, ambient temperature, and “between 40°C and 120°C” (Id. at
`
`2:43-
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