Trials@uspto.gov
`571-272-7822
`
`Paper 32
`Entered: August 11, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`OWENS CORNING,
`Petitioner,
`
`v.
`
`FAST FELT CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2015-00650
`Patent 8,137,757 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`
`IPR2015-00650
`Patent 8,137,757 B2
`
`
`I. INTRODUCTION
`
`Owens Corning (“Petitioner”) filed a Petition (“Pet.”) to institute an
`
`inter partes review of claims 1, 2, 4, 6, and 7 of U.S. Patent No. 8,137,757
`
`B2 (“the ’757 patent,” Ex. 1001). Paper 1. On August 13, 2015, we
`
`instituted an inter partes review of claims 1, 2, 4, 6, and 7 on three grounds
`
`of unpatentability (Paper 9, “Dec. on Inst.”). Fast Felt Corp. (“Patent
`
`Owner”) filed a Patent Owner Response (Paper 16, “PO Resp.”). Petitioner
`
`filed a Reply (Paper 20, “Reply”).
`
`An oral hearing was held on May 11, 2016. A transcript of the
`
`hearing is included in the record (Paper 31, “Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(b). This Final Written
`
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons that follow, we determine that Petitioner has not shown by a
`
`preponderance of the evidence that claims 1, 2, 4, 6, and 7 of the ’757 patent
`
`are unpatentable.
`
`A.
`
`The ’757 Patent
`
`The ’757 patent, titled “Print Methodology for Applying Polymer
`
`Materials to Roofing Materials to Form Nail Tabs or Reinforcing Strips,” is
`
`directed to a method for applying nail tabs to roofing and building cover
`
`materials. Ex. 1001, Abstract. According to the ’757 patent, the claimed
`
`print method is “a gravure, rotogravure or gravure-like transfer printing (the
`
`‘gravure process’) or offset printing, of an appropriately viscous and
`
`substantially polymeric material onto roofing material, or onto a continuous
`
`transfer material and then transferred, including utilizing a laminating
`
`process, onto the roofing material, in a continuous process.” Id. at 3:24–30.
`
`The ’757 patent describes the gravure process as employing a print cylinder
`
`
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`IPR2015-00650
`Patent 8,137,757 B2
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`that “has etched or engraved cells of varying depth, width and shape and
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`which cells can be varied to apply differing amounts of tab material as a
`
`means of controlling the pattern and other attributes of the resultant nail
`
`tab.” Id. at 3:30–34.
`
`Figure 1 of the ’757 patent is reproduced below:
`
`
`
`Figure 1 is a schematic diagram of a print cylinder as described in the ’757
`
`patent. Id. at 4:65–67. Print cylinder 100 receives viscous tab material from
`
`print reservoir 102 into patterns etched on the face of print cylinder 100 and
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`prints a corresponding pattern onto roofing material 104. Id. at 7:13–16.
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`Doctor blade 108 removes excess tab material from print cylinder 100, such
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`that tab material remains only in the engraved image area etched into print
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`cylinder 100. Id. at 7:18–20. When print cylinder 100 makes contact with
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`roofing material 104 and impression cylinder 106, the viscous tab material is
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`deposited from print cylinder 100 onto roofing material 104. Id. at 7:24–27.
`
`Roofing material 104 “may be bonded with appropriate rows of nail tabs or
`
`continuous reinforcing strips, preferably substantially polymer materials,”
`
`and can include at least one contrasting color to roofing material 104 and
`
`“one or more additives to tailor the polymer material.” Id. at 7:32–40.
`
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`3
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`

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`IPR2015-00650
`Patent 8,137,757 B2
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`
`Claims 1 and 7 are independent claims. Claims 2, 4, and 6 directly
`
`depend from claim 1, which is reproduced below:
`
`A method of making a roofing or building cover material,
`1.
`which comprises treating an extended length of substrate,
`comprising the steps of:
`
`depositing tab material onto the surface of said roofing or
`building cover material at a plurality of nail tabs from a
`lamination roll, said tab material bonding to the surface of
`said roofing or building cover material by pressure
`between said roll and said surface.
`
`Ex. 1001, 13:13–20.
`
`Independent claim 7 is reproduced below:
`
`A method of making a roofing or building cover material,
`7.
`comprising the steps of first depositing nail tab material at a
`plurality of locations on said roofing or building cover material,
`said nail tab material is substantially made of a polymeric
`material, and subsequently pressure adhering said nail tab
`material into nail tabs on said roofing or building cover material
`with a pressure roll.
`
`Id. at 14:11–17.
`
`B.
`
`Prior Art
`
`The pending grounds of unpatentability in this inter partes review are
`
`based on the following prior art:
`
`Reference
`
`Description
`
`Date
`
`Exhibit No.
`
`Hefele
`
`U.S. 5,101,759
`
`April 7, 1992
`
`1004
`
`Bayer
`
`U.S. 5,597,618
`
`Jan. 28, 1997
`
`1007
`
`Lassiter
`
`U.S. 6,451,409 B1
`
`Sept. 17, 2002 1003
`
`Eaton
`
`U.S. 6,875,710 B2
`
`April 5, 2005
`
`1005
`
`
`
`
`
`4
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`IPR2015-00650
`Patent 8,137,757 B2
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`C.
`
`Pending Grounds of Unpatentability
`
`This inter partes review involves the following grounds of
`
`unpatentability:
`
`References
`
`Basis
`
`Challenged Claims
`
`Lassiter and Hefele
`
`§ 103(a)
`
`1, 2, 4, 6, 7
`
`Lassiter and Bayer
`
`§ 103(a)
`
`1, 2, 4, 6
`
`Lassiter and Eaton
`
`§ 103(a)
`
`1, 2, 4, 6, 7
`
`
`Dec. on Inst. 26.
`
`
`
`A.
`
`Claim Interpretation
`
`II. ANALYSIS
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
`
`[the claims] appear[].” 37 C.F.R. § 42.100(b); see also Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (“We conclude that
`
`[37 C.F.R. § 42.100(b)] represents a reasonable exercise of the rulemaking
`
`authority that Congress delegated to the Patent Office.”). The Board,
`
`however, may not “construe claims during IPR so broadly that its
`
`constructions are unreasonable under general claim construction principles. .
`
`. . ‘[T]he protocol of giving claims their broadest reasonable interpretation .
`
`. . does not include giving claims a legally incorrect interpretation.’”
`
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
`
`(citation omitted). “Rather, ‘claims should always be read in light of the
`
`specification and teachings in the underlying patent’” and “[e]ven under the
`
`broadest reasonable interpretation, the Board’s construction ‘cannot be
`
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`Patent 8,137,757 B2
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`divorced from the specification and the record evidence.’” Id. (citations
`
`omitted). Only those terms in controversy need to be construed, and only to
`
`the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am.
`
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`
`For purposes of the Decision on Institution, we determined that the
`
`terms in the challenged claims did not need to be construed expressly. Dec.
`
`on Inst. 5. Based on our review of the complete record and the claim
`
`construction arguments raised by the parties, for purposes of this Final
`
`Written Decision we determine that it is necessary to address the following
`
`claim terms or elements expressly: the preambles of claims 1 and 7,
`
`“roofing or building cover material,” “treating an extended length of
`
`substrate,” and “nail tab.”
`
`1.
`
`Preambles of Claims 1 and 7
`
`In general, a preamble is construed as a limitation “if it recites
`
`essential structure or steps, or if it is ‘necessary to give life, meaning, and
`
`vitality’ to the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`
`289 F.3d 801, 808 (Fed. Cir. 2012) (quoting Pitney Bowes, Inc. v. Hewlett-
`
`Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999)). When the limitations
`
`in the body of the claim “rely upon and derive antecedent basis from the
`
`preamble, then the preamble may act as a necessary component of the
`
`claimed invention.” Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332,
`
`1339 (Fed. Cir. 2003).
`
`The preamble of claim 1 recites “[a] method of making a roofing or
`
`building cover material, which comprises treating an extended length of
`
`substrate, comprising the steps of,” and the body of claim 1 includes the
`
`claim term “said roofing or building cover material.” Similarly, the
`
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`preamble of claim 7 recites “[a] method of making a roofing or building
`
`cover material, comprising the steps of,” and the body of claim 7 includes
`
`the claim term “said roofing or building cover material.” Accordingly, we
`
`conclude that the claim term “roofing or building cover material” that
`
`appears in the preambles of claims 1 and 7 is entitled to patentable weight.
`
`2.
`
`“roofing or building cover material”
`
`Independent claim 1 recites, in relevant part, “depositing tab material
`
`onto the surface of said roofing or building cover material” and “said tab
`
`material bonding to the surface of said roofing or building cover material by
`
`pressure between said roll and said surface.” Likewise, independent claim 7
`
`recites “first depositing nail tab material at a plurality of locations on said
`
`roofing or building cover material” and “pressure adhering said nail tab
`
`material into nail tabs on said roofing or building cover material with a
`
`pressure roll.” Although Patent Owner “agrees that no express construction
`
`may be necessary for any claim terms,” Patent Owner states that “[a]t least
`
`some consideration of ‘roofing or building cover material’ used in each
`
`independent claim may be useful.” PO Resp. 19.
`
`In its Response, Patent Owner contends that “any proper construction
`
`of roofing or building cover material does not mean paper alone and instead
`
`includes materials that make a roof resistant to water intrusion such as
`
`heavily asphalt coated substrates like the underlayment and/or shingle
`
`materials on most roofs in North America.” PO Resp. 21 (footnote omitted).
`
`As support for this contention, Patent Owner cites the Specification’s
`
`Background of the Invention section describing roofing composition, which
`
`states that “[t]he first layer is an underlayment, usually a substantially
`
`asphalt saturated substrate material that attaches directly to the roof deck,”
`
`
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`IPR2015-00650
`Patent 8,137,757 B2
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`and “[d]ry felt, when saturated with an asphalt-based material, produces an
`
`underlayment roofing material known in the trade as ‘tar paper’ or ‘saturated
`
`felt.’” Id. (citing Ex. 1001, 1:29–2:11). Patent Owner also argued at the oral
`
`hearing that “the claims at issue pertain to the roofing or building covering
`
`material, which is the external part of a building or roof.” Tr. 21:22–24.
`
`According to Patent Owner, “a roofing or building cover material, as
`
`understood in the context of these claims, is an asphalt saturated substrate.”
`
`Id. at 23:7–9.
`
`Petitioner responds that, “[w]ith regard to what types of surfaces of
`
`roofing or building cover materials can be printed on,” the Specification
`
`“discloses nail tab material can be deposited on saturated or unsaturated
`
`substrates.” Reply 5. Petitioner points to the Specification’s description of
`
`roofing material that “comprises a base substrate material or a saturated or
`
`coated substrate material,” and that nail tabs can be deposited onto the
`
`roofing material at any point during the manufacturing process, “including
`
`immediately before or after the dipping of the substrate roofing material into
`
`the asphalt or asphalt mix tank.” Id. at 5–6 (citing Ex. 1001, 4:41–45, 6:65–
`
`7:3). Petitioner further argues that paper is a roofing or building cover
`
`material because several prior art references, including Lassiter, state that
`
`“roofing paper,” “felt roofing paper,” and “tar paper” can serve as roofing
`
`cover material. Id. at 19 (citing Ex. 2017, 1:13–15, 1:42–44, 2:48–49; Ex.
`
`1003, 1:34–35).
`
`We are not persuaded by Patent Owner’s argument that “roofing or
`
`building cover material” is limited to asphalt saturated substrates. See PO
`
`Resp. 20–21. The Specification consistently states that nail tabs can be
`
`affixed to base substrate materials whether or not they are coated with
`
`
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`IPR2015-00650
`Patent 8,137,757 B2
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`asphalt. Ex. 1001, 5:63–6:2 (stating that the invention discloses “an
`
`improved method in which tabs can be permanently and reliably affixed or
`
`bonded to either dry felt, saturated felt, a fiberglass, polyester or other
`
`inorganic substrate roofing material whether or not coated with asphalt or an
`
`asphalt mix”); see also id. at 4:30–39 (describing a preferred embodiment
`
`wherein “the tab material solidif[ies] and adher[es] to the surface of the base
`
`substrate material or saturated or coated material”); id. at 4:40–49
`
`(describing another preferred embodiment of “a roofing material which
`
`comprises a base substrate material or a saturated or coated material and a
`
`plurality of thermoplastic, thermosetting, adhesive or elastomer tabs
`
`deposited onto the surface of the base substrate, saturated or coated
`
`material”). The Specification states:
`
`[T]he above described invention can be employed directly onto
`the roofing material, at any point during the manufacture of
`commercially saleable rolls of saturated felt or tar paper, or other
`roofing material, including immediately before or after the
`dipping of the substrate roofing material into the asphalt or
`asphalt mix tank, or after the manufacturer [sic] of any rolled
`roofing or shingle product.
`
`Id. at 6:65–7:4. The Specification also defines “substrate” to include “all
`
`suitable starting base materials including dry felt, fiberglass mat and
`
`polyester mat or any other base material on which a composite roofing or
`
`building material is built upon.” Id. at 1:67–2:4. Based on this explicit
`
`definition, dry felt is a substrate as that term is used in the ’757 patent, but
`
`dry felt starting materials (such as rag, paper, and wood sawdust) are not.
`
`See id. at 1:62–67 (“The starting base material, in a preferred embodiment, is
`
`a fibrous paper called dry felt made from treating recycled cardboard, mixed
`
`recycled papers and wood sawdust or a fibrous mat made from inorganic
`
`
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`IPR2015-00650
`Patent 8,137,757 B2
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`materials chemically or mechanically formed into a fibrous state.”). We also
`
`note that the Summary of the Invention section of the Specification, as well
`
`as every described embodiment, specifically is directed to the application of
`
`nail tabs to roofing material. See id. at 3:24–4:60, 5:50–13:4.
`
`These disclosures in the Specification indicate that, while the
`
`described process can be used to deposit nail tabs on an asphalt saturated or
`
`coated substrate, it is also the case that the process can be used to deposit
`
`nail tabs on a base substrate before asphalt coating. Indeed, in describing
`
`several preferred embodiments, the Specification explicitly states that nail
`
`tabs may be deposited on base substrate material or saturated material. See,
`
`e.g., id. at 4:30–49 (describing preferred embodiments where tab materials
`
`adhere to “base substrate material or saturated or coated material”); id. at
`
`7:27–32 (“In a preferred embodiment, roofing material 104 may be
`
`comprised of a composite of materials, including the base substrate roofing
`
`material (roofing material prior to its saturation or coating with a
`
`substantially asphalt or asphalt-mix material), or the final condition
`
`underlayment, roll roofing or shingle material.”); id. at 9:34–36 (“Roofing
`
`material 402 is understood to include, but not limited to, substrate roofing or
`
`composite roofing material or shingle material.”).
`
`Accordingly, we interpret “roofing or building cover material” to
`
`mean “base substrate materials such as dry felt, fiberglass mat, and/or
`
`polyester mat, before coating or saturation with asphalt or asphalt mix, and
`
`asphalt coated or saturated substrates such as tar paper and saturated felt.”
`
`3.
`
`“treating an extended length of substrate”
`
`The preamble of claim 1 recites that the method of making a roofing
`
`or building cover material “comprises treating an extended length of
`
`
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`substrate.” Patent Owner contends that “treating an extended length of
`
`substrate” is “the first step” of claim 1, and “involves impregnating,
`
`saturating, or otherwise surrounding the mat fibers with asphalt as stated in
`
`the specification.” PO Resp. 10 n.2; see also id. at 14 (“[T]he first step of
`
`Claim 1 of the ’757 Patent – ‘treating an extended length of substrate’ –
`
`involves the conventional impregnating, saturating, or otherwise surrounding
`
`or coating the mat fibers with asphalt – as stated in the specification.”). As
`
`support for this contention, Patent Owner cites to the Specification’s
`
`statement that “[d]ry felt or fiberglass mat material undergoes treatment in
`
`conventional fashion to impregnate, saturate or otherwise surround or coat
`
`the organic or fiberglass and polyester mat fibers with asphalt to produce an
`
`asphalt saturated felt, mat or substrate material.” Id. (citing Ex. 1001, 7:50–
`
`54). Patent Owner also argued at the oral hearing that “the difference
`
`between independent claim 1 and independent claim 7 is exactly that treating
`
`step,” because claim 7 “starts with the roofing or building cover material and
`
`then deposits on to that” and “doesn’t have that limitation of first doing the
`
`treating step.” Tr. 20:1–5.
`
`Other than its recital in claim 1, the Specification only uses the phrase
`
`“treating an extended length of substrate” once, in the following passage:
`
`In accordance with a preferred embodiment of the
`invention, there is disclosed a method of making a roofing
`material, which comprises treating an extended length of
`substrate roofing material or composite roofing material having
`the steps of depositing tab material substantially in a liquid state
`onto the surface of the roofing material at a plurality of locations,
`the tab material solidifying and bonding to the surface of the
`roofing material wherein the tab material is deposited on the
`roofing material by an engraved pattern print roll.
`
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`Ex. 1001, 4:15–23 (emphasis added). Here, “treating an extended length of
`
`substrate” is followed by the steps that describe how the “extended length of
`
`substrate” is treated, that is, by depositing tab material onto the surface of
`
`the roofing material. There is nothing in this passage that suggests that
`
`“treating an extended length of substrate” means impregnating, saturating, or
`
`otherwise surrounding or coating the substrate with asphalt to produce an
`
`asphalt saturated felt, mat, or substrate material. When read in the context of
`
`the Specification as a whole, “treating an extended length of substrate
`
`roofing material or composite roofing material” refers to the steps of
`
`depositing tab material on substrate roofing materials (such as dry felt,
`
`fiberglass mat, or polyester mat) or on a final condition underlayment (such
`
`as tar paper or saturated felt, which is asphalt saturated).
`
`Although Patent Owner directs our attention to a statement in the
`
`Specification that describes how base substrate materials are treated to
`
`become asphalt saturated felt, mat, or substrate material, it does not follow
`
`that “treating an extended length of substrate” as used in claim 1 necessarily
`
`refers to that treatment as Patent Owner contends. The statement to which
`
`Patent Owner refers appears in a description of a gravure method for laying
`
`substantially polymer material tabs on roofing material, with reference to
`
`Figure 1. The Specification states:
`
`In a process such as described herein, roofing material 104 may
`be bonded with appropriate rows of nail tabs or continuous
`reinforcing strips, preferably substantially polymer materials,
`specifically including but not limited to, thermoplastic-based or
`thermo-setting material, hot-melt adhesive material, elastomeric
`material or ultra-violet light curing materials, and may include at
`least one contrasting color to the roofing material 104 and one or
`more additives to tailor the polymer material. As is well known
`in the art, roofing material 104 can be comprised of a substrate
`
`
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`roofing material or of a composite roofing material, made
`starting with a substrate roofing material, including a roll of dry
`felt, fiberglass, polyester or a combination thereof, mat material.
`In a preferred method of producing the roofing material in
`accordance with this invention, the substrate, dry felt or
`fiberglass and polyester mat material is introduced to the
`beginning of a continuous and automated process having a
`system of driven rollers for transporting roofing material 104
`through the process. Dry felt or fiberglass mat material
`undergoes treatment in conventional fashion to impregnate,
`saturate or otherwise surround or coat the organic or fiberglass
`and polyester mat fibers with asphalt to produce an asphalt
`saturated felt, mat or substrate material.
`
`Ex. 1001, 7:32–54. Taken as a whole, these disclosures indicate that the
`
`steps of treating dry felt or fiberglass material with asphalt can be performed
`
`in a continuous process with the steps of depositing and adhering nail tabs
`
`onto the roofing material, but there is no indication that the asphalt treatment
`
`must be part of the process, or that it must occur before the nail tabs are
`
`applied to the roofing material.
`
`Moreover, we are not convinced by Patent Owner’s argument that
`
`claims 1 and 7 only differ in that the “treating an extended length of
`
`substrate” language in claim 1 requires that the substrate be asphalt
`
`saturated, and claim 7 does not have such a requirement. See Tr. 20:1–5.
`
`Claims 1 and 7 differ in more ways than just the inclusion of the “treating an
`
`extended length of substrate” language in claim 1. For example, claim 7
`
`recites that the “nail tab material is substantially made of a polymeric
`
`material,” whereas claim 1 does not include any statement regarding the
`
`composition of the tab material.1 Additionally, claim 1 recites that the tab
`
`
`1 Claim 2, which depends from claim 1, further recites that “said tab material
`is substantially a polymer material.” Because dependent claim 2 is narrower
`
`
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`material is deposited onto the surface of the roofing or building cover
`
`material “at a plurality of nail tabs from a lamination roll,” and claim 7
`
`simply recites “first depositing nail tab material at a plurality of locations on
`
`said roofing or building cover material.”
`
`We further observe that “treating an extended length of substrate” is
`
`not repeated in the body of claim 1, nor in the claims that depend therefrom.
`
`Thus, it does not appear to provide any antecedent basis support for any of
`
`the elements of the claims. Indeed, all the term “treating an extended length
`
`of substrate” appears to do is give a descriptive name to the set of limitations
`
`that completely set forth the invention. In such an instance, preamble
`
`language does not limit the claims. See IMS Tech., Inc. v. Haas Automation,
`
`Inc., 206 F.3d 1422, 1434 (Fed. Cir. 2000) (“The phrase ‘control apparatus’
`
`in the preamble merely gives a descriptive name to the set of limitations in
`
`the body of the claim that completely set forth the invention. Its use does
`
`not limit the claims . . . .”).
`
`Reading the claim as a whole and applying the broadest reasonable
`
`construction of the claim language in light of the Specification, we conclude
`
`that the “treating an extended length of substrate” language in the preamble
`
`of claim 1 is not a limitation. Accordingly, we find that claim 1 does not
`
`preclude depositing tab material onto base substrate materials that are not
`
`asphalt coated or saturated.
`
`
`than independent claim 1, claim 1 encompasses tab material other than that
`which is “substantially a polymer material” as is recited in claim 2 (and in
`independent claim 7).
`
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`
`4.
`
`“nail tab”
`
`Claim 1 recites “a plurality of nail tabs,” and claim 7 recites “nail tabs
`
`on said roofing or building cover material.” Although neither party
`
`proposed an interpretation of “nail tabs,” based on our review of the
`
`complete record, we address the interpretation of this claim term.
`
`In its Response, Patent Owner argues that “it is well-established in the
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`art that nail tabs and their precursor tin or plastic caps are employed to
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`provide strength or reinforcement to roofing cover materials such as heavily
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`asphalt coated substrates like underlayments and shingles.” PO Resp. 21–
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`22. According to Patent Owner, “[t]hat a nail tab has a reinforcement
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`function to prevent nail head pullout and nail pull-through” is “consistent
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`with the description provided” in the ’757 patent, where the problem
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`described is “tearing of the roofing material at the fastening locations” that
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`“may be ameliorated by installing asphalt roofing cover material using
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`‘roofing nails with large heads’ or a ‘large washer or tab that lies underneath
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`the nail head’ . . . .” Id. at 23–24 (quoting Ex. 1001, 2:21–29, 44–63).
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`Patent Owner also argued at the oral hearing that “[n]ail tab as its plain and
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`ordinary meaning has a reinforcing function” and that “it is an alternative to
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`the tin caps and the prior caps that were used, washers, to hold the roofing or
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`other building cover material in place.” Tr. 23:23–24:2.
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`Petitioner responds that “[t]he claims do not recite nail tab ‘thickness,’
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`‘volume,’ ‘shape,’ ‘visibility,’ ‘reinforcement,’ ‘pullout’ or ‘pull-through,’
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`‘burst strength,’ ‘tear resistance,’ or ‘rupture strength’ as limitations.” Reply
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`17. At the oral hearing, when asked if it was Petitioner’s position that “nail
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`tab” would be the material that is deposited onto the building or roofing
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`cover material, Petitioner responded:
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`I think, under the broadest reasonable interpretation, yes.
`Otherwise it seems to be a slippery slope. How do you know
`which of the particular characteristics? Is it all of them? Is it one
`of them? Is it some of them that are disclosed in the
`specification, you know, there is no guidance in that regard that
`it has to be a certain class of characteristics or not.
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`Tr. 38:23–39:4.
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`We agree with Patent Owner that the nail tab provides reinforcement
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`to roofing or building cover materials. The Specification states that “it is
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`desirable that the underlayment be securely attached independently of the
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`shingles, wood shakes, metal tile or other roof covering not only in the pre-
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`shingling or pre-roof covering stage of installation, but also in the final
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`installation” because “[w]hen the underlayment is not securely fastened,
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`then the underlayment may be blown away or ripped concurrently with
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`shingle damage” under adverse weather conditions. Ex. 1001, 2:31–41. The
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`Specification also states that using an auxiliary large washer or tab that lies
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`underneath the nail head “successfully resists being torn through,” but that
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`the use of such washer or tab “is time consuming, somewhat expensive, and
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`can be somewhat dangerous” because it requires “two hands to either slip
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`the washer over the nail or to hold a tab down while driving the nail
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`through.” Id. at 2:45–55. The Specification further states that the use of
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`roofing nails with large heads is “not recommended both because they are
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`expensive and because they cannot be used in ordinary power equipment.”
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`Id. at 2:59–61. Therefore, according to the Specification, “[i]t is an
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`advantage of the present invention” to provide a method for applying
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`“polymer nail tabs or continuous strips to underlayment or other roofing
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`material.” Id. at 2:64–67.
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`These disclosures in the Specification indicate that the nail tabs that
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`are applied to the roofing or building cover material by the claimed process
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`are intended to serve the same purpose as auxiliary washers or tabs, which is
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`to securely install the roofing or building cover material in order to avoid
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`ripping or tearing under adverse weather conditions. Accordingly, we
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`interpret “nail tab” to mean “tab that lies underneath a nail head that
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`reinforces the nail against pullout and tear through.”
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`B.
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`Level of Ordinary Skill in the Art
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`Petitioner contends that the level of ordinary skill in the art “is
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`appropriately reflected in the disclosure of the prior art references.” Pet. 14.
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`Petitioner contends that the prior art indicates that a person having ordinary
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`skill in the art “would be familiar with various methods of printing polymer
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`on various substrates and for various purposes,” “would understand various
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`types of polymers can be printed using these methods,” and “would be aware
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`various methods of printing polymer are interchangeable and provide for
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`predictable results.” Id. Petitioner also contends that the ’757 patent states
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`that “[t]he invention is to the print method, a gravure, rotogravure or
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`gravure-like transfer printing (the ‘gravure process’) or offset printing” and
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`that “[t]he word ‘print’ or its form is used over 100 times in the ’757 Patent
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`specification and in connection with every embodiment and drawing
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`Figure.” Reply 23 (citing Ex. 1001, 3:24–26). According to Petitioner, “one
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`of ordinary skill in the art would possess at least a bachelor’s degree with
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`knowledge of various printing methods and several years of industry
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`experience in the printing field.” Pet. 14.
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`Patent Owner disagrees, and argues that “the ordinary skilled artisan
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`would be a person skilled in the field of roofing materials such as asphalt
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`shingles” and “would have a bachelor’s degree and approximately 3–5 years
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`of additional training and experience in the field of manufacturing roofing
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`materials with asphalt substrates.” PO Resp. 13. Patent Owner argues that
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`“an ordinarily skilled artisan in the field of the ’757 patent would minimally
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`understand” the manufacturing and basic properties of asphalt coated
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`substrates, and the requirements of roofing or building cover materials with
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`respect to adverse weather conditions. Id. at 15. According to Patent
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`Owner, a person skilled only “in the art of printing/graphics and substrates
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`used therein would not understand the processing issues associated with
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`applying polymer materials to roofing materials such as heavily asphalt
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`coated substrates to obtain nail tabs.” Id. at 16.
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`Factors to be considered in determining the relevant art for purposes
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`of addressing patent validity include the nature of the problem confronting
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`the inventor, the type of skills needed to understand the patent disclosure,
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`and the type of art applied to the application in the Patent and Trademark
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`Office (“PTO”). Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1008–09
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`(Fed. Cir. 1983). Here, the Specification states that the invention
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`specifically relates to “roofing material or other building materials normally
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`employed as cover materials over a wood roof deck or stud wall” and to
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`“methods for incorporating therein a plurality of integrally formed nail tabs
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`or a continuous reinforcing strip.” Ex. 1001, 1:29–34. The task that the
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`inventors of the ’757 patent faced was to devise a process for the application
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`of polymer nail tabs or continuous strips that provide reinforcement against
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`nail pullout and pull-through to roofing or building cover materials. Id. at
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`2:44–67. To solve this problem, knowledge from at least the field of
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`manufacturing roofing or building cover materials is needed.
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`In addition, much of the Specification details automated processes for
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`“permanently and reliably” affixing or bonding “appropriately viscous tab
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`material that quickly solidifies and adheres or bonds to the surface” of
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`“either dry felt, saturated felt, a fiberglass, polyester or other inorganic
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`substrate roofing material whether or