UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`REACTIVE SURFACES LTD., LLP
`
` Petitioner
`
`v.
`
`TOYOTA MOTOR CORPORATION
`
`Patent Owner
`
`
`
`
`CASE: IPR2016-01914
`
`Patent No. 8,394,618 B2
`
`
`
`
`
`REPLY DECLARATION OF DR. DAVID ROZZELL IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,394,618
`B2
`
`
`
`i
`
`Reactive Surfaces Ltd. LLP
`Ex. 1018
`Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.
`IPR2016-01914
`
`

`

`
`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION .......................................................................................... 1
`
`SUMMARY OF OPINIONS .......................................................................... 3
`
`Page
`
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 4
`
`A.
`
`B.
`
`Education and Work Experience .......................................................... 4
`
`Compensation ..................................................................................... 10
`
`C. Documents and Other Materials Relied Upon ................................... 11
`
`IV. ANALYSIS ................................................................................................... 11
`
`A.
`
`It was well-known prior to the filing date of the ‘618 patent that
`fingerprints contain components degradable by a lipase, and a
`POSITA with a general knowledge of lipases would have known
`that a lipase would be capable of degrading those components to
`products of lower molecular weight and greater volatility. ............... 11
`
`B.
`
`Buchanan is analogous art and pertinent to the field of endeavor. .... 16
`
`C. Mong, a reference cited and described in detail in the Dordick
`Declaration, supports the conclusions of Buchanan .......................... 19
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Buchanan was a “printed publication” and accessible prior to the
`filing date of the ‘618 patent.………………………………………. 21
`
`A POSITA with knowledge of Buchanan and/or Mong and a general
`knowledge of lipases would have had a reasonable expectation of
`success in facilitating the removal of a fingerprint (as defined by the
`Patent Owner) from a lipase-associated surface or coating by
`vaporization.......…………………………………………………… 23
`
`In arriving at a conclusion of obviousness regarding the claims of
`the’618 patent, I did not rely exclusively on Buchanan as alleged in
`the Patent Owner’s Response........………………………………… 24
`
`The distinction made by the Patent Owner between latent and patent
`fingerprints does not render irrelevant the prior art work showing that
`fingerprints having more volatile components disappear more rapidly
`by vaporization....………………………………………………….. 26
`
`Buchanan’s results are mischaracterized in the Patent Owner’s
`Response...……...………………………………………………….. 27
`
`
`
`ii
`
`Reactive Surfaces Ltd. LLP
`Ex. 1018
`Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.
`IPR2016-01914
`
`

`

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`
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`
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`TABLE OF CONTENTS
`
`I.
`
`There is no convincing evidence that factors other than the
`vaporization of more volatile components were responsible for the
`observations reported by Buchanan. .……………………………. 29
`
`
`
`
`
`
`
`iii
`
`Reactive Surfaces Ltd. LLP
`Ex. 1018
`Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.
`IPR2016-01914
`
`

`

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`TABLE OF CONTENTS
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`
`
`
`
`
`
`ATTACHMENTS:
`
`
`A. Résumé of Dr. David Rozzell
`B. “Immobilization of Enzymes by Covalent Attachment.” Chapter 20 in
`“Methods in Biotechnology, Vol. 17: Microbial Enzymes and
`Biotransformations,” edited by J. L. Barredo and published by Humana
`Press, Inc. Totowa, NJ, 2005. (Ex. 1049)
`C. “Immobilization of Enzymes: Techniques and Applications,” Chapter 13
`in “Biocatalytic Production of Amino Acids and Derivatives: New
`Developments and Process Considerations,” Hanser Publishers, 1992.
`(Ex. 1050)
`D. "Immobilized Aminotransferases for Amino Acid Production": J. David
`Rozzell., 1987. Methods in Enzymology, 137, 479-497. (Ex. 1051)
`E. Ramotowski, R.S., in Advances in Fingerprint Technology, Chapter 3,
`pages 63-104. Henry C Lee and R. E. Gaensslen, eds., CRC Press, Boca
`Raton, 2001 (Ex. 1024)
`F. Wang, US Patent Appl. 2008/0119381 A1, Published May 22, 2008 (Ex.
`1025)
`G. He et al, Biochemical Engineering Journal 2000. 6, 7-11. (Ex. 1026)
`H. Kim et al, Biotech. Bioeng. 2001. 72, 475-482. (Ex. 1027)
`I. Enzyme Nomenclature 1984, published in 1984, Academic Press, New
`York, pages 270-279 (Ex. 1028)
`J. Asano et al, J Forensic Sci. 2002. 47, 1-3. (Ex. 1029)
`K. Antoine et al, J Forensic Sci. 2010. 55, 513-518. (Ex. 1030)
`L. World Patent Application WO 2007017701 A1, Publication date
`February 15, 2007. (Ex. 1031)
`M. Science News Article, April 15, 1997, printed copy from web site (Ex.
`1032)
`N. Menzel, 1999 in “Fingerprint Detection with Lasers”, Chapter 7, pages
`160, 178, reference 22 (Ex. 1033)
`
`iv
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`Reactive Surfaces Ltd. LLP
`Ex. 1018
`Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.
`IPR2016-01914
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`TABLE OF CONTENTS
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`O. Bartick et al, 2002. 16th Meeting of the International Association of
`Forensic Sciences, Page 61-64. (Ex. 1034)
`P. Jain et al, 2004. Proceedings of Biometric Authentication Workshop,
`LNCS 3087, pages 259-269. (Ex. 1035)
`Q. Drozdowski et al, 1969. J Am Oil Chem. Soc., 46, 371-376. (Ex. 1036)
`
`v
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`Reactive Surfaces Ltd. LLP
`Ex. 1018
`Reactive Surfaces Ltd. LLP v. Toyota Motor Corp.
`IPR2016-01914
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`1. My name is J. David (“David”) Rozzell. For more than 2 decades, I have
`
`worked in the biotechnology industry with a specialization in the development
`
`of new enzymes and their applications. I currently work at Provivi, Inc. as Sr.
`
`Vice-President of Biocatalysis, directing projects for the development of new
`
`enzymes and their use in the production of chemical compounds. I am also a
`
`founder and principle with Sustainable Chemistry Solutions, Inc., which is a
`
`consulting company and publisher of information products for the enzyme and
`
`biocatalysis markets. I am also co-founder and current CEO of Catylix, Inc.,
`
`a company developing new fluorination chemistry and its applications.
`
`Further details of my education, work experience, selected publications,
`
`authored books, and patents on which I am an inventor are provided in my
`
`resume, which is Attachment A to this Declaration.
`
`2.
`
`I have been engaged to investigate and opine on certain issues relating to U.S.
`
`Patent No. 8,394,618 B2 entitled “LIPASE-CONTAINING POLYMERIC
`
`COATINGS FOR THE FACILITATED REMOVAL OF FINGERPRINTS
`
`(“the ’618 Patent” [Ex. 1001]) in Petition for Inter Partes Review of the ’618
`
`Patent (“the ’618 IPR Petition”) which requests the Patent Trial and Appeal
`
`Board (“PTAB”) to review and cancel Claims 1-11 of the ’618 Patent.
`
`3.
`
`I understand that, according to USPTO assignment records, the ’618 Patent is
`
`
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`1
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`

`
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`owned by Toyota Motor Corporation.
`
`4.
`
`In this declaration, I will address technical arguments made in the Patent
`
`Owner’s Response as they relate to the ’618 Patent, I will also respond to
`
`statements made in the declaration of Jonathan Dordick (“Dordick
`
`Declaration”) in support of the Patent Owner.
`
`5.
`
`This declaration is based on the information currently available to me and
`
`other documents related to the IPR2016-01914 proceeding that have been
`
`provided to me. Documents from the IPR2016-01914 proceeding include
`
`Patent Owner’s Response, U.S. Patent No. 8,394,618 (Ex. 1001), Barnett (Ex.
`
`2011), Buchanan et al. (Ex. 1013), Craig (Ex. 2015), Mong (Ex. 2013), and
`
`Dordick Declaration (Ex. 2010). To the extent that additional information
`
`becomes available, I reserve the right to continue my investigation and study,
`
`which may include a review of documents and information that may be
`
`produced, as well as testimony from depositions that may not yet be taken.
`
`6.
`
`In forming my opinions, I have relied on information and evidence identified
`
`in this declaration, including the ’618 Patent, the prosecution history of the
`
`’618 Patent, and prior art references listed as Exhibits to the Petition for Inter
`
`Partes Review of the ’618 Patent. I have also relied on a review of the Patent
`
`Owner’s Response, the Dordick Declaration (Ex. 2010), and exhibits
`
`referenced in the Patent Owner’s Response and in the Dordick Declaration. I
`
`
`
`2
`
`
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`

`

`
`
`have further relied on my own education and work experience in the relevant
`
`technologies and systems that were already in use prior to, and within the
`
`timeframe of, the earliest effective filing date of the claimed subject matter in
`
`the ’618 Patent (i.e., June 21, 2010).
`
`II.
`
`SUMMARY OF OPINIONS
`
`7.
`
`It was well-established prior to the filing date of the ‘618 patent that
`
`fingerprints (broadly defined by the patentee as bio-organic stains) contained
`
`lipid or ester components degradable by a lipase, and a POSITA would have
`
`known that a lipase would degrade those components to products having
`
`lower molecular weight and greater volatility.
`
`8.
`
`Buchanan is analogous prior art and pertinent to the grounds of
`
`unpatentability.
`
`9. Mong, a reference cited and described in detail in the Dordick Declaration,
`
`supports the conclusions of Buchanan as they relate to obviousness of the
`
`claims of the ‘618 patent.
`
`10. Buchanan was a “printed reference” that was available prior to the filing date
`
`of the ‘618 patent.
`
`11. A POSITA with knowledge of Buchanan in view of Mong and a general
`
`knowledge of lipases would have had a reasonable expectation of success in
`
`facilitating the removal of a fingerprint (as defined by the Patent Owner) from
`
`
`
`3
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`

`

`
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`a lipase-associated surface or coating by vaporization.
`
`12.
`
`In arriving at a conclusion of obviousness regarding the claims of the’618
`
`patent, I did not rely exclusively on Buchanan as alleged in the Patent Owner’s
`
`Response.
`
`13. The distinction made by the Patent Owner between latent and patent
`
`fingerprints does not render irrelevant the prior art work showing that
`
`fingerprints having more volatile components disappear more rapidly by
`
`vaporization.
`
`14.
`
`I confirm that aqueous saline contains mostly water, and that water would be
`
`expected to evaporate more rapidly (in the presence or absence of a lipase-
`
`associated coating) than most sebaceous components in fingerprints due to its
`
`lower boiling point.
`
`15.
`
`In the Dordick Declaration the term “sweat samples” is used to describe the
`
`fingerprint samples analyzed by Buchanan. (Ex. 2010 at Paragraph 37, line
`
`13) In my opinion, this is an inaccurate characterization of the samples
`
`collected and analyzed by Buchanan, seemingly used for the sole purpose of
`
`attempting to disparage Buchanan.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A.
`
`Education and Work Experience
`
`16.
`
`I obtained a Bachelor of Science degree in Chemistry in 1978 from the
`
`
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`4
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`

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`University of Virginia and a Ph.D. in Chemistry from Harvard University in
`
`1983. My dissertation was entitled: “Stereospecificity of Acetoacetate
`
`Decarboxylase. A New Synthesis of Chiral Methyl Acetate.”
`
`17.
`
`I have authored dozens of peer reviewed journal articles, several chapters in
`
`books, and given numerous presentations at symposia around the world in the
`
`field of enzymes, biocatalysis, and organic chemistry. (See relevant sections
`
`of Attachment A).
`
`18.
`
`I currently serve as Sr. Vice-President, Biocatalysis, at Provivi, Inc. in Santa
`
`Monica, CA. I joined Provivi, Inc. in 2015 with the responsibility of leading
`
`development and commercialization of novel enzymes catalyzing the
`
`synthesis of chiral cyclopropanes via a carbene transfer mechanism. My
`
`specific responsibilities include managing internal R & D, business
`
`development, customer acquisition and project management to meet rigorous
`
`timelines for development.
`
`19.
`
`I currently also serve as CEO and Founder of Sustainable Chemistry
`
`Solutions, Inc., in Burbank, CA. Through Sustainable Chemistry Solutions,
`
`Inc., I am the publisher of the web site http://www.bio-catalyst.com, which
`
`provides information and insights on biofuels, bio-based chemicals, and
`
`biocatalysis and am also the publisher of monthly newsletter Enzyme Industry
`
`Newsletter, offering information products and consulting services related to
`
`
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`5
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`enzymes and biocatalysis to pharmaceutical and chemical companies. I
`
`provide consulting support to programs for the development of novel enzymes
`
`and their applications, and also for pathways in bio-based chemical
`
`production. I am creator and publisher of the Enzyme Company Guide and
`
`the Biocatalysis Company Guide, providing business and
`
`technical
`
`information to industry specialists. I also offer expert witness services in
`
`patent litigation and cases involving enzymes and the development and
`
`enzyme-based processes and applications.
`
`20. Since 2011, I have served as CEO and Co-Founder of Catylix, Inc. in
`
`Burbank, CA. Together with the other co-founder, we established this
`
`company to develop and commercialize a novel, broadly-useful chemistry for
`
`adding fluorine-containing functional groups to chemical compounds. Our
`
`first product called Trifluoromethylator® was launched in July 2011. The
`
`main product applications are in the discovery of pharmaceuticals and crop
`
`protection agents with improved efficacy and metabolic stability.
`
`21.
`
`I served as President and CEO of Solidus Biosciences, Inc. in San Francisco,
`
`CA from 2009 to 2010. In leading this company, which was developing a
`
`novel, chip-based in vitro toxicology platform, I was responsible for
`
`managing company operations, setting business strategy, developing new
`
`customer relationships, and raising funds from investors.
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`22. From 2007 to 2008, I served as VP, Biocatalysis Technology and Applications
`
`for Codexis, Inc. following its acquisition of BioCatalytics, Inc. in July 2007.
`
`I was responsible for the identification and development of new technologies,
`
`including
`
`technologies developed and
`
`in-licensed
`
`through external
`
`collaborations. I managed a network of external collaborations in the USA
`
`and Europe, promoting the company and supporting business development
`
`activities through technical presentations, press conferences, and written
`
`articles. I also initiated an emphasis on Green Chemistry.
`
`23.
`
`I was Founder, President, CSO and CEO at BioCatalytics, Inc. in Pasadena,
`
`CA from 1996 to 2007. I established this biotechnology company to develop
`
`and commercialize enzymes and enzyme-based processes for the production
`
`of optically active pharmaceutical intermediates and other specialty
`
`chemicals. I built this company into a profitable seller of novel enzymes for
`
`chemical synthesis, with one of the world’s largest enzyme product lines. I
`
`established a European office in 2005 and a subsidiary BioCatalytics Europe
`
`GmbH in Graz, Austria in 2006. BioCatalytics, Inc. was acquired in 2007 by
`
`Codexis, Inc.
`
`24.
`
`I was Co-Founder and Acting CEO of EraGen Biosciences, Inc. (initially
`
`established as Sulfonics, Inc.) in Madison, WI from 1994-1996. I co-founded
`
`this start-up biotechnology company, which focused on applications of non-
`
`
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`7
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`
`
`standard nucleic acid bases and protein structure prediction. This company
`
`raised seed capital from individual investors and the Novartis Venture Fund.
`
`I acted as CEO until a full-time person was recruited to establish the company
`
`in its first headquarters in Florida.
`
`25. During my time with Exogene Corporation in Monrovia, CA, I first served as
`
`Vice-President of Research & Development (1991-1992) and then as
`
`President (1992-1994). My responsibilities included business development,
`
`negotiation of sponsored research and technology licensing agreements,
`
`general scientific guidance of the company's research, and supervision of the
`
`administrative and senior scientific staff.
`
`26.
`
`I served as Director of Research and Biotreatment Systems at Celgene
`
`Corporation in Warren, NJ from 1988-1991. This company employed a
`
`combination of biocatalytic
`
`reactions and organic chemistry. My
`
`responsibilities included directing both proprietary and collaborative research
`
`programs focused on the production of pharmaceutical intermediates and
`
`specialty chemicals and in the biocatalytic degradation of environmentally-
`
`hazardous chemicals in waste streams.
`
`27. During my time with Genetics Institute, Inc. in Cambridge, MA, I first served
`
`as Senior Scientist (1983-1986) and then as Director of Biocatalysis Research
`
`(1986-1988). I built and managed an interdisciplinary group of professionals
`
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`and directed the research and development activities of an Applied
`
`Enzymology group and a Biocatalysis group. My efforts in these positions
`
`resulted in more than $1 million in revenues through funding and license
`
`agreements, and the commercialization of processes to manufacture optically
`
`active amino acids at the multi-hundred ton per year scale.
`
`28. With respect to the claimed invention, I have specific experience in the areas
`
`of the cloning and expression of genes encoding enzymes, the improvement
`
`of enzymes through directed evolution methods, the use of enzymes to
`
`catalyze various chemical reactions, and the immobilization of enzymes on
`
`polymeric materials and surfaces by either covalent or non-covalent means.
`
`In my previous research work, I have immobilized various types of enzymes,
`
`including
`
`lipases, proteases, amidases, esterases, oxidoreductases,
`
`transaminases, and other enzymes on various types of materials. This work
`
`includes specific examples of immobilization by both covalent (chemical
`
`bonding) and non-covalent (adsorption, entrapment in a polymeric gel or
`
`coating) methods. In one case, I adsorbed lipases from different sources onto
`
`cross-linked polystyrene and polyacrylate-co-polymers for use in hydrolyzing
`
`or transesterifying esters. I have also immobilized enzymes by entrapment in
`
`gels formed by the condensation of polymers such as chitosan calcium
`
`alginate, and kappa-carrageenan, or by entrapment within gels formed by a
`
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`9
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`
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`polymerization or curing process, such as
`
`the polymerization of
`
`polyacrylamide. I have also immobilized enzymes onto materials such as
`
`silica or alumina which have had their surfaces chemically modified or coated
`
`with an organic compound or polymer.
`
`29.
`
`I have also published articles about enzyme immobilization. I was a co-author
`
`of a book chapter describing methods of covalent enzyme immobilization
`
`entitled “Immobilization of Enzymes by Covalent Attachment.” This was
`
`published as chapter 20 in “Methods in Biotechnology, Vol. 17: Microbial
`
`Enzymes and Biotransformations,” edited by J. L. Barredo and published by
`
`Humana Press, Inc. Totowa, NJ. (Attachment B, Ex. 1049) I am also the
`
`author of “Immobilization of Enzymes: Techniques and Applications”
`
`published as Chapter 13 in the book “Biocatalytic Production of Amino Acids
`
`and Derivatives: New Developments and Process Considerations,” published
`
`by Hanser Publishers in 1992 (Attachment C, Ex. 1050). I also have written
`
`about my research on the use of immobilized Transaminases for the
`
`production of amino acids [see, for example, "Immobilized Aminotransferases
`
`for Amino Acid Production": J. David Rozzell., 1987. Methods in
`
`Enzymology, 137, 479-497.] (Attachment D, Ex. 1051).
`
`B. Compensation
`
`30.
`
` My services in this matter, which are being provided through Sustainable
`
`
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`10
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`

`

`
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`Chemistry Solutions, Inc., whose offices are located at 437 South Sparks
`
`Street, Burbank, California 91506, are being compensated at a rate of $375
`
`per hour. This compensation is not contingent upon my performance, the
`
`outcome of this inter partes review or any other proceeding, or any issues
`
`involved in or related to this inter partes review.
`
`C. Documents and Other Materials Relied Upon
`
`31. The documents on which I rely for the opinions expressed in this declaration
`
`are documents and materials identified in this declaration, including the ’618
`
`Patent, any related patents and applications in the same family as the ’618
`
`Patent, the prosecution history for the ’618 Patent and that of any related
`
`family members of the ’618 Patent, the cited prior art references and
`
`associated information discussed in this declaration, and any other references
`
`specifically identified in this declaration, in their entirety, even if only
`
`portions of these documents are discussed here in an exemplary fashion.
`
`IV. ANALYSIS
`
`A.
`
`It was well-known prior to the filing date of the ‘618 patent that
`
`fingerprints contain components degradable by a lipase, and a
`
`POSITA with a general knowledge of lipases would have known
`
`that a lipase would be capable of degrading those components to
`
`products of lower molecular weight and greater volatility.
`
`
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`11
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`

`
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`32.
`
`It was well-established prior to the filing date of the ‘618 Patent that
`
`fingerprints (broadly defined by the Patent Owner as bio-organic stains)
`
`contained lipid or ester components, and that these lipid or ester components
`
`can be degraded by a lipase. This fact was mentioned in the ‘618 Patent itself
`
`(see ‘618 Patent at 2:34-47).
`
`33. However, the literature contains ample evidence that fingerprints were known
`
`to contain lipid and ester components prior to the filing date of the ‘618 Patent.
`
`A detailed review of the composition of fingerprint residue was published by
`
`Robert S. Ramotowski in 2001 as Chapter 3 in a book entitled “Advances in
`
`Fingerprint Technology (Attachment E, Ex. 1024, R. S. Ramotowski,
`
`“Composition of Latent Print Residue”, Chapter 3, Pages 63-104 in Advances
`
`in Fingerprint Technology, 2nd Edition, Henry C. Lee and R. E Gaensslen,
`
`Eds., CRC Press, Boca Raton, Florida, 2001). Romotowski teaches that
`
`sebaceous secretions of the type found in fingerprint residue contain various
`
`organic compounds including triglycerides (30-40%), free fatty acids (15-
`
`25%), wax esters (20-25%), squalene (10-12%), cholesterol (1-3%, and
`
`cholesterol esters (2-3%.) (See Attachment E, Ramotowski, Table 3.6 on page
`
`81) Secretions from eccrine glands and apocrine glands also produce various
`
`mixtures of organic and inorganic compounds and saline. (See Attachment E,
`
`Ramotowski, Page 69, first sentence under the sub-heading “Inorganic
`
`
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`12
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`
`
`Compounds”: “Although eccrine sweat is usually in excess of 98% water, it
`
`also contains numerous organic and inorganic constituents.”) Further
`
`evidence that fingerprints were known to contain lipid and ester components
`
`can be found in Asano et al. (Attachment J, Ex. 1029, Keiji G. Asano et al,
`
`J. Forensic Science 2002 47, 805-807) This work, which was carried out at
`
`the Oak Ridge National Laboratory, identified “fatty acids, long-chain fatty
`
`acid esters, cholesterol, and squalene” as chemical components found in
`
`fingerprint samples from 10 male and 10 female volunteers. Specific fatty acid
`
`esters identified were 9-hexadecenoic acid tetradecyl ester, 9-hexadecenoic
`
`acid hexaadecyl ester, 9-hexadecenoic acid octadecyl ester, and 9-
`
`hexadecenoic acid eicosyl ester (Attachment, J, Asano et al. bridging
`
`paragraph pp. 2-3 and Fig. 1). An additional description of chemical
`
`components of fingerprints is given by Buchanan (page 90, first two
`
`paragraphs under Results and Discussion). Buchanan describes
`
`the
`
`identification of various esters of long-chain carboxylic acids. Additional
`
`evidence is provided by Mong (see list of compounds that include C14 to C22
`
`fatty acids and wax esters in Table A.1). I also note that Wang (Attachment
`
`F, Ex. 1025, US Patent Appl. 2008/0119381 A1, published May 22, 2008)
`
`describes bio-organic stains containing “oils” (which I understand from the
`
`context to mean triglyceride oils, i.e. lipids) derived from food (Attachment
`
`13
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`

`

`
`
`F, Wang, see paragraph 4) and that lipases hydrolyze lipids and fats
`
`(Attachment F, Wang, paragraph 17.). Furthermore, as evidenced by
`
`Buchanan (Figure 3 on page 95) and Mong (Ex. 2013 page 5, paragraph 2
`
`under “Summary”, lines 5-7), it was known prior to the filing date of the ‘618
`
`Patent that compounds such as fatty acid esters and wax esters are typically
`
`present in fingerprint residue.
`
`34. The fact that fatty acid esters, wax esters, and cholesterol esters are degraded
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`by a lipase was also well-known prior to the filing date of the ‘618 patent. A
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`typical definition of a lipase can be found in the American Heritage® Medical
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`Dictionary, (Copyright 2007 and 2004, Houghton Mifflin): “Any group of
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`enzymes that catalyze the hydrolysis of fats into glycerol and fatty acids.”
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`Lipases are a subclass of carboxylic ester hydrolases. (See Attachment I, Ex.
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`2025, Enzyme Nomenclature, 1984, Academic Press). Lipases are found
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`within the general class of enzymes in E.C. 3.1.1 which are classified as
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`Carboxylic Ester Hydrolases.) Similar definitions can be found in other
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`dictionaries or biochemistry text books that were available prior to the filing
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`date of the ‘618 Patent. Numerous lipases had been identified and
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`characterized according to the various types of fatty acid esters, triglycerides,
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`or other esters that are acted on. The book Enzyme Nomenclature (published
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`in 1984 by Academic Press for the International Union of Biochemistry) lists
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`various enzymes under the Enzyme Commission Number 3.1.1.x (enzymes
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`that act on ester bonds, see pages 270-279) that include triacylglycerol lipase
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`(EC 3.1.1.3), cholesterol esterase (3.1.1.13), acyl glycerol lipase (3.1.1.23),
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`lipoprotein lipase (EC 3.1.1.34), wax ester hydrolase (EC 3.1.1.50), and many
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`other enzymes that hydrolyze ester bonds of the type found in fatty acid esters,
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`cholesterol esters, or wax esters. Hydrolysis of fatty acid esters produces fatty
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`acid and alcohol products of lower molecular weight than the starting fatty
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`acid ester. Further evidence that it was well-known that lipases were capable
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`of degrading the types of esters and lipid compounds found in fingerprints into
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`lower molecular weight compounds can be found in the discussion in my
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`previous declaration. (See discussion in Rozzell Declaration executed
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`September 28, 2016 [Ex. 1010], in paragraph 35) Therefore, in my opinion, it
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`would have been obvious to a POSITA, with knowledge of Buchanan and/or
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`Mong, a knowledge of the prior art that described the lipids, fatty acid esters
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`and related compounds found in fingerprints, and a general understanding of
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`lipase enzymes, that contacting a lipase with a fingerprint would lead to break-
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`down of at least some of the lipase-degradable components into products
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`having lower molecular weight. Since these lower molecular weight
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`breakdown products have generally greater volatility, this would naturally
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`lead to an expectation of their more rapid disappearance by vaporization.
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`B.
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`Buchanan is analogous art and pertinent to the field of endeavor.
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`35. One of reasons given by the Patent Owner that Claim 1 of the ‘618 patent is
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`not obvious in view of Buchanan is that “Buchanan is not analogous art” (See
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`Patent Owner Response, page 27). This argument is also made in the Dordick
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`Declaration (See Ex. 2010 at ¶45). I respectfully disagree.
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`36. The Patent Owner’s Response states that Buchanan is not analogous art
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`because the work is not “from the same field of endeavor as the claimed
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`subject matter, regardless of the problem addressed” and “not reasonably
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`pertinent to the particular problem with which the inventor is involved.”
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`(Patent Owner’s Response, Page 28, first paragraph) The field of endeavor set
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`forth in the Dordick Declaration (Ex. 2010 at ¶35] and relied upon in the
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`Patent Owner’s Response is defined, somewhat self-servingly in my opinion,
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`as “bioactive coatings.” I disagree with this definition of the field of endeavor.
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`37. The claimed invention is not a new bioactive coating. There were many
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`bioactive coatings based on polymers containing immobilized enzymes
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`known in the prior art at the time of the claimed invention (see, for example,
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`Attachment G, Ex. 1026, He, et al, “alpha amylase immobilized on bulk
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`acoustic wave sensor by UV-curing coating,” 2000. Biochemical Engineering
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`Journal, 6, 7-11; Attachment H, Ex. 1027, Kim et al, “Siloxane-based
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`biocatalytic films and paints for use as reactive coatings,” Biotechnology and
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`Bioengineering, 2001. vol 72, 475-482; Attachment F, Ex. 2025, Wang, US
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`Patent Appl. 2008/0119381 A1, paragraph [0005], published May 22, 2008).
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`No claim of inventing a new bioactive coating was made in the ‘618 patent
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`nor, in my opinion, would it have been inventive if such a claim had been
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`made. Rather, the problem being addressed by the inventors of the ‘618 Patent
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`is the removal of fingerprints (see ‘618 Patent, 1:16-20). The alleged invention
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`in the ‘618 patent is not a novel bioactive coating, but a method of facilitating
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`the removal of a fingerprint (as defined by the Patent Owner) from a lipase-
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`associated surface or coating by vaporization. Thus, the emphasis of the ‘618
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`patent is a method for facilitating the removal of fingerprints and not the
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`development of bioactive coatings per se. Therefore, I would define the field
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`of endeavor more accurately as enzyme-containing polymeric coatings
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`capable of facilitating the removal of fingerprints and other bioorganic stains
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`by vaporization.
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`38. Given this definition, it is my opinion that Buchanan is highly pertinent and
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`analogous art. In the specification of the ‘618 patent, the inventors provide an
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`explanation for the mechanism of the facilitated removal of fingerprints based
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`on lipase-catalyzed conversion of higher boiling (i.e. less vaporizable)
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`components to lower boiling, more vaporizable components. (see ‘618 patent,
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`2:50-54). Buchanan describes
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`the disappearance of fingerprints by
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`vaporization, and specifically teaches that fingerprints with more volatile
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`components disappear more rapidly by vaporization (Ex. 1013 at page 91,
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`lines 2-5). Thus, I find Buchanan to be highly relevant prior art.
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`39.
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`I note that the Patent Owner’s Response states that when the field of endeavor
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`is similar, art is considered analogous, regardless of the problem solved. (see
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`Patent Owner’s Response, page 28, lines 2-4) Thus, although Buchanan was
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`concerned with the problem of fingerprint detection for crime scene
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`investigations rather than fingerprint removal from surfaces, the focus on
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`understanding factors that cause a more rapid disappearance of fingerprints
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`by vaporization is highly relevant, as this was the mechanism described as the
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`basis for the function of the claimed invention of the ‘618 patent: a method
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`for facilitating the removal of fingerprints by vaporization. (see Claim 1 of
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`the ‘618 Patent)
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`40.
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`In my opinion, the field of endeavor is a method for facilitating the removal
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`of fingerprints by vaporization, in this case in the presence of a lipase-
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`associated coating. Viewed in this way, Buchanan is clearly analogous art.
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`41. The Patent Owner also attempts to argue that Buchanan is not reasonably
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`pertinent to the particular problem with which the inventor is involved. Again
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`I must disagree. The particular problem being solved is how to facilitate the
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`removal of fingerprints by vaporization. The line of argumentation by the
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`Patent Owner is that Buchanan is concerned with the disappearance of “latent”
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`fingerprints (fingerprints invisible by the naked eye), as contrasted with
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`visible (“patent”) fingerprints (See Patent Owner’s Response at pages 4, 28,
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`32,and 35.) In my opinion this explanation is unconvincing.
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`42. Fingerprints that are referred to as “latent” or “patent” can be deposited from
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`the same source. In both cases the fingerprints contain deposits from fingers
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`or other bio-organic source materials. Both would contain similar components
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`(in particular sebum, fatty ester, and wax-ester derived components).
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`Buchanan’s observations
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`that
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`fingerprints containing more volatile
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`components disappear more rapidly by vaporization is, in my opinion, clearly
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`pertinent to the claimed invention, namely facilitating the removal of
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`fingerprints from a lipase-associated substrate or coating by vaporization.
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`C. Mong, a reference cited and described in d