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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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`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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`
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`Case: IPR2016-01914
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`Patent No. 8,394,618 B2
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES ....................................................................... iii
`
`PETITIONER’S EXHIBIT LIST .................................................................. v
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`
`
`I.
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`INTRODUCTION .............................................................................. 1
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`
`
`II.
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`BROADEST REASONABLE ............................................................ 1
`
`A.
`
`B.
`
`C.
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`“Fingerprint” ............................................................................. 2
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`“Latent Print” ............................................................................ 2
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`“Vaporization” .......................................................................... 3
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`
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`III. UNDERLYING CONSIDERATIONS REBUTTING
`PATENTABILITY ............................................................................. 3
`
`A.
`
`B.
`
`Inherency Renders Claims Obvious ........................................ 3
`
`Lipase-Associated Substrates and Coatings
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`Inherently “Facilitate” Removal of Bioorganic
`
`Stains by Evaporation .............................................................. 6
`
`C.
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`Stain Removal by Catalytic Action and Evaporation
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`Were Well-Known .................................................................... 9
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`D.
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`“Facilitating” Limitation Construction Clarifies Relevancy
`
`of Other Prior Art Considered During Prosecution ............... 10
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`E.
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`Overcoming Inherency Requires Improper Importation
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`of Claim Limitations .............................................................. 11
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`
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`IV. GROUNDS OF UNPATENTABILITY DO NOT REST UPON
`BUCHANAN .................................................................................... 16
`
`A. Obviousness is not Predicated on Buchanan ......................... 16
`
`B.
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`Patent Owner Mischaracterizes Relevancy of Buchanan ....... 18
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`C. Other Prior Art of Record Discloses Same Relevant
`
`
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`i
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`Subject Matter as Buchanan ................................................... 20
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`V. BUCHANAN IS ANALOGOUS AND CREDIBLE PRIOR
`
`ART ................................................................................................... 22
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`A.
`
`B.
`
`C.
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`Buchanan is Analogous Prior Art ........................................... 22
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`Buchanan Data is Reliable ...................................................... 23
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`Buchanan is a Printed Publication .......................................... 25
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`VI.
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`‘FACILITATING’ LIMITATION NOT PATENTABLY
`DISTINGUISHING .......................................................................... 25
`
`A.
`
`B.
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`“Facilitating” Limitation is a Manipulative Step .................. 26
`
`Prior Art Recognized ‘Facilitating’ Limitation ...................... 27
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`
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`VII. CONCLUSION..................................................................................27
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`
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`
`ii
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`TABLE OF AUTHORITIES
`
`37 C.F.R. §42.100(b) ............................................................................. 15
`
`
`
`Connell v. Sears Roebuck & Co.,
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`722 F.2d 1542 (Fed. Cir. 1983).................................................... 12
`
`
`
`Griffin v. Bertina,
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`285 F.3d 1029 (Fed. Cir. 2002) .................................................... 12
`
`
`
`In re Bigio,
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`381 F.3d 1320, (Fed. Cir. 2004).................................................... 1, 28
`
`
`
`In re Deminski,
`
`796 F.2d 436 (Fed. Cir. 1986) ..................................................... 10, 13
`
`
`
`In re Fracalossi, 681 F.2d 792 (CCPA 1982) ....................................... 7
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`
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`In re Keller,
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`642 F.2d 413, 208 USPQ 871 (CCPA 1981) ............................ 20
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`
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`
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`In re King,
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`801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) ...................... . 24
`
`
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`
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`Liebel-Flarsheim Co. v. Medrad, Inc,
`
`358 F.3d 898 (Fed. Cir. 2004)............................................ ........ 24
`
`
`
`
`
`In re McDaniel,
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`293 F3d. 1379 (Fed. Cir. 2002) .................................................. 15, 16
`
`
`
`iii
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`
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`In re Spada,
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`15 USPQ 2d 1655 (1990) ......................................................... . 9
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`
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`
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`Superguide Corp. v. DirecTV Enterprises, Inc,
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`358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004)...... 5
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`iv
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`PETITIONER’S EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 8,394,618 B2 to Buthe et al. (“the ’618 Patent”)
`
`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”)
`
`
`Ex. 1004 U.S. Patent Publication No. 2005/0147579 A1 of Schneider
`
`(“Schneider”)
`
`
`Ex. 1005 U.S. Patent No. 5,868,720 to Van Antwerp (“Van Antwerp”)
`
`Ex. 1006 U.S. Patent Publication No. 2005/0176905 A1 of Moon et al.
`
`(“Moon”)
`
`
`Ex. 1007 U.S. Patent No. 6,150,146 to Hamade et al. (“Hamade”)
`
`Ex. 1008 U.S. Patent Publication No. 2004/0109853 A1 of McDaniel
`
`(“McDaniel”)
`
`
`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. (“First Declaration”)
`
`Ex. 1011 Office Action dated August 14, 2012 in the ’063 Application (“the
`’063 OA”)
`
`
`Ex. 1012 Office Action Response filed October 22, 2012 in the ’063
`Application (“the ’063 OAR”)
`
`
` v
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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”)
`
`Ex. 1014 Declaration of Mark Fassold in Support of Petitioner’s Motion for
`Admission Pro Hac Vice
`
`
`Ex. 1015 Declaration of Jorge Mares in Support of Petitioner’s Motion for
`Admission Pro Hac Vice
`
`
`Ex. 1016 Declaration of Leslie D. Michel corroborating publication date
`and printed publication status of Ex. 1022
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`Ex. 1017 Deposition Transcript of Dr. Jonathan S. Dordick
`
`Ex. 1018 Reply Declaration of Dr. David Rozzell, Ph.D.
`
`Ex. 1019 Printed Publication entitled “Enzyme Nomenclature 1978”,
`published in 1979, Academic Press, New York, pp. 234-239
`
`Ex. 1020 Reply Declaration of Eric Ray
`
`Ex. 1021 Printed Publication (March 1, 2004) entitled “Analysis of Latent
`Fingerprint Deposits by Infrared Microscopy” by Williams et al.,
`Journal of Applied Spectroscopy (copyright 2004), Vol. 58, Issue
`(no.) 3, pgs. 313-316 (“Williams”)
`
`
`Ex. 1022 Printed Publication (1999) entitled “The Chemistry of Latent
`Prints from Children and Adults” by Mong et al., The Chesapeake
`Examiner, Fall 1999, Vol. 37, No. 2, pgs. 4-6 (“Mong-2”)
`
`
`Ex. 1023 Declaration of Eric Pepper corroborating publication date and
`printed publication status of Ex. 1013
`
`
`Ex. 1024 Printed Publication (2001) Ramotowski, R.S., in Advances
`in Fingerprint Technology, Chapter 3, Henry C Lee and
`R. E. Gaensslen, eds., CRC Press, Boca Raton, pgs. 63-
`104.
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`vi
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`
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`Ex. 1025 U.S. Patent Application Publication No. 2008/0119381 A1
`for U.S. Patent Application Serial No. 11/562,503 of Wang
`et al., Publication date May 22, 2008 (“Wang”)
`
`
`Ex. 1026 Printed Publication (2000, Journal 6) He et al.,
`Biochemical Engineering Journal, pgs. 7-11
`
`
`Ex. 1027 Printed Publication (Feb. 20 2001) Kim et al.,
`Biotechnology and Bioengengineering, Vol. 72 no. 4, pgs.
`475-482.
`
`
`Ex. 1028 Printed Publication (1984) entitled “Enzyme
`Nomenclature 1984”, Academic Press, New York, pages
`270-279
`
`
`Ex. 1029 Printed Publication (July 2002) Asano et al., Journal of
`Forensic Sciences., Vol. 47, No. 4, pgs. 1-3
`
`
`Ex. 1030 Printed Publication (March 2010) Antoine et al., Journal
`of Forensic Sciences, Vol. 55, No. 2, pgs. 513-518
`
`
`Ex. 1031 World Patent Application WO 2007/017701 A1,
`Publication date February 15, 2007
`
`
`Ex. 1032 Printed Publication (2002) Science News Article, April 15,
`1997, printed copy from web site
`
`
`Ex. 1033 Printed Publication (1999) Menzel, E.R., Marcel Dekker,
`Inc., New York, “Fingerprint Detection with Lasers”,
`Chapter 7, pg. 178 (reference 22)
`
`
`Ex. 1034 Printed Publication (2002) Bartick et al., 16th Meeting of
`the International Association of Forensic Sciences, pgs.
`61-64
`
`
`Ex. 1035 Printed Publication (2004) Jain et al, Proceedings of
`Biometric Authentication Workshop, LNCS 3087, pgs.
`259-269.
`
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`vii
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`
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`Ex. 1036 Printed Publication (July 1969) Drozdowski et al., Journal
`of the American Oil Chemists’ Society, Vo. 46, pgs. 46,
`371-376
`
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`Ex. 1037 Printed Publication (2001), Ramotowski, R. S., Composition of
`Latent Print Residue. In H. C. Lee, & R. E. Gaensslen (Eds.),
`Advances in Fingerprint Technology (2nd ed.). Boca Raton: CRC
`Press. pp. 63-104.
`
`
`Ex. 1038 Printed Publication (1978), Olsen, R. D., Scott's Fingerprint
`Mechanics. Springfield: Charles C. Thomas. pp. 109-158.
`
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`Ex. 1039 Printed Publication (1975), Thomas, G. L., Reynoldson, T. E.,
`Some observations on fingerprint deposits. Journal of Physics D:
`Applied Physics, 8(6), 724-729.
`
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`Ex. 1040 Printed Publication (1966), Rose, A., Rose, E., “The Condensed
`Chemical Dictionary (7th ed.). New York: Reinhold Publishing Co.
`pp. 80, 104, 222-223, 545, 556, 644-645, 691, 704, 716, 887, 891.
`
`
`Ex. 1041 Printed Publication (1986), Federal Bureau of Investigations, The
`Science of Fingerprints (Rev. 12-84). Department of Justice.
`Washington, D.C.: U.S. Government Printing Office. pp. 170-174,
`211.
`
`
`Ex. 1042 Printed Publication (2001), Kent, T. (Ed.), Manual of Fingerprint
`Development Techniques (2nd ed.). Sandridge: Home Office
`Police Scientific Development Branch. Sections 1.1, 1.2, 2.6, and
`“Visual Examination”.
`
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`Ex. 1043 Printed Publication (1995), Bobev, K. (1995), Fingerprints and
`factors affecting their condition. Journal of Forensic Identification,
`45(2), 176-183.
`
`
`Ex. 1044 Printed Publication (2013), Bleay, S. M., Sears, V. G., Bandey, H.
`L., Gibson, A. P., Bowman, V. J., Downham, R., . . . Selway, C.,
`Fingerprint Source Book: manual of development techniques.
`London: Home Office - Centre for Applied Sciences and
`Technology. Chapter 2.
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`viii
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`
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`http://www.gov.uk/government/publications/fingerprint-source-
`book
`
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`Ex. 1045 Printed Publication (1975), Scruton, B., Robins, B. W., & Blott, B.
`H., The deposition of fingerprint films. Journal of Physics D:
`Applied Physics, 8(6), 714-723.
`
`
`Ex. 1046 Printed Publication (1987), Olsen, R. D., Chemical dating
`techniques for latent fingerprints: a preliminary report.
`Identification News, 10-12.
`
`
`Ex. 1047 Printed Publication (1953), Craig, B. M., Refractive indices of
`some saturated and monoethenoid fatty acids and methyl esters.
`Canadian Journal of Chemistry, 31(5), 499-504.
`
`
`Ex. 1048 Printed Publication (1942), Dorinson, A., McCorkle, M. R., &
`Ralston, A. W., Refractive indices and densities of normal saturated
`fatty acids in the liquid state. Journal of the American Chemical
`Society, 64(12), 2739-2741.
`
`
`Ex. 1049 Printed Publication (2005), “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. 1050 Printed Publication (1992), “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. 1051 Printed Publication (1987), "Immobilized Aminotransferases for
`Amino Acid Production": J. David Rozzell., 1987. Methods in
`Enzymology, 137, 479-497.
`
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`
`ix
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`
`
`I.
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`
`
`INTRODUCTION
`
`Patent Owner’s Response (“Response”) fails to overcome evidence of record
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`that claims 1-11 (“Challenged Claims”) of U.S. Patent No. 8,394,618 (“’618 Patent”)
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`are unpatentable on the grounds adopted in the Institution Decision [“Decision”].
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`Based on the preponderance of the evidence presented by Petitioner, this Board can
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`and should cancel as unpatentable the Challenged Claims.
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`
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`II. BROADEST REASONABLE INTERPRETATION
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`As provided for in 37 C.F.R. §42.100(b), each Challenged Claim “shall be
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`given its broadest reasonable construction in light of the specification of the patent
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`in which it appears.” Moreover, absent claim language carrying a narrow
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`meaning, the PTO should only limit the claim based on the specification or
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`prosecution history when those sources expressly disclaim the broader
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`definition. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906-09
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`(Fed. Cir. 2004) (explaining requirement for an express disclaimer in either the
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`specification or prosecution history). The presumption that a term is given its
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`ordinary and customary meaning may be rebutted by the applicant by clearly
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`setting forth a different definition of the term in the specification. In re
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`Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) (the
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`USPTO looks to the ordinary use of the claim terms taking into account definitions
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`
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`1
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`or other “enlightenment” contained in the written description).
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`
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`A.
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` “Fingerprint”
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`
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`Petitioner raised the issue of the ‘618 Patent applicants having served as their
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`own lexicographer in defining the term “fingerprint”. [Petition at 16-17.] Petitioner
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`submits that the broadest reasonable interpretation of such term includes a
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`bioorganic stain, mark or residue left behind on a substrate or coating after an
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`organism touches such substrate or coating, whether or not such touching is by a
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`finger.
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`B.
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`“Latent Fingerprint”
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`
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`Patent Owner’s arguments are directed to subject matter referred to in the
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`Response as a “latent fingerprint”. [Response at 1, 4, 9, 28, 32-36.] Neither latent
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`fingerprint nor patent fingerprint is expressly disclosed or otherwise discussed in the
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`’618 Patent. Petitioner’s expert, Eric Ray, testifies that a “fingerprint” consisting of
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`residue having one or more constituent chemical components that are secreted from
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`the human body, such “fingerprint” can be readily visible to the naked eye. [Ex
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`1020 at ¶¶17, 18, 22-25, 34-40.] Petitioner submits that the broadest reasonable
`
`interpretation of the term “latent fingerprint” includes a bioorganic stain that is
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` 2
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`
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`visible to the naked eye.
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`C.
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` “Vaporization”
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`The Board has introduced the term “evaporation” into these proceedings
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`[Institution Decision [Paper 26] at 7, 16, 23] and Patent Owner has introduced the
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`term “evaporative” into these proceedings [Response at 2, 20, 22, 27, 47].
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`Petitioner’s expert, Dr. Jonathan Dordick, has testified that the terms vaporization
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`and evaporation are “synonymous”. [Ex. 1017 at 7:17-8:2; 49:2-7.] Petitioner expert
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`Eric Ray provides testimony supporting such position. [Ex. 1020 at ¶15, ¶30.] Thus,
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`the broadest reasonable interpretation of “vaporization” includes evaporation.
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`III. UNDERLYING CONSIDERATIONS REBUTTING
`
`PATENTABILITY
`
`
`
`A.
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`Inherency Renders Claims Obvious
`
`Patent Owner challenges Petitioner’s position that the use of lipase for
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`facilitating fingerprint removal is inherent. [Response at 2.] Petitioner maintains
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`such inherency position [Petition at 13-15, 38, 48, 55-56] and further asserts that
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`a showing of such inherency is provided for by devices disclosed in prior art relied
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`upon in each ground of unpatentability. Per MPEP 2112, “under the principles of
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`inherency, if a prior art device, in its normal and usual operation, would
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`necessarily perform the method claimed, then the method claimed will be
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`considered to be anticipated by the prior art device. When the prior art device is
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` 3
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`the same as a device described in the specification for carrying out the claimed
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`method, it can be assumed the device will inherently perform the claimed
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`process.” In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986).
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`The ’618 Patent discloses a device having a construction comprising a
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`substrate and a lipase associated with the substrate such that the lipase is capable
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`of enzymatically degrading a component of a bioorganic stain. [See Ex. 1001 at
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`Example 1 (lipase coated panel).] Such device is structurally the same as the
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`devices respectively disclosed in the prior art references of Schneider [Ex. 1004],
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`Van Antwerp1 [Ex. 1005], and Drevon [Ex. 1003]. Each of such prior art
`
`references discloses a substrate and a lipase associated with the substrate such that
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`the lipase is capable of enzymatically degrading a component of a bioorganic stain.
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`[Petition at 23-28, 36-38, 46-48, 53-56]. Moreover, the ’618 Patent discloses,
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`"[t]he following description of embodiment(s) of the invention is merely
`
`exemplary in nature and is in no way intended to limit the scope of the
`
`invention, its application, or uses, which may, of course, vary.” [Ex. 1001 at
`
`2:25-28.]
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`In their normal and usual operation, the device of each prior art references
`
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`1 Van Antwerp discloses enzyme provided on exterior surfaces of the catheter.
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` 4
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`[Petition at 28.]
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`performs the method as recited in Claim 1, which comprises: 1.) providing a
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`substrate or a coating, 2.) associating a lipase with said substrate or said coating
`
`such that said lipase is capable of enzymatically degrading a component of a
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`fingerprint, and 3.) facilitating the removal of a fingerprint by vaporization from
`
`the lipase associated substrate or coating when contacted by a fingerprint. [Ex.
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`1001 at 15:18-26.] Normal use of each device includes exposure to ambient air
`
`conditions and deposition of a bioorganic stain such as by contact with a person’s
`
`skin. For example, as admitted by Dr. Dordick, the Van Antwerp’s catheter [Ex.
`
`1005] will facilitate active fingerprint removal from an exterior lipase-associated
`
`surface thereof when such surface is subjected to having a bioorganic stain (e.g.,
`
`a fingerprint) deposited thereon. [Ex. 1017 at 55:25-56:17; 58:11-60:1.; Ex. 1018
`
`at ¶56.] Schneider discloses, “As the technology for keeping the interior
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`environment of hospitals, etc., against bacteria and fungi, it is common
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`practice
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`to
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`apply
`
`a
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`coating
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`containing
`
`a
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`compound having
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`antibacterial/antifungul activity to the surface of the interior walls, fixtures,
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`furnishings, upholstery, etc.” [Ex. 1004 at 0009.] Schneider further discloses
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`that such coatings contain lipase enzymes. [Ex. 1004 at Abstract, 0052, 0072,
`
`0074, 0081-0090, 0108.]
`
`“Although a claimed invention can be obvious but not anticipated, it ‘cannot
`
`have been anticipated and not have been obvious.’ In re Fracalossi, 681 F.2d 792,
`
` 5
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`
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`
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`794 (CCPA 1982). See also In re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir.
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`2002)(quoting Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
`
`1983)). The Board in IPR2013-00067 held that “[b]ecause anticipation is the
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`epitome of obviousness, a disclosure that anticipates under §102 also renders the
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`claim unpatentable under §103.” [Order at 36] See also, IPR2014-00476 and
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`IPR2014-00100.
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`Thus, the prior art relied upon in the grounds of unpatentability renders
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`obvious the method as recited in Claim 1 and relevant dependent claims2 thereof.
`
`
`
`B.
`
`Lipase-Associated Substrates
`
`and Coatings
`
`Inherently
`
`“Facilitate” Removal of Bioorganic Stains by Evaporation
`
`Patent Owner asserts that, “the inventors discovered that a lipase associated
`
`with a material can enzymatically degrade components of a fingerprint to facilitate
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`the evaporation of the fingerprint from the surface of the material” 3. [Response at
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`6] Petitioner submits that it as well-known prior to the ’618 Patent’s earliest
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`effective filing date that lipase-containing compositions and coating thereof
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`2 Petition at 32 (Table 2 specifying dependent claims: 2-3 for Van Antwerp; 2-8
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`and 10-11 for Schneider; and 2-9 for Drevon).
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`3 “evaporative” finds closest support at Ex. 1001 at 2:53-54.
`
` 6
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`enzymatically degrade lipids to smaller molecules that exhibit higher volatility and
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`that bioorganic stains (e.g., “fingerprints”) may include such lipids. Petitioner’s
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`expert, Dr. Rozzell, has testified that such enzymatic activity was known prior to
`
`the ’618 Patent’s earliest effective filing date, stating: “[i]ndeed, hydrolyzing
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`various types of lipids and fatty acid esters is a defining characteristic of a lipase
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`and an inherent property of lipases in general. [See for example, Attachment E;
`
`Enzyme Nomenclature 1978, published in 1979, Academic Press, New York, pp.
`
`234-239].” 4 [Ex. 1010 (Dr. Rozzell’s “First Declaration”) at ¶35.] Dr. Rozzell
`
`cites to Attachment E (i.e., Ex. 1019) in his First Declaration [Ex. 1010 at ¶35] in
`
`reference to examples of such hydrolyzing of various types of lipids producing
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`glycerols and fatty acids [Ex. 1019 at 167 (i.e., Triacylglycerol lipase), 171
`
`(Lipoprotein lipase), 172 (Diglyceride lipase).] Mong discloses that diglyceride
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`is a component of fingerprint residue [Ex. 2013 at page A.3 (Table A.1)] and
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`diglyceride lipase is known to catalyze the hydrolyses of diglyceride (also known
`
`as Diacylglycerol) to produce glycerol and fatty acid. [Ex. 1019 at 172.]
`
`Petitioner and Patent Owner experts disagree with the Board’s finding
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`regarding “fingerprints containing low-volatility lipids” and “fingerprint lipids
`
`
`4 Schneider discloses that “lipases degrade cell wall lipids and other lipid
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`associated macromolecules”. [Petition at 47 (citing Ex. 1004 at 0072:1-5).]
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` 7
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`could be broken into smaller, higher-volatility molecules by contact with a lipase”
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`[Decision at 8], testifying that this disclosed information is not a discovery of the
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`‘618 Patent inventors. [Ex. 1017 at 76:20-77:16, 81:10-82:20, 85:18-86:3, 86:17-
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`87:15; Ex. 1018 at ¶¶33-34; Ex. 1020 at ¶¶50-53.]
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`A chemical composition with a higher volatility exhibits greater propensity
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`for vaporization (e.g., evaporation) than does a chemical composition with a lower
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`volatility and that lipases break down certain constituent components of a
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`bioorganic fingerprint stain (e.g., lipids) to components having higher volatility
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`[Ex. 1017 at 59:15-60:1, 69:4-70:6, 85:18-87:3; Ex. 1018 at ¶¶32-34, 54 and Ex.
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`1019 at 172]. Thus, a POSITA recognizes that lipase-associated substrate or
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`coating would inherently result in such lipase-associated substrate or coating
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`breaking down one or more constituent components of a bioorganic fingerprint
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`stain (e.g., lipids) to components having higher volatility thereby enabling
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`facilitation of removal of lipid-based bioorganic stains by more readily
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`evaporation. This is in line with In re Spada, 15 USPQ 2d 1655 (1990) which
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`holds that products of identical chemical composition cannot have mutually
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`exclusive properties. Dr. Dordick confirms such inherency of active fingerprint
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`removal by acknowledging that ‘the '618 patent show that lipase facilitates the
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`vaporization of fingerprints inherently when the fingerprints are in an environment
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`that would support such vaporization.’ [Ex. 1017 at 7:3-8]
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` 8
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`C.
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`Stain Removal by Catalytic Action and Evaporation Were Well-
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`Known
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`Patent Owner presents and relies upon the argument that “previous
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`approaches for promoting the removal of fingerprint stains did not rely on either
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`the catalytic action of enzymes or on vaporization as a mechanism for fingerprint
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`removal.” [Response at 6 (Section II.A)]. Petitioner submits that prior art
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`discussed in the Petition and expert testimony contradicts this argument.
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`U.S. Patent Application Publication 2008/0119381 (“Wang – Ex. 1025),
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`which was referenced in the Petition [Id. at 9-10, 13 (“Wang et al.”)] and that is a
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`cited prior art reference on the ’618 Patent, discloses incorporation of a lipase on
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`the surface of substrates such as a paint or coating for utilizing the catalytic activity
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`of such digestive proteins to provide an “automatic" enzymatic degradation
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`reaction for enabling “on-going self-cleaning to reduce and eliminate stain
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`contaminants”. [Ex. 1025 at Abstract, ¶0002:1-4; ¶0005:1-5, ¶0015:1-3, ¶0016:1-
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`3, ¶0017:1-7. 0030:1-4, ¶0037: 1-7.] The disclosures of Wang suggest, if not
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`teach, that stain causing materials comprise fingerprints. [Ex. 1025 at ¶0004:1-
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`2.] Wang discloses that digestive proteins of disclosed compositions “may
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`include […] lipases which hydrolyze lipids and fats”5 [Ex. 1025 at ¶0036:1-4]
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`5 Fats include triacylglycerol that is enzymatically degraded by lipase. [Ex. 1017
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` 9
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`Dr. Dordick and Dr. Rozzell agree that that the lipase-associated substrate
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`of Wang is intended to facilitate active removal of bioorganic stains that would
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`include fingerprints. [Ex. 1017 at 70:1-6, 74:12-24; 76:20-77:16; 77:20-78:4;
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`Ex. 1018 at ¶37.] Thus, Patent Owner’s assertion that, “previous approaches for
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`promoting the removal of fingerprint stains did not rely on either the catalytic
`
`action of enzymes or on vaporization as a mechanism for fingerprint removal”
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`lacks merit. [Response at 6.]
`
`D.
`
`“Facilitating” Limitation Construction Clarifies Relevancy of
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`Other Prior Art Considered During Prosecution
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`In an attempt to narrow the scope of the ‘facilitating’ limitation, Patent
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`Owner states references various statements made during prosecution of the
`
`application from which the ’618 Patent issued. [Response at 21, 34.] However,
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`the Board’s construction of such ‘facilitating’ limitation [see Institution
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`Decision at 5-6], as well as the broadest reasonable interpretation of
`
`vaporization including evaporation (see Section II.C), clarifies the relevancy
`
`of prior art as it relates to contradicting such statements and thus rebutting
`
`Patent Owner’s obviousness arguments.
`
`
`at 23:5-13, 82:14-16; Ex. 1018 at ¶¶33-34 (regarding fats); Ex. 1019 at 168
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`(triglyceride lipase).]
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`10
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`
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`The Board’s construction for the ‘facilitating’ limitation does not include
`
`“fingerprint”, but rather recites “a bioorganic stain”. [Institution Decision at 5-6.]
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`Petitioner submits that such construction clarifies the relevancy of Wang’s
`
`disclosure6 as it relates to obviousness. For example, Wang discloses use of a
`
`lipase for hydrolyzing lipids and fats, which is well known to produce breakdown
`
`components that have higher volatility and thus are more prone to evaporate than
`
`the fats and/or lipids themselves. [Ex. 1025 at ¶0036:1-4.] Tellingly, the test for
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`obviousness is not whether the features of a secondary reference may be bodily
`
`incorporated into the structure of the primary reference; nor is it that the claimed
`
`invention must be expressly suggested in any one or all of the references. Rather,
`
`the test is what the combined teachings of the references would have suggested to
`
`those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871
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`(CCPA 1981).
`
`E. Overcoming Inherency Requires Improper Importation of Claim
`
`Limitations
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`Patent Owner asserts that Petitioner has not shown that it would have been
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`obvious to use lipase “for the purpose of facilitating the removal of fingerprints
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`by vaporization” [Response at 23 (emphasis added)] and has challenged
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`6 See section III.C for a summary of such disclosure of the ‘381 Application.
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`
`11
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`
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`
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`Petitioner’s position that “it would have been obvious to use lipase to break down
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`the components of a fingerprint into more volatile compounds in order to promote
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`vaporization of the fingerprint” [Response at 5)]. A lipase’s enzymatic action on
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`one or more components of a bioorganic stain (e.g., a lipid) enzymatically
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`degraded by such lipase creates one or more breakdown components having higher
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`volatility than such component itself thereby promoting vaporization (e.g., via
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`evaporation) of such bioorganic stain. [Reply at III.A, III.B; Ex. 1017 at 30:10-
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`37:7; 46:13-24; 55:25-56:17; 59:15-60:1, 69:4-70:6, 76:20-77:16; 85:18-87:15
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`Petitioner maintains its position that the ‘facilitating’ limitation of Claim 1
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`is inherent at least partially due antecedent basis issues that impact the breadth of
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`the claims [Petition at 21-22] and further asserts that overcoming such inherency
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`would require improperly importing limitations in to such claim. “Though
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`understanding the claim language may be aided by explanations contained in the
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`written description, it is important not to import into a claim limitations that are
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`not part of the claim. For example, a particular embodiment appearing in the
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`written description may not be read into a claim when the claim language is
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`broader than the embodiment.” Superguide Corp. v. DirecTV Enterprises,
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`Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868 (Fed. Cir. 2004). Moreover,
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`absent claim language carrying a narrow meaning, the PTO should only limit the
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`claim based on the specification or prosecution history when those sources
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`12
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`expressly disclaim the broader definition. See, e.g., Liebel-Flarsheim Co. v.
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`Medrad, Inc., 358 F.3d 898, 906-09 (Fed. Cir. 2004) (explaining requirement for
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`an express disclaimer in either the specification or prosecution history).
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`Such inherency stems from the 1st and 2nd clauses and the 3rd clause not
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`having functional linkage to the 1st or 2nd clauses. As such, there is no recited
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`functional relationship between the enzymatically-degraded component of the
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`fingerprint of the 2nd clause and the facilitating or vaporization of the 3rd clause.
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`Without improperly importing claim limitations, this recited relationship between
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`the 1st and 2nd clauses and the 3rd clause provides for the broadest reasonable
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`interpretation of the ‘facilitating’ limitation to include one or more of the
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`following in regard to the lipase associated substrate or coating:
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`1.
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`Evaporation of a bioorganic stain constituent chemical
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`component that is not affected by enzymatic activity of a
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`lipase7. [Ex. 1017 at 26:17-27:15, 28:8-16, 38:19-39:7, 44:6-
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`45:13, 46:13-24, 48:19-49:10; Ex. 1018 at ¶33 (98% water),
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`7 Dr. Dordick admits that a lipase on a coating or substrate would not inhibit
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`evaporation of fingerprint components that are not enzymatically degraded by such
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`lipase (e.g., water and/or carboxylic acids). [Ex. 1017 at 8:17-9:11, 44:15-45:3,
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`48:19-25]
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`13
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`¶63; Ex. 1020 at ¶¶30-31, 41-42, 45-51]
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`2.
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`Evaporation of a break-down component resulting from
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`naturally occurring decomposition of a component of a
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`bioorganic stain that is not subject to enzymatic activity of
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`lipase [Ex. 1020 at ¶¶19-20, 26-29, 48-53; Ex. 2013 at ii
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`(“squalene, oleic and palmitoleic acid […] degrading to
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`smaller molecules”]; and
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`3.
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`Evaporation of a break-down component resulting from
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`enzymatic degradation of a component of a bioorganic stain
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`[Ex. 1017 at 30:10-37:7; 41:21-42:9; 55:25-56:17; 74:12-24;
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`76:20-77:16; 85:18-86:3; Ex. 1018 at ¶34, ¶54, ¶56; Ex. 1020
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`at¶¶20, 26-27.]
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`
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`Patent Owner’s and its expert’s repeated attempts at equating “using lipase
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`to facilitate fingerprint removal” to the manipulative step of “facilitating the
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`removal of a fingerprint by vaporization from the lipase associated substrate or
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`coating when contacted by a fingerprint” illustrates the significance of this flaw in
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`14
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`the antecedent basis of the Challenged Claims.8 [Response at 1, 2, 8, 21, 23, 48-
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`49; Ex. 2010 at ¶¶33, 34, 44, 54.] Th
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