Trials@uspto.gov
`571-272-7822
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`
`
`
`Paper 9
`Entered: August 13, 2015
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`
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`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.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`

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`IPR2015-00650
`Patent 8,137,757 B2
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`
`I. INTRODUCTION
`
`Owens Corning (“Petitioner”) filed a Petition (“Pet.”) to institute an
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`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. Fast Felt Corporation (“Patent
`
`Owner”) filed a Preliminary Response (“Prelim. Resp.”). Paper 7. We have
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`jurisdiction under 35 U.S.C. § 314.
`
`Upon consideration of the Petition and Preliminary Response and the
`
`evidence of record, we determine that Petitioner has established a reasonable
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`likelihood of prevailing with respect to the unpatentability of claims 1, 2, 4,
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`6, and 7 of the ’757 patent. Accordingly, we institute an inter partes review
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`of those claims.
`
`A.
`
`Related Proceedings
`
`The parties indicate that the ’757 patent is involved in a district court
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`action, in which Petitioner is a party, captioned Fast Felt Corp. v. Owens
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`Corning, Civ. A. No. 3:14-CV-00803-DAK (N.D. Ohio). Pet. 2; Paper 6, 2.
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`B.
`
`The ’757 Patent
`
`The ’757 patent, titled “Print Methodology for Applying Polymer
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`Materials to Roofing Materials to Form Nail Tabs or Reinforcing Strips,” is
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`directed to a method for applying nail tabs to roofing and building cover
`
`materials. Ex. 1001, Abstract. According to the ’757 patent, the claimed
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`print method is “a gravure, rotogravure, or gravure-like transfer printing (the
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`‘gravure process’) or offset printing, of an appropriately viscous and
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`substantially polymeric material onto roofing material, or onto a continuous
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`transfer material and then transferred, including utilizing a laminating
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`process, onto the roofing material, in a continuous process.” Id. at 3:24–30.
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`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
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`means of controlling the pattern or other attributes of the resultant nail tab.”
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`Id. at 3:30–34.
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`Figure 1 of the ’757 patent is reproduced below:
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`
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`Figure 1 is a schematic diagram of a print cylinder as described in the ’757
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`patent. Id. at 4:65–67. Print cylinder 100 receives viscous tab material from
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`print reservoir 102 into patterns etched on the face of print cylinder 100 and
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`prints a pattern onto roofing material 104. Id. at 7:13–16. Doctor blade 108
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`removes excess tab material from print cylinder 100, such that tab material
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`remains only in the engraved image area etched into print cylinder 100. Id.
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`at 7:18–20. When print cylinder 100 makes contact with roofing material
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`104 and impression cylinder 106, the viscous tab material is deposited from
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`print cylinder 100 onto roofing material 104. Id. at 7:24–27. Roofing
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`material 104 “may be bonded with appropriate rows of nail tabs or
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`continuous reinforcing strips, preferably substantially polymer materials,”
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`and can include at least one contrasting color to roofing material 104 and
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`“one or more additives to tailor the polymer material.” Id. at 7:32–40.
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`IPR2015-00650
`Patent 8,137,757 B2
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`C.
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`Illustrative Claims
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`Petitioner challenges claims 1, 2, 4, 6, and 7 of the ’757 patent.
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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, as is independent claim 7:
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`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.
`
`
`
`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.
`
`D.
`
`The Prior Art
`
`Petitioner refers to the following prior art references:
`
`Hefele
`
`U.S. 5,101,759
`
`Apr. 7, 1992
`
`Ex. 1004
`
`Bayer
`
`U.S. 5,597,618
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`Jan. 28, 1997
`
`Ex. 1007
`
`Lassiter
`
`U.S. 6,451,409 B1
`
`Sept. 17, 2002 Ex. 1003
`
`Eaton
`
`U.S. 6,875,710 B2
`
`Apr. 5, 2005
`
`Ex. 1005
`
`Dagher
`
`WO 01/62491 A1
`
`Aug. 30, 2001 Ex. 1020
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`4
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`IPR2015-00650
`Patent 8,137,757 B2
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`E.
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`The Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1, 2, 4, 6, and 7 of the
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`’757 patent based on the following grounds:
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`Reference(s)
`
`Basis
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`Claim(s) Challenged
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`Lassiter and Hefele
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`§ 103(a)
`
`1, 2, 4, 6, and 7
`
`Lassiter and Bayer
`
`§ 103(a)
`
`1, 2, 4, and 6
`
`Dagher
`
`§ 102(b)
`
`7
`
`Lassiter and Eaton
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`§ 103(a)
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`1, 2, 4, 6, and 7
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`
`
`A.
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`Claim Interpretation
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`II. ANALYSIS
`
`We interpret claims of an unexpired patent using the “broadest
`
`reasonable construction in light of the specification of the patent in which
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`[the claims] appear[].” 37 C.F.R. § 42.100(b). For purposes of this
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`Decision, based on the record before us, we determine that none of the claim
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`terms requires an explicit construction.
`
`B.
`
`Obviousness over Lassiter and Hefele
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`Petitioner contends that claims 1, 2, 4, 6, and 7 would have been
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`obvious under 35 U.S.C. § 103(a) over the combination of Lassiter and
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`Hefele. Pet. 19–34. Petitioner relies on a Declaration by Harvey R.
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`Levenson (“the Levenson Declaration,” Ex. 1014). Id.
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`1.
`
`Overview of Lassiter
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`Lassiter is directed to roofing or other building materials, used as
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`cover material prior to installing shingles or external siding, that incorporate
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`“a plurality of integrally formed nail tabs.” Ex. 1003, 1:10–15.
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`Patent 8,137,757 B2
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`Figure 1 of Lassiter is reproduced below:
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`
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`Figure 1 is a schematic side view of Lassiter’s automated process for
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`manufacturing roofing materials. Id. at 4:24–26. Dry felt material is
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`conveyed from roll 10 using drive roller 12 to treatment area 14, where it is
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`saturated with asphalt “in conventional fashion.” Id. at 4:52–55. The
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`saturated felt material exits treatment area 14 and is cooled using water-
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`cooled chill roll 16, and continues the process as saturated felt material 17.
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`Id. at 4:60–61, 5:9–10. Saturated felt material 17 is driven by plurality of
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`drive rollers 22a–22x in direction 24 through nail tab production area 18. Id.
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`at 5:10–12. Thermoplastic material is provided from pressurized supply
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`tank and pump system 28, and is dispensed from nozzle or nozzle sets 26
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`onto the surface of saturated felt material 17, forming tabs 29a , 29b–29x. Id.
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`at 5:19–22, 61–62. Saturated felt material 17 with attached tabs 29 leaves
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`nail production area 18, passes by grooved wheel 32, and then enters free
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`looper 34 to roller area 36, where the final rolls are produced. Id. at 6:4–9.
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`Lassiter states that the thermoplastic material used to make the tabs
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`can include “one or more suitable adhesives that enhance the bonding of the
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`material to the surface of the saturated felt material,” and can also include
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`contrasting dye color. Id. at 5:27–33. The thermoplastic material “must be
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`Patent 8,137,757 B2
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`either fast-cooling or fast-setting so that it bonds and solidifies to the surface
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`of the saturated felt before it leaves” nail tab production area 18. Id. at 5:44–
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`46. Lassiter describes that “[t]he tabs, as they are bonded to the material, are
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`tough, but remain flexible or pliable and not brittle.” Id. at 5:47–48.
`
`2.
`
`Overview of Hefele
`
`Hefele is directed to a method and device for forming a grid-like
`
`coating on web-like flexible planar members. Ex. 1004, 1:6–7. According
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`to Hefele, “[c]oated interlining materials on the basis of weaves, textiles,
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`woven textile goods, fleeces, knitted fleeces, and woven knitted fleeces can
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`be manufactured,” and “coated synthetic leather, foils, papers, and foam
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`materials can be produced without problems.” Id. at 2:67–3:3.
`
`Figure 1 of Hefele is reproduced below:
`
`
`
`Figure 1 is a schematic section and side view of the device described in
`
`Hefele. Id. at 3:11–12. Funnel-shaped supply container 3, containing fusion
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`adhesive powder 4, is located directly above gravure roller 1. Id. at 3:18–20.
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`Cup-shaped depressions 2 are provided on the surface of gravure roller 1.
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`Id. at 3:20–21. Fusion adhesive powder 4 flows out of the bottom of funnel-
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`shaped supply container 3 and into cup-shaped depressions 2 on gravure
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`roller 1. Id. at 3:22–26. Gravure roller 1 rotates such that cup-shaped
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`Patent 8,137,757 B2
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`depressions 2, filled with fusion adhesive powder 4, are moved to heated
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`roller 5. Id. at 3:29–32.
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`Heated roller 5, covered with anti-adhesive rubber coating 6, rotates in
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`the direction of the arrow illustrated in Figure 1 and “is pressed relatively
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`strongly onto” gravure roller 1. Id. at 3:33–36. Fusion adhesive powder 4 in
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`cup-shaped depressions 2 are transferred onto rubber coating 6 of heated
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`roller 5, and remain there as powder agglomerates 7. Id. at 3:36–40. Planar
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`structure 8 is guided across pre-heating roller 11and between heated roller 5
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`and associated roller 9, pressing planar structure 8 against heated roller 5.
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`Id. at 3:46–52. Powder agglomerates 7 are transferred to planar structure 8,
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`forming grid-like coating 10 on planar structure 8. Id. at 3:56–63.
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`3.
`
`Analysis
`
`Petitioner contends that the combination of Lassiter and Hefele
`
`discloses all of the elements of claim 1. Pet. 20–26. Petitioner contends that
`
`Lassiter discloses using nozzles to deposit liquid polymer tab material onto
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`the surface of a roofing or building cover material, and Hefele discloses
`
`using a transfer or lamination roll to deposit polymer tab material onto webs.
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`Id. at 21–23. Petitioner further contends that Hefele describes that the
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`polymer material is bonded to the web via pressure exerted by the web on a
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`lamination roll. Id. at 23–24. According to Petitioner, it would have been
`
`obvious to modify the nozzle-based method described in Lassiter to include
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`the lamination roll method described in Hefele, because an advantage of
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`Hefele’s offset gravure method “is a wide variety of surface structures can
`
`be printed on or coated, even those which ‘cannot be coated or can only be
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`coated with difficulty in the direct coating method’ and eliminates the need
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`for additional structures and expense.” Id. at 24–25. Petitioner also
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`contends that combining Lassiter and Hefele “is a simple substitution of one
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`well-known polymer deposition technique for another to obtain predictable
`
`results.” Id. at 26.
`
`Patent Owner argues that Lassiter teaches away from using rollers to
`
`deposit tabs because Lassiter states that “‘the rollers used tend to either melt
`
`the adhesive glue, melt the tab material itself, scrape off the tabs, or a
`
`combination of all three, any of which renders the resulting saturated felt
`
`material unreliable, if not unsuited, for commercial use.’” Prelim. Resp. 7
`
`(citing Ex. 1003, 2:36–40). Patent Owner also argues that Hefele does not
`
`disclose using an asphalt-coated surface in the described method, and
`
`therefore there is no “rationale for [Petitioner’s] alleged ‘simple
`
`substitutions’ or any other mechanism that does not properly account for
`
`polymer deposition onto this type of complex, coated surface.” Id. at 12–13.
`
`We are persuaded, based on the current record, that Petitioner’s
`
`substantive arguments (Pet. 20–26) and the Levenson Declaration (Ex. 1014)
`
`are sufficient to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that claim 1 would have been obvious over the
`
`combination of Lassiter and Hefele. For example, claim 1 recites that the
`
`tab material bonds to the surface of the roofing or building cover material by
`
`pressure between the lamination roll and the roofing or building cover
`
`material. As Petitioner alleges, “Lassiter specifically discloses the nail tab
`
`material ‘bonds and solidifies to the surface of the saturated felt,’” and
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`“Hefele discloses in connection with Fig. 1 (below) that pressure between
`
`the lamination/heated roller 5 and the surface of the web material 8 is used
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`to bond the polymeric tab material 7 to the web 8.” Pet. 23–24.
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`We do not find Patent Owner’s argument that Lassiter teaches away
`
`from using rollers to deposit polymer tabs on roofing or building cover
`
`material to be persuasive, based on the current record. The statement in
`
`Lassiter that Patent Owner contends disparages the use of rollers to deposit
`
`tab material refers to a different process than the process described
`
`elsewhere in Lassiter, on which Petitioner relies. Ex. 1003, 2:31–39. In the
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`allegedly disparaging process, which Lassiter explains is described in U.S.
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`Patent No. 5,365,709, high temperatures and rollers are used in the process
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`of asphalt-saturating dry felt material onto which tabs have been previously
`
`glued. Id. Patent Owner does not explain why a person having ordinary
`
`skill in the art would be discouraged from using rollers to deposit tabs on
`
`roofing or building cover material based on Lassiter’s statement regarding
`
`problems encountered in the asphalt saturation process.
`
`Additionally, we do not find Patent Owner’s argument that a person of
`
`ordinary skill in the art would not be motivated to combine Lassiter with
`
`Hefele to be persuasive, on this record. Petitioner relies on Dr. Levenson’s
`
`testimony to support its contentions that it would have been obvious to
`
`modify Lassiter’s nozzle-based method to use Hefele’s offset gravure
`
`method using a lamination roll. Pet. 24–26; Ex. 1014 ¶¶ 40–44. For
`
`example, Dr. Levenson states that a person having ordinary skill in the art
`
`“would also be aware of the interchangeability of nozzle and gravure
`
`systems for depositing polymers” based on disclosures in the prior art. Ex.
`
`1014 ¶ 42 (citing Allman’s (Ex. 1006) use of nozzle-based depositing and
`
`gravure-based depositing to accomplish the same result). Dr. Levenson also
`
`states that “it was known to print polymeric tab material on the surface of a
`
`shingle sheet using a print wheel.” Id. (citing Ex. 1009, 4:5–11, 17–20, and
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`Fig. 1). We are persuaded, based on the current record, that Petitioner has
`
`provided sufficient reasoning with rational underpinning to support a
`
`motivation to combine Lassiter and Hefele. See KSR Int’l Co. v. Teleflex,
`
`Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by
`
`mere conclusory statements; instead, there must be some articulated
`
`reasoning with some rational underpinning to support the legal conclusion of
`
`obviousness.”)).
`
`Accordingly, we determine that the record before us establishes a
`
`reasonable likelihood that Petitioner would prevail in showing claim 1
`
`would have been obvious over the combination of Lassiter and Hefele. We
`
`also have considered the arguments and evidence with respect to dependent
`
`claims 2, 4, and 6, and likewise are persuaded, based on the current record,
`
`that Petitioner has demonstrated a reasonable likelihood that it would prevail
`
`as to those claims as well.
`
`Petitioner also contends that the combination of Lassiter and Hefele
`
`discloses all of the limitations of independent claim 7, and provides
`
`arguments setting forth where each of the limitations can be found. Pet. 30–
`
`34. For example, Petitioner contends that Lassiter discloses “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,” because Lassiter describes depositing nail tabs 29 (made of
`
`thermoplastic-based polymeric material), using nozzles 26, along the length
`
`of roofing material 17. Id. at 30–31. Based on this record, we are persuaded
`
`that Petitioner’s discussion of Lassiter and Hefele in the Petition, along with
`
`the Levenson Declaration, are sufficient to establish a reasonable likelihood
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`that claim 7 would have been obvious over the combination of Lassiter and
`
`Hefele.
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`C. Obviousness over Lassiter and Bayer
`
`Petitioner contends that claims 1, 2, 4, and 6 would have been obvious
`
`under 35 U.S.C. § 103(a) over the combination of Lassiter and Bayer. Pet.
`
`34–42. Petitioner relies on the Levenson Declaration in support of its
`
`contentions. Id.
`
`1.
`
`Overview of Bayer
`
`Bayer is directed to a method and apparatus for applying coating
`
`material to a receiving surface. Ex. 1007, 1:10–11. According to Bayer,
`
`“[t]he coating material may be any suitable material, including but not
`
`limited to adhesive (e.g. pressure sensitive adhesive) and ink.” Id. at 4:18–
`
`20. Bayer states that “[t]he receiving surface may be, for example, a
`
`substrate, such [as] a continuous web of paper or polymeric material, or a
`
`belt or roller that receives the material and transfers the material to a
`
`substrate.” Id. at 4:20–23.
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`Figure 6 of Bayer is reproduced below:
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`
`
`Figure 6 is a cross-sectional view of the coating apparatus described in
`
`Bayer. Id. at 3:63–64. Applicator apparatus 100 applies adhesive 102 to
`
`substrate 104, which is provided by supply roll 103 and collected at
`
`collection roll 105. Id. at 4:28–32. Adhesive source 110 provides adhesive
`
`102 to peripheral surface 108 of hub 106. Id. at 4:39–45. Substrate 104 is
`
`fed between backing roller 107 and hub 106, such that adhesive 102 is
`
`applied to substrate 104 at application interface 111. Id. at 4:36–38.
`
`Bayer states that peripheral surface 108 “includes a plurality of
`
`spaced, discrete structures projecting from the peripheral surface of the hub,
`
`between and on which structures the adhesive is carried.” Id. at 4:55–60.
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`These structures are identified as projecting structures 115 in Figure 6
`
`above. According to Bayer, “[p]rojecting structures 115 may be regularly
`
`spaced or irregularly spaced about the peripheral surface, and may be
`
`hemispherical, square, triangular, or any other suitable shape.” Id. at 4:66–
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`13
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`5:2.
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`2.
`
`Analysis
`
`Petitioner contends that the combination of Lassiter and Bayer
`
`discloses all the elements of claim 1. Pet. 35–39. Petitioner contends that
`
`Bayer discloses depositing tab material from a roller onto a substrate surface
`
`at a plurality of positions. Id. at 36. Petitioner further contends that Bayer
`
`discloses that the tab material bonds to the substrate surface by contact
`
`pressure between the roller and the substrate surface. Id. at 37. Petitioner
`
`contends that Lassiter and Bayer “are both directed to printing polymers on
`
`various substrates including on roofing or building cover materials (i.e., both
`
`references print on ‘paper,’ which Lassiter notes is a roofing or building
`
`cover material).” Id. at 35. According to Petitioner, a person having
`
`ordinary skill in the art “would have readily recognize[d] the wide ranging
`
`benefits and predictable results of printing polymer nail tabs provided by
`
`such a combination,” and that the combination is “a simple substitution of
`
`one well known process for another, and yield[s] predictable results.” Id.
`
`Patent Owner challenges Petitioner’s reasons for combining Bayer
`
`with Lassiter. Prelim. Resp. 12. Specifically, Patent Owner argues that
`
`Bayer is not “directed to bonding or pressure adhering nail tabs (or anything
`
`else for that matter) to a roofing or building cover material.” Id. Patent
`
`Owner also argues that Bayer does not disclose depositing polymer material
`
`onto “a heavily asphalt coated surface, as in roofing cover materials,” and
`
`that such absence “repudiates any rationale for alleged ‘simple substitutions’
`
`or any other mechanism that does not properly account for polymer
`
`deposition onto this type of complex, coated surface.” Id. at 12–13.
`
`We are persuaded, based on the current record, that Petitioner’s
`
`substantive arguments (Pet. 35–39), and the Levenson Declaration (Ex.
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`1014) are sufficient to establish a reasonable likelihood that Petitioner would
`
`prevail in showing that independent claim 1 is unpatentable over the
`
`combination of Lassiter and Bayer. For example, claim 1 recites “said tab
`
`material bonding to the surface of said roofing or building cover material by
`
`pressure between said roll and said surface.” As Petitioner alleges, Lassiter
`
`describes bonding nail tab material to roofing cover material, and Bayer
`
`describes bonding material by contact pressure between a roller and the
`
`surface of a substrate. Id. at 37–38.
`
`Based on the record before us, we do not find Patent Owner’s
`
`argument that Petitioner did not establish a reason to combine Lassiter and
`
`Bayer to be persuasive. Petitioner relies on the Levenson Declaration, which
`
`explains the following with respect to combining Lassiter and Bayer:
`
`Such a combination is a simple substitution of one well-known
`polymer deposition technique for another to obtain predictable
`results. That is, both Lassiter and Bayer are directed to
`applying polymer tab material to a substrate such as paper. It is
`also a combination of prior art elements according to known
`methods to obtain predictable results. Depositing polymer tab
`material using a transfer or lamination roll as disclosed by
`Bayer is old and well-known (i.e., “offset” printing) and, hence,
`well understood
`to provide predictable
`results.
` The
`combination further uses a known technique to improve a
`similar method and would be obvious to try with a reasonable
`expectation of success. Depositing polymer tab material with a
`transfer or lamination roll as disclosed by Bayer is one of a
`finite number of known ways to successfully and reliably print
`polymer.
`
`Ex. 1014 ¶ 72. Dr. Levenson further notes, as set forth above with respect to
`
`the combination of Lassiter and Hefele, that a person having ordinary skill in
`
`the art “would also be aware of the interchangeability of nozzle and gravure
`
`systems for depositing polymers.” Id. ¶ 71. We are persuaded, based on the
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`current record, that Petitioner has provided sufficient reasoning with rational
`
`underpinning to support a motivation to combine Lassiter and Bayer.
`
`Accordingly, we determine that the record before us establishes a
`
`reasonable likelihood that Petitioner would prevail in showing claim 1
`
`would have been obvious over the combination of Lassiter and Bayer. We
`
`have also considered the arguments and evidence with respect to dependent
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`claims 2, 4, and 6, and likewise are persuaded, based on the current record,
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`that Petitioner has demonstrated a reasonable likelihood that it would prevail
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`as to those claims as well.
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`D.
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`Anticipation by Dagher
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`Petitioner contends that claim 7 is unpatentable under 35 U.S.C.
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`§ 102(b) as anticipated by Dagher. Pet. 42–47. Petitioner relies on the
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`Levenson Declaration in support of its contentions. Id.
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`1.
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`Overview of Dagher
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`Dagher is directed to a wood sheathing panel, for use in building
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`construction, which incorporates reinforcement strips of fiber reinforced
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`polymer (“FRP”) material into the panel. Ex. 1020, Abstract. Dagher
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`describes wood sheathing as including plywood, oriented strand boards, and
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`other wood-based composite panels. Id. at 4:30–5:2. According to Dagher,
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`“[t]he wood sheathing panels are preferably reinforced with such synthetic
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`fibers as E-glass, carbon fibers, aramid fibers or combinations of these
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`fibers, although other reinforcement fibers can be used.” Id. at 5:2–4.
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`Patent 8,137,757 B2
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`Figures 9 and 10 of Dagher are reproduced below:
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`
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`Figures 9 and 10 are schematic plan views of a wood sheathing panel having
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`reinforcement strips incorporated intermittently into the panel. Id. at 4:1–3.
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`In Figure 9, intermittent FRP reinforcement strips 56 are incorporated into
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`generally rectangular panel 38. Id.at 7:21–22. FRP reinforcement strips 56
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`extend along the length of panel 38 and are spaced such that they “are on
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`centers that coincide with the intended framing construction for the
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`building.” Id. at 7:22–25. Dagher states that “[t]he objective of intermittent
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`longitudinal reinforcement is to reduce nail head pullout and nail pull-
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`through, as well as to increase the energy dissipation capabilities of the
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`panel.” Id. at 8:1–3.
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`In Figure 10, FRP reinforcements 58 extend transversely across the
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`width of panel 38. Id. at 8:6–7. Dagher states that FRP reinforcements 58
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`preferably are “added at locations coincident with the building framing
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`members to which the panel is to be attached.” Id. at 8:8–10. According to
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`Dagher, the purpose of transverse FRP reinforcements 58 “is to reduce nail
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`head pullout and nail pull-through, as well as increase nail shear strength.”
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`Id. at 8:10–12.
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`Dagher states that when FRP reinforcements are applied to the
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`exterior of a wood sheathing panel, “application involves wetting the
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`reinforcement with the resin, applying the reinforcement to the desired
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`location, and rolling the wetted reinforcement to assure good contact and to
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`remove trapped air.” Id. at 10:25–28.
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`2.
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`Analysis
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`Petitioner contends that Dagher discloses all of the elements of
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`independent claim 7, and sets forth where each of the elements may be
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`found. Pet. 43–47. Petitioner contends that the wood sheathing panels
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`described in Dagher can be used in roof construction, and therefore are “a
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`roofing or building cover material” as recited in claim 7. Id. at 43.
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`Petitioner contends that Dagher discloses the claim limitation “first
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`depositing nail tab material at a plurality of locations on said roofing or
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`building cover material, said nail tab material is substantially made of a
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`polymeric material” because reinforcement strips 56 and 58, as shown in
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`Figures 9 and 10, can be applied to the exterior of wood panel 38 using a
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`sequence that includes applying the reinforcement to the desired location.
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`Id. at 44. According to Petitioner, FRP reinforcement strips 56 and 58 are
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`“nail tab material” because Dagher states that they “reduce nail head pullout
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`and nail pull-through.” Id. at 45 (citing Ex. 1020, 8:2, 11–12).
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`Patent Owner argues that the wood sheathing panels described in
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`Dagher are not “roofing or building cover material” as required by claim 7.
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`Prelim. Resp. 15–17. Patent Owner argues that “the ’757 patent itself makes
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`clear that the ‘roofing and building cover material’ is not the wood roof
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`deck.” Id. at 15. In support of its argument, Patent Owner cites the
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`Specification’s statement that “[t]he invention relates generally to roofing
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`materials or other building materials normally employed as cover materials
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`over a wood roof deck or stud wall and more specifically to such cover
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`materials and methods for incorporating therein a plurality of integrally
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`formed nail tabs or a continuous reinforcing strip.” Id. (citing Ex. 1001,
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`1:29–34). According to Patent Owner, “Dagher cannot anticipate Claim 7
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`for at least the reason that Dagher only has ‘reinforcement strips of fiber
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`reinforced polymer material incorporated into the panels’ of a roof deck.”
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`Id. at 17.
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`We agree with Patent Owner that “roofing or building cover material”
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`as recited in claim 7 does not include the wood roof deck. The ’757 patent
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`describes “composite roofing material” as including “a final condition
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`underlayment, roll roofing or shingle material having bonded thereto
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`appropriate rows of nail tabs,” which nail tabs are “preferably made of,
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`either in total or in part, a polymer material.” Ex. 1001, 3:35–39. It
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`describes the starting material of the underlayment as a “substrate,” and uses
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`substrate “generically for all suitable starting base material including dry
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`felt, fiberglass mat and polyester mat or any other base material on which a
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`composite roofing or building material is built upon.” Id. at 1:54–55, 1:67–
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`2:4. The ’757 patent also notes that it is “common practice in the installation
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`industry” to affix each length of underlayment material “to the roof deck or
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`building sides support sheets or boards at a plurality of locations so that it
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`stays in place prior to the installation of the covering shingles.” Id. at 2:14–
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`19. The ’757 patent therefore establishes that “roofing or building cover
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`material” does not include a wood roof deck, but instead refers to material
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`that can be attached to, and cover, a wood roof deck.
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`We are not persuaded that Petitioner has established that Dagher
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`teaches the “roofing or building material” limitation recited in claim 7.
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`Dagher describes wood sheathing panels that serve to construct a roof deck
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`(Ex. 1020, 6:12–18), but does not describe “a roofing or building cover
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`material” that covers a roof deck. Accordingly, we conclude that Petitioner
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`has not demonstrated a reasonable likelihood that claim 7 is anticipated by
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`Dagher.
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`E.
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`Obviousness over Lassiter and Eaton
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`Petitioner contends that claims 1, 2, 4, 6, and 7 would have been
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`obvious under 35 U.S.C. § 103(a) over the combination of Lassiter and
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`Eaton. Pet. 47–60. Petitioner relies on the Levenson Declaration in support
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`of its contentions. Id.
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`1.
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`Overview of Eaton
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`Eaton is directed to composite webs that include reinforcing discrete
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`polymeric regions and elastic discrete polymer regions. Ex. 1005, 1:7–9.
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`Eaton states that the substrate of the composite web “may be a woven
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`material, nonwoven material, knit material, paper, film, or any other
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`continuous media that can be fed through a nip point,” and “may have a
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`wide variety of properties, such as extensibility, elasticity, flexibility,
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`conformability, breathability, porosity, stiffness, etc.” Id. at 6:28–35. Eaton
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`also states that the discrete polymeric regions “may be formed of a wide
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`variety of different nonelastomeric thermoplastic polymeric materials,” and
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`defines “thermoplastic” to mean “a polymer or polymeric composition that
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`softens when exposed to heat and returns to its original condition or near its
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`original composition when cooled to room temperature.” Id. at 8:54–60.
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`Figure 11 of Eaton is reproduced below:
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`
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`Figure 11 is a perspective view of a polymer transfer process described in
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`Eaton. Id. at 4:39–42. Substrate 10 is directed into a transfer nip formed
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`between backup roll 20 and transfer roll 30. Id. at 14:29–31. Exterior
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`surface 32 of transfer roll 30 includes one or more depressions 34. Id. at
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`14:32–36. Molten thermoplastic composition 41 is supplied to exterior
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`surface 32 from trough 40, and depressions 34 are thus filled with molten
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`thermoplastic composition 41. Id. at 14:36–40, 48–52. Transfer roll 30
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`rotates until molten thermoplastic composition 41 in depressions 34 are
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`contacted with substrate 10 against backup roll 20, and molten therm