Inter Partes Review of US 9,644,169
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`RIMFROST AS
`Petitioner
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`v.
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`AKER BIOMARINE ANTARCTIC AS
`Patent Owner
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`CASE IPR: IPR2020-01532
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`U.S. Patent No. 9,644,169 B2
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`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Inter Partes Review of US 9,644,169
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`TABLE OF CONTENTS
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`TABLE OF AUTHORITIES .................................................................................. 3 
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`I. 
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`INTRODUCTION AND SUMMARY OF ARGUMENT .......................... 5 
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`II.  CLAIM CONSTRUCTION .......................................................................... 6 
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`III.  COLLATERAL ESTOPPEL DOES NOT APPLY ................................... 7 
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`IV.  BREIVIK II IS NOT PRIOR ART .............................................................. 7 
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`Petitioner’s arguments fail under the Rule of Reason ........................... 8 
`A.  
`B.  Dr. Tilseth’s testimony is properly corroborated ................................ 19 
`C. 
`Stempel has not been overruled ........................................................... 20 
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`V. 
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`THE CLAIMS ARE NONOBVIOUS EVEN IF BREIVIK II IS
`ADMITTED AS PRIOR ART .................................................................... 22 
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`A. 
`B. 
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`There is a missing element .................................................................. 22 
`There is no motivation to combine the references .............................. 28 
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`VI.  CERTIFICATE OF COMPLIANCE ........................................................ 31 
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`VIII.  CONCLUSION AND PRECISE RELIEF REQUESTED ...................... 32 
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`CERTIFICATE OF SERVICE ............................................................................ 33 
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`TABLE OF AUTHORITIES
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`Inter Partes Review of US 9,644,169
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`Cases 
`ATI Tech. ULC v. Iancu, 920 F.3d 1362, 1370–71 (Fed. Cir. 2019) ....................... 20
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`Borror v. Herz, 666 F.2d 569, 573-74 (C.C.P.A. 1981) .......................................... 11
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`Clarke, 356 F.2d 987, 992 (CCPA 1966) ................................................................ 21
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`Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985) ............................................. 8
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`Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.Cir.1998) ........................................ 9
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`E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921 F.3d 1060, 1077 (Fed. Cir.
`2019) ............................................................................................................ 5, 9, 16
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`Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014) ........................... 9, 15
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`Intellectual Ventures II LLC v. Motorola Mobility LLC, 692 F.App’x. 626, 627
`(Fed. Cir. 2017) ................................................................................................ 9, 15
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369
`(Fed. Cir. 2016) ..................................................................................................... 25
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`Interstate Circuit v. U.S., 306 U.S. 208, 226 (1939) ............................................... 11
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`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1170 (2006) ........................ 8, 9, 16
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`Motorola Mobility LLC. v. Intellectual Ventures II LLC., IPR2014-00504 ............ 19
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`NFC Technology, LLC v. Mattal, 871 F.3d 1367, 1372 (Fed. Cir. 2017) ................. 5
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`Pfizer, Inc. v. Genentech, Inc., IPR2017-01488, Paper 87, at 24 (PTAB Nov. 29,
`2018 ....................................................................................................................... 19
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`Price v. Symsek, 988 F.2d 1187, 1195 (Fed.Cir.1993) .............................................. 8
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`Rainer, 390 F.2d 771, 773-74 (CCPA 1968) ........................................................... 21
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`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
`(Fed.Cir.2001) ....................................................................................................... 15
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`Schaub, 537 F.2d 509 (CCPA 1976) ....................................................................... 21
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`Sonos, Inc. v. Implicit, LLC, 2019 WL 4419356 (PTAB Sept. 16, 2019) ............... 20
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`Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974) ..................................... 20, 21
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`Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957 ..................................................... 20, 21
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`Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971) .................................... 20, 21
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`Tanczyn. Reply, 16, 18 ................................................................................ 20, 21, 22
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`Wakefield, 422 F.2d 897 (CCPA 1970) ................................................................... 21
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`INTRODUCTION AND SUMMARY OF ARGUMENT
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`I.
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`Petitioner has failed to provide any analysis under the “rule of reason” that
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`establishes why Dr. Tilseth’s testimony of conception and reduction to practice of
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`the claimed invention is not credible. In fact, Petitioner failed to take Dr. Tilseth’s
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`deposition regarding his Declaration and the corroborating documents cited
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`therein. Instead of analyzing the evidence provided by Dr. Tilseth as a whole under
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`the rule of reason, Petitioner focuses solely on the issue of whether a single exhibit
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`(Ex. 2003) specifically discloses cooking during the krill meal production process.
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`This narrow focus ignores dispositive portions of Dr. Tilseth’s testimony and
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`evidences a failure to understand that the rule of reason analysis requires “an
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`evaluation of all pertinent evidence . . . so that a sound determination of the
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`credibility of the inventor’s story may be reached.” NFC Technology, LLC v.
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`Mattal, 871 F.3d 1367, 1372 (Fed. Cir. 2017). Petitioner’s analysis further ignores
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`controlling case law that provides that the rule of reason does not require that
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`evidence have a source independent of the inventors on every aspect of conception
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`and reduction to practice. E.I. du Pont De Nemours & Co. v. Unifrax I LLC, 921
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`F.3d 1060, 1077 (Fed. Cir. 2019). The law requires only that the corroborative
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`evidence, including circumstantial evidence, support the credibility of the
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`inventors’ story. Id. Dr. Tilseth’s testimony and supporting corroborative evidence
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`of conception and reduction to practice prior to Breivik II is overwhelming as
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`explained in detail below.
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`Even if Breivik II is applied as prior art, the evidence presented by Petitioner
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`fails to teach or suggest the claim element of “after said storage period, extracting
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`oil from said denatured krill product with a polar solvent to provide a krill oil”
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`where the storage period is from 1 to 24 months. None of the prior art references
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`in Ground I or II teach extraction of krill oil from any krill material that has been
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`stored, much less stored after a denaturation step for the required time period.
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`Furthermore, references such as Breivik II teach that fresh krill should be utilized
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`and provide no motivation for a storage period after denaturation and before
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`extraction.
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`II. CLAIM CONSTRUCTION
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`Petitioner’s claim construction is not consistent with the intrinsic evidence.
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`Petitioner’s definition of “krill meal” to only require krill with a reduced water
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`content encompasses whole krill that have been dehydrated. There is no example
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`in the specification where “krill meal” is used to describe whole krill that has
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`simply been dehydrated. In every instance cited by Petitioner at pp. 3-4 of it’s
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`Reply (Paper No. 15; hereinafter Reply) the krill material is processed by a step
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`(e.g., pressing, grinding, etc.) that results in a krill product with a reduced particle
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`size, i.e., a powder. The resulting krill meal or powder can be wet or dry and
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`contains a lipid component for extraction. For these reasons, Petitioner’s proposed
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`construction of “krill meal” is incorrect.
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`III. COLLATERAL ESTOPPEL DOES NOT APPLY
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`Petitioner alleges that collateral estoppel precludes Patent Owner
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`(hereinafter “PO”) from advancing the same patentability arguments rejected in a
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`series of Final Written Decisions on different claims. However, Petitioner has
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`failed to make any argument as to how the alleged collateral estoppel should apply
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`to any issue in this proceeding. Moreover, Petitioner has failed to address any of
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`PO’s arguments in its Response to Petition for Inter Partes Review (hereinafter
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`“Response,” Paper 9) concerning application of collateral estoppel and why it does
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`not apply to the specific arguments made in PO’s Response, especially the fact that
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`the claims at issue in this proceeding contain different claim elements. See e.g.,
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`Response, pp. 12-16. Accordingly, Petitioner’s undeveloped arguments regarding
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`collateral estoppel should be ignored.
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`IV. BREIVIK II IS NOT PRIOR ART
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`A. Petitioner’s arguments fail under the Rule of Reason
` Petitioner fails to provide any analysis of Dr. Tilseth’s testimony under the
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`applicable “rule of reason” standard. See Reply, 7-15. The reason for this is clear
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`– the evidence supporting Dr. Tilseth’s testimony is overwhelming under the rule
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`of reason standard. Grounds 1 and 2, which both depend on Breivik II as the lead
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`reference, fail when Breivik II is removed as prior art.
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`An inventor’s testimony of conception and reduction to practice must be
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`corroborated before it can be considered. Price v. Symsek, 988 F.2d 1187, 1195
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`(Fed.Cir.1993). “Sufficiency of corroboration is determined by using a ‘rule of
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`reason’ analysis, under which all pertinent evidence is examined when determining
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`the credibility of an inventor’s testimony.” Medichem, S.A. v. Rolabo, S.L., 437
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`F.3d 1157, 1170 (2006). “Credibility concerns undergird the corroboration
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`requirement, the purpose of which is to prevent fraud.” Id. Thus, the corroboration
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`requirement provides “a safeguard against courts being deceived by inventors who
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`may be tempted to mischaracterize the events of the past through their testimony.”
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`Id.
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`The “rule of reason” was developed to ease the requirement of
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`corroboration. Coleman v. Dines, 754 F.2d 353, 360 (Fed. Cir. 1985). In
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`particular, “[d]espite the importance of the independence requirement, however,
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`[t]he law does not impose an impossible standard of ‘independence’ on
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`corroborative evidence by requiring that every point of a reduction to practice be
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`corroborated by evidence having a source totally independent of the inventor....”
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`Medichem, 437 F.3d at 1171. Indeed, “the corroboration requirement has never
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`been so demanding” such that the corroborating evidence must ‘constitute[ ]
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`definitive proof of [the inventor’s] account or disclose[ ] each claim limitation as
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`written.’” Fleming v. Escort Inc., 774 F.3d 1371, 1377 (Fed. Cir. 2014)(citing
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`Cooper v. Goldfarb, 154 F.3d 1321, 1331 (Fed.Cir.1998)); see also Intellectual
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`Ventures II LLC v. Motorola Mobility LLC, 692 F.App’x. 626, 627 (Fed. Cir.
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`2017). The focus must be on whether the corroborative evidence, including
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`circumstantial evidence, supports the credibility of the inventors’ story. Du Pont.,
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`921 F.3d at 1077.
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`When Dr. Tilseth’s testimony is viewed in light of the rule of reason, there
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`can be no doubt of the sufficiency of corroboration of that testimony of conception
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`and reduction to practice prior to Breivik II. Dr. Tilseth testified that “by at least as
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`early as September 14, 2006, we had developed a method of extracting krill oil
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`with a polar solvent (specifically ethanol) from freshly harvested krill treated to
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`denature lipases and phospholipases in the krill (specifically krill meal produced by
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`cooking and drying the krill) on a ship and then stored for 13 months prior to the
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`extraction.” Ex. 2001, ¶¶15, 17. The denatured krill meal is described both in Ex.
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`2003 and in Example 1 of Ex. 1005, which is the priority provisional application
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`for the ‘169 patent filed on March 28, 2007. Id., ¶8. Dr. Tilseth further testified that
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`the denatured krill meal was stored for 13 months and then extracted with ethanol
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`to provide krill oil as evidenced by the following exhibits:
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` Exs. 2005, 2006 and 2007 (May 2006 meeting notes, certified
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`translation, and metadata establishing date);
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` Exs. 2008 and 2009 (Draft agreement and metadata establishing date);
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` Exs. 2010, 2011 and 2012 (June 2006 meeting notes, certified
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`translation, and metadata establishing date); and
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` Exs. 2013 and 2014 (K313 Report and metadata establishing date).
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`See Ex. 2001, ¶¶9-14. Additionally, Dr. Tilseth testified that data on the extracted
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`krill oil provided in Table 3 of Ex. 2013 (p. 0007) is provided in Table 8 of the
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`‘169 Patent (Ex. 1001, p. 0036) and at Table 8 (page 0028) of Ex. 1005. Ex. 2001,
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`¶14.
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`The main thrust of Petitioner’s argument is the alleged fatal “absence of
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`independent corroboration of Dr. Tilseth’s testimony that denaturation occurs
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`during the ‘cooking stage.’” Reply, 8-9. As explained below, Petitioner’s
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`argument ignores both Dr. Tilseth’s actual testimony and the rule of reason
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`standard for corroboration of inventor testimony.
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`First, Petitioner cancelled the scheduled deposition of Dr. Tilseth (see Paper
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`14), failing to obtain evidence from the most pertinent source. See, e.g., Interstate
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`Circuit v. U.S., 306 U.S. 208, 226 (1939)(“The production of weak evidence when
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`strong is available can lead only to the conclusion that the strong would have been
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`adverse.”) 1 If Petitioner doubts aspects of Dr. Tilseth’s testimony, it should have
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`deposed him on those points.
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`Second, there can be no dispute that the documents sufficiently corroborate
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`Dr. Tilseth’s testimony that krill meal produced on board the Atlantic Navigator
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`and then stored for 13 months was extracted with a polar solvent (ethanol) to yield
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`1 Petitioner also failed to present any contradictory testimony from inventor Inge
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`Bruheim who is now employed by and under the control of Petitioner (i.e.,
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`Rimfrost AS). Ex. 2024 (Tallon Depo.)0012:8-19. See Borror v. Herz, 666 F.2d
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`569, 573-74 (C.C.P.A. 1981)(holding “unexplained failure to call any known non-
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`hostile person who has direct knowledge of facts being developed by the party
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`raises the inference that the testimony would be unfavorable or at least would not
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`support the case”).
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`a krill oil containing defined amounts of phospholipids prior to the Nov. 16, 2006
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`priority date of Breivik II. Petitioner has not challenged the 13 month storage
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`period, extraction with a polar solvent, or the metadata establishing the dates for
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`the corroborating documents.
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`Third, the sole aspect of Dr. Tilseth’s testimony that Petitioner challenges
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`(i.e., whether a standard krill meal process was used on the meal described in the
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`corroborating documents so as to produce a denatured krill material) can only
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`reasonably be deemed credible and accurate based on the corroborating documents.
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`Petitioner is simply wrong that the corroborating evidence cited by Dr. Tilseth does
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`not sufficiently corroborate his testimony that the krill meal was made by the
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`standard krill meal process that included denaturation by cooking. See Reply at 9-
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`10. Petitioner focused solely on Sections 6.1 and 6.2 of Ex. 2003 and failed to
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`consider other evidence cited by Dr. Tilseth.
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`Indeed, Dr. Tilseth also testified that the krill meal described in Ex. 2003 is
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`the same meal described in Example 1 of Ex. 1005 (the priority document). Ex.
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`2001, ¶8. The data provided in Table 13 of Ex. 2003 (p. 0023) is repeated in Table
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`1 of Ex. 1005 (p. 0023). Those tables are reproduced below for comparison:
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`As described in Example 1 of Ex. 1005:
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`This disclosure, which occurs in the priority provisional filed March 28, 2007 (Ex.
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`1005, filed just 4 months after the Breivik II priority date) confirms that the krill
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`meal described in Ex. 2003 is the identical material and was made by standard
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`methods known in the art. Further, Ex. 1005 discloses at page 0016 that the “krill
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`oil is extracted from denatured krill meal” and in the next paragraph on p. 0017
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`that “Examples of the krill oil compositions of the present invention are provided
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`in Tables 6-17.” Dr. Tilseth testified that data on the extracted krill oil described in
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`Table 3 of Ex. 2013 is included in Table 8 of the ‘169 Patent (Ex. 1001, p. 0036)
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`and at page 0028 of Ex. 1005 (Table 8, “Lipid class distribution”).2 See Ex. 2001,
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`¶14. This evidence further corroborates that the krill meal used in the extraction
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`described in Ex. 2013 and Table 8 of Ex. 1005 was a denatured krill meal.
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`Petitioner and its expert did not consider Ex. 1005 and Dr. Tilseth’s related
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`testimony in their analysis. See Ex. 2024 (Tallon Depo.), 0010:13 – 0011:1.
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`When viewed as a whole, this contemporaneous evidence conclusively
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`establishes that the krill meal produced onboard the Atlantic Navigator as
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`described in Ex. 2003 was produced by a standard krill meal process that provided
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`a denatured krill meal as testified by Dr. Tilseth. The fact that Ex. 1005 is dated
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`2 The krill meal in Example 1 of Ex. 1005 (i.e., the krill meal described in Ex.
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`2003) was also used in the extraction described in Example 3 and a polar krill oil
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`with a low content of free fatty acids (0.6%) was obtained, further confirming that
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`the krill meal was denatured. See Ex. 1005 at 0028 and Table 17, p. 0036.
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`four months after Breivik II does not rule out its use to corroborate Dr. Tilseth’s
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`testimony that the krill meal described in Ex. 2003 was in fact denatured. See, e.g.,
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`Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350–51
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`(Fed.Cir.2001) (“Documentary or physical evidence that is made
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`contemporaneously with the inventive process provides the most reliable proof that
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`the inventor’s testimony has been corroborated”); see also Intellectual Ventures II,
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`692 F.App’x. at 628. Dr. Tilseth’s testimony provides the evidence that the early
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`inventive work used denatured krill meal made via a standard process. The
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`corroborating documents, while not required to support this specific testimony,
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`strongly evidence the veracity of his testimony overall.
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`Fourth, Petitioner’s analysis, which makes no mention of the “rule of
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`reason” standard, fails to consider the evidence of corroboration as a whole and
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`instead provides an analysis that focuses on the alleged failure to corroborate each
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`claim element as written. This approach is inconsistent with the “rule of reason.”
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`See Fleming 774 F.3d 1371, 1377. Specifically, Petitioner argues that Section 6.1
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`and 6.2 of Ex. 2003 do not indicate that the meal was made by a standard process
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`or provide the conditions of the process or that that there was a cooking stage.
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`Reply, 10. Petitioner further erroneously argues “Dr. Tilseth’s post-hoc
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`interpretation of two sections from this 15-year old document cannot be used to
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`backfill the gaps in what is not found within the four corners of Sections 6.1-6.2.”
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`Id. These arguments underscore Petitioner’s lack of understanding of
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`corroboration under the rule of reason. It is the antithesis of the rule of reason to
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`require evidence on every aspect of conception and reduction to practice. E.I. du
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`Pont De Nemours & Co., 921 F.3d 1060, 1077 (Fed. Cir. 2019). Contrary to
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`Petitioner’s assertions, every aspect does not need to be in the four corners of the
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`Sections 6.1 and 6.2 of Ex. 2003.
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`As required under the rule of reason, the totality of the evidence supports the
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`credibility of Dr. Tilseth’s testimony. See, e.g., Medichem, 437 F.3d at 1171. As
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`discussed above, Petitioner ignored Dr. Tilseth’s testimony regarding the
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`disclosure of Ex. 1005. That evidence supports the credibility of Dr. Tilseth’s
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`testimony.
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`Moreover, the evidence establishes that it was well understood that the
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`standard or traditional krill meal process involved a cooking step that denatures
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`lipases and phospholipases. Thus, even if the disclosure of Ex. 2003 is considered
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`in isolation, it still supports the credibility of Dr. Tilseth’s testimony. It cannot be
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`disputed that Ex. 2003 describes production of krill meal. Petitioner’s only
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`argument is that there is no specific disclosure of whether the krill meal was
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`cooked so as to denature the lipases and phospholipases present in the krill. This
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`argument is nothing but a straw-man because as of 2006 and described in detail
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`below, it is undisputed that the process for making krill meal was well known and
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`involved the steps of cooking, pressing or centrifuging and drying. Thus, absent
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`some special description of the krill meal process, any person of skill in the art
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`reviewing the disclosure of Ex. 2003 (and related documents) would understand
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`that the krill meal was made by the standard or traditional process involving
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`cooking, pressing, and drying as testified by Dr. Tilseth.
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`One need to look no further than the testimony of Petitioner’s expert, Dr.
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`Tallon, to confirm this fact. Dr. Tallon, referencing Budziński (Ex. 1008),
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`acknowledged that the “traditional method of krill-meal production is by cooking
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`and pressing or centrifuging and drying . . . and the resulting denatured krill meal
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`is stable . . . .” Ex. 1006 ¶168. Dr. Tallon confirmed this conclusion in his Reply
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`Declaration: “The cooking that occurs during preparation of the krill meal was a
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`well-known process in the prior art for preventing this enzymatic degradation
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`allowing for stable storage of a krill meal.” Ex. 1086 ¶46. And further: “The
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`processes and equipment used to make marine meals (cooking, decanting, pressing,
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`drying, etc.) bear little resemblance to seed meal processes.” Id. at ¶36.
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`Further, as testified by Dr. Jaczynski, when krill meal is referenced, one
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`would assume that the krill meal is made by the traditional process of cooking and
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`then pressing or centrifuging and drying. Ex. 1170 at 0165:8-19. Dr. Jaczynski
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`further confirmed that the processing steps described in Ex. 2003 at pp. 0022-23
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`were consistent with this traditional process of making krill meal. Id. at 0165:25 –
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`0167:9.
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`In summary, the totality of the evidence overwhelmingly supports the
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`credibility of Dr. Tilseth’s testimony of conception and reduction to practice of the
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`claimed method prior to Breivik II.
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`Finally, Petitioner makes another straw man argument based on Dr.
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`Jaczynski’s testimony that denaturation also occurs during the drying stage of the
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`meal production. Reply,11-13. First, this testimony does not contradict Dr.
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`Tilseth’s testimony regarding preparation by the standard krill meal method of
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`cooking, pressing, pressing and drying and that denaturation occurs during the
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`cooking step. Dr. Jaczynski’s testimony merely confirms that denaturation would
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`also occur during application of heat during drying. This is precisely why the
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`authors of Ex. 2003 note that: “Over the drier and mill the proportion of
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`phospholipids decreases. Lipid components can disappear by oxidation, and some
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`of the oxidation products can evaporate during drying and milling.” Ex. 2003,
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`0023. If evaporation is occurring during drying, then denaturation is also
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`occurring, conistent with Dr. Jaczynski’s testimony. Second, Dr. Jaczynski was
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`directly responding to questions posed by Petitioner about Ex. 2003, therefore it is
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`proper to consider that testimony.
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`Thus, contrary to Petitioner’s arguments which do not apply the rule of
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`reason, when the evidence of corroboration is properly considered under the rule of
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`reason the credibility of Dr. Tilseth’s invention story is supported in an
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`overwhelming fashion. The contemporaneous evidence outlined above consistently
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`verifies Dr. Tilseth’s testimony concerning extraction of krill oil from a denatured
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`krill meal that had been stored for 13 months. There is no reasonable basis to
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`believe that Dr. Tilseth somehow manufactured this story in a post-hoc fashion as
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`alleged by Petitioner.
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`B. Dr. Tilseth’s testimony is properly corroborated
`Petitioner further alleges that Dr. Tilseth has “self-corroborated” Sections
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`6.1 and 6.2 of Ex. 2003 and that Dr. Tilseth’s notes cannot corroborate his
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`reduction to practice story. Reply, 10-11; 14. First, as discussed above, the rule of
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`reason does not require the supporting evidence to corroborate every single aspect
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`of conception and reduction to practice. Second, metadata has been provided for
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`each of Exs. 2003, 2005, 2008, 2010, and 2013 which provides time stamps for the
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`dates on which the documents were created and last modified. This combination
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`of testimony and metadata independently corroborates and authenticates the
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`documents. See, e.g., Motorola Mobility LLC. v. Intellectual Ventures II LLC.,
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`Inter Partes Review of US 9,644,169
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`IPR2014-00504, Paper 84, at 17-19 (PTAB March 13, 2020)(citing Sonos, Inc. v.
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`Implicit, LLC, 2019 WL 4419356 (PTAB Sept. 16, 2019) and ATI Tech. ULC v.
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`Iancu, 920 F.3d 1362, 1370–71 (Fed. Cir. 2019)).
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`Stempel has not been overruled
`C.
`As argued by PO in its Response, all that is required to remove Breivik II as
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`a prior art reference is to show so much of the claimed invention as the reference
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`shows. Response, 19; citing In re Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957). PO
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`further cited additional controlling authority for the proposition that even if the
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`evidence of conception and reduction to practice is not fully commensurate with
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`the claim, the evidence is sufficient to antedate if the differences are obvious.
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`Response at 24, citing In re Spiller, 500 F.2d 1170, 182 USPQ 614 (CCPA 1974);
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`In re Stryker, 435 F.2d 1340, 168 USPQ 372 (CCPA 1971). PO applied these rules
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`to minor differences between the corroboration evidence and the disclosure of
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`Breivik II.
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`Petitioner asserts that the holding of Stempel is a “nullity” based on Tanczyn.
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`Reply, 16, 18. This conclusion by Petitioner is erroneous. As held later held by
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`Judge Rich of the CCPA.:
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`It is settled, of course, that an anticipatory disclosure, not a statutory bar, be
`removed as a reference against a generic claim by a Rule 131 affidavit
`showing prior reduction to practice of as much of the claimed invention as
`the reference shows. In re Stempel, 241 F.2d 755, 44 CCPA 820 (1957).
`(See further explanation of Stempel in In re Tanczyn, 347 F.2d 832, 52
`CCPA 1630.)
`In re Rainer, 390 F.2d 771, 773-74 (CCPA 1968). Courts continued to apply the
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`Stempel rule in multiple other cases decided after Tanczyn. See In re Clarke, 356
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`F.2d 987, 992 (CCPA 1966)(“antedating affidavits must contain facts showing a
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`completion of ‘the invention’ commensurate with the extent the invention is shown
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`in the reference, whether or not it be a showing of the identical disclosure of the
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`reference”); In re Wakefield, 422 F.2d 897 (CCPA 1970); In re Spiller, 500 F.2d
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`1170 (CCPA 1974)(“resolution of the question of the sufficiency of the Rule 131
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`showing resides, at least in part, in decisions of this court after Tanczyn . . . which
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`dealt with fact situations where the showing made by Rule 131 affidavits was less
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`that the invention claimed but was held sufficient to remove the cited reference
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`because the differences were obvious”); In re Schaub, 537 F.2d 509 (CCPA
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`1976)(holding that a reference was antedated applying the rules of Rainer, Stempel
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`and Clarke).
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`In fact, Tanczyn has been limited to its facts. As explained in In re Stryker,
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`435 F.2d 1340 (CCPA 1971), the Tanczyn court found an affidavit insufficient to
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`remove a reference where “the subject matter shown in the reference and the
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`affidavit was so different from the claimed invention that the claims were
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`unobvious and patentable over the reference.” Stryker at 1341. The Stryker court
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`then specifically held that the “board erred in applying Tanczyn to the facts” of the
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`case and that an affidavit showing less than the cited reference was sufficient to
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`remove it. Id. at 1341-42. Here, it cannot be disputed that the Tilseth Declaration
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`shows prior possession of subject matter on which the claims do read, i.e.,
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`extraction of krill oil from denatured krill meal that has been stored for from 1 to
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`24 or 36 months. Thus, Tanczyn does not apply.
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`V.
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`THE CLAIMS ARE NONOBVIOUS EVEN IF BREIVIK II IS
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`ADMITTED AS PRIOR ART
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`There is a missing element
`A.
`As argued by PO in its Response, the combined references do not teach the
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`claim element of extraction from a denatured krill product that has been stored for
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`from 1 to 24 months as required by step (d) of independent Claim 1 and step (b) of
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`independent Claim 12. Response at 36. Likewise, the combined references do not
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`teach extraction specifically from krill meal as required by dependent claims 4 and
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`14. In a belated attempt to supply this missing claim element, Petitioner makes
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`several arguments, all of which fail.
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`Petitioner first argues that Breivik II somehow provides the missing element
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`because it “does not require denaturation ‘immediately’ before solvent extraction.
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`Instead, this ‘immediate’ processing relates to the recognized need to promptly
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`denature krill to prevent hydrolysis of krill lipids.” Reply, 19-20. This argument
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`ignores the plain disclosure of Breivik II. Breivik II specifies the use of fresh krill
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`repeatedly and there is no example or disclosure in Breivik II that supports
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`Petitioner’s assertion that “immediate” processing refers to an initial step where the
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`krill is stored after heating.
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`The portion of Breivik II cited by Petitioner, p. 0010, lines 11-12, does not
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`support this assertion:
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`This statement appears following Examples 6, 7 and 8 which, according to Breivik
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`II, show that heat treatment increases lipid yields. Ex. 1037, 0009. The heat
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`treatment being referred to is the heat treatment in Examples 6 and 7 where fresh
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`E. superba was heat treated for either “5 minutes” (Example 6) or “a few minutes”
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`(Example 7) immediately prior to extraction. There is no description or suggestion
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`in these examples (or the passage cited by Petitioner) that the material is stored for
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`any amount of time after heating and before extraction.
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`As further described in Breivik II at 0003-0004:
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`As disclosed, the optional pre-treatment of fresh krill by heating occurs
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`before the supercritical extraction with ethanol and is suitable to be performed on
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`the ship. There is no indication that Breivik II intends anything other than to
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`extract the heat-treated krill immediately. In fact, the immediate extraction of the
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`fresh krill is intended to reduce both hydrolysis and oxidation as well as preserve
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`antioxidants which is not consistent with storage.
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`Petitioner next argues that Catchpole describes a krill oil extract with 4.8%
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`ether phospholipids. Reply at 20. PO does not dispute this, and instead argued
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`that Catchpole does not teach the claimed element of extraction from a stored
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`material. Response at 37-38. Petitioner’s argument is irrelevant.
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`Petitioner’s next attempt to supply the missing element relies on introduc