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R2 Saves The Day: You Gotta Release And Remove – Patent


Holding:

In Fluid Energy Group Ltd. v. Green Products and
Technologies, LLC
, IPR2021-00357, Paper 48 (P.T.A.B. July 5,
2022), the Patent Trial and Appeal Board (“the Board”)
issued a Final Written Decision finding no challenged claims
unpatentable even though an inter partes review (“IPR”)
was instituted.

Background:

Fluid Energy filed an IPR petition challenging the patentability
of claims 1-8 of U.S. Patent No. 7,938,912 (“the ‘912
patent”), assigned to Green Products, under 35 U.S.C.
§103. The asserted prior art references were U.S. patents, a
Canadian patent, and a material safety data sheet.

Independent claim 1 of the ‘912 patent reads:

A method for cleaning a surface of a
cementitious material comprising:

providing a composition comprising HCl, urea, complex substituted
keto-amine-hydrochloride, an alcohol, an ethoxylate, and a
ketone;

applying the composition to a surface to release a
cementitious material
therefrom; and

removing the composition and released cementitious
materia
l from the
surface
.

(Emphases added.) Claims 2-4 specify chemical components, claim
5 recites a weight percentage concentration limitation, claim 6
recites a range of dilution levels, and claims 7 and 8 add
additional steps to the claimed method.

The Board’s Claim Construction: The Board
began by analyzing the preamble of claim 1. It found the
preamble’s use of the word “of” to be inconsistent
with the body of the claim and the specification, which
“plainly identify the object of the claimed invention as
‘removing cementitious materials from
surfaces.'” Id. at *11 (emphasis in original).
Furthermore, “the body of the claim fully and completely sets
forth all of the required method steps of the invention, as well as
the components of the required composition.” Id. at
*12. The preamble was not to be construed as reciting an additional
required step. “[T]he preamble’s mention of
‘cleaning’ is a nonlimiting intended use of the composition
specified in the body of the claim.” Id. at *13.

Turning to the step of “applying the composition to a
surface to release a cementitious material therefrom,” the
Board agreed with Patent Owner that the surface of the material is
separate from the cementitious material. There are “two
distinctly claimed structures (i.e., ‘a Surface’ and ‘a
cementitious material’).” Id.

The Board discussed Petitioner’s argument that the claims
support the application of the composition to a surface of a
cementitious material to remove a released
“efflorescence.” Id. at *15. The specification
“discloses an embodiment in which ‘[t]he composition can
be used as a base for a plurality of dilution levels to be used for
different applications,’ including ‘as an efflorescence
remover on cementitious materials (concrete block, brick, precast,
paver, cement, and masonry),'” but “that
[efflorescence] embodiment is not supported by the words that
appear in claim 1.” Id. Rather, Claim 1
“requires removal of a released cementitious
material
from a surface, not removal of a released
efflorescence from a cementitious
material. Id. (emphasis in original).

Moreover, four of the five embodiments described in the
specification disclose a composition for removing concrete from
tools or other equipment. Id. To be sure, a fifth
embodiment described a composition that could be used as an
efflorescence remover. But “there is no requirement that the
claim be construed to encompass all disclosed embodiments.”
Id. at *16. Nor can the disclosure of that fifth
embodiment change the scope of claim 1 when the language of the
claim specifies “a surface” distinct from “a
cementitious material,” id., and the specification
explicitly distinguishes “an efflorescence” from
“cementitious materials,” id. at *18. The Board
concluded that “[t]he plain language of independent claim 1
does not support or address the release or removal of an
‘efflorescence’ from the surface of a cementitious
material.” Id. at *16. The Board was not prepared to
broaden the scope of claim 1 beyond “the portions of the
specification that adequately disclose those terms to the
public.” Id.

Taking account of the totality of
the information presented, we determine that construing
“surface” and “cementitious material” using the
examples in the majority of the embodiments provided in the
‘912 patent specification is necessary to “tether the
claims to what the specification[] indicate[s] the inventor
actually invented.” Retractable Techs., Inc. v. Becton,
Dickinson & Co.
, 653 F.3d 1296, 1305 (Fed. Cir. 2011). In
doing so, we adopt “[t]he construction that stays true to the
claim language and most naturally aligns with the patent’s
description of the invention . . . [which] in the end, [is] the
correct construction.” Phillips[ v. AWH
Corp.
], 415 F.3d [1303,] 1312 [(Fed. Cir. 2005)].

Id. at *18-19.

So in short, the Board construed the claim to mean exactly what
it said: “applying the composition to a surface to
release a cementitious material
therefrom; and
removing the composition and released cementitious
materia
l from the
surface
.” (Emphasis added.)

In the Board’s view, that claim construction proved the
undoing of Petitioner’s obviousness arguments.

The Board’s Obviousness Analysis: After
noting that it alerted Petitioner to its concerns about the basis
for Petitioner’s obviousness arguments at the time of
institution, the Board concluded that, under the correct claim
construction (“claim 1 requires ‘a surface’ that is
distinct from ‘a cementitious material’ that is removed
‘from the surface'”), Petitioner had not shown that
its primary reference, Sargent, disclosed releasing and removing a
cementitious material from a surface. Id. at *24-27.

Concluding its claim construction analysis, the Board
stated:

Petitioner’s view that Sargent,
by releasing “a portion of the cementitious
material” after applying the composition “to a surface
of a cementitious material,” rests on an incorrect
interpretation of claim 1.

Id. at *26. (emphasis in original).

The Board elaborated on an alternative rationale for rejecting
Petitioner’s obviousness arguments with respect to claims 5 and
6.

Claim 5 of the ‘912 patent recites a range for HCl and
precise numerical values for eight other components:

5. The method recited in claim 1,
wherein the composition comprises:

HCl, 40-60 wt %;

urea, 42 wt %;

complex substituted keto-amine-hydrochloride, 0.067 wt %;

isopropyl alcohol, 0.067 wt %;

ethoxylated nonylphenol, 0.022 wt %;

propargyl alcohol, 0.022 wt %;

methyl vinyl ketone, 0.022 wt %;

acetone, 0.022 wt %; and

acetophenone, 0.0022 wt %.

Claim 6 of the ‘912 patent adds a permissible range of HCl
dilution:

6. The method recited in claim 1,
further comprising, prior to the applying step, diluting the
composition with water in a range of 1:1 to 6:1
water:composition.

According to the Board, “Petitioner fails to explain
adequately how the prior art, without the benefit of hindsight
gleaned from the disclosure of the ‘912 patent, would have led
to a composition that satisfies every precise concentration
requirement.” Id. at *28. For example, Petitioner
argued “that the prior art suggests an ‘estimated’
concentration range of ‘0.1-0.5’ % for acetophenone”
and “a ‘calculated’ concentration range of ‘(
0.01’ wt. % for acetophenone,” but that “does not
explain adequately how or why the prior art would have
suggested” the recited precise concentration value for
acetophenone in terms of thousandths of a percentage point (0.0022
wt %). Id. at *28-29.

The Board also pointed out that Petitioner did not explain how
or why any of the recited components “would have been
recognized as result-effective variables or achievable through
routine experimentation.” Id. at *30. As we see it,
the Board concluded that this was not a case of optimization of
variables and that the prior art provided no motivation to achieve
the recited components in the recited amounts.

The Board also rejected Petitioner’s indirect
“optimization” argument that the recited concentration
values were “not critical.” Id. at *31.

Petitioner’s view that an
ordinarily skilled artisan could have
varied concentrations of the eight ingredients of the composition
specified in claim 1, “without departing from the spirit of
the invention,” does nothing to show why the artisan
would have selected the precise
combination of concentration values recited in claim 5 with a
reasonable expectation of success.

Id. at *32 (emphases in original).

Moreover, the Board focused on the failure of Petitioner to come
to grips with the

express objectives, reflected in the
‘912 patent disclosure, of “providing a composition . . .
effective at removing cementitious materials from surfaces without
. . . damag[ing] the target surface and releas[ing] harmful
substances into the environment.”

Id. at *33 (citation omitted). Petitioner’s
suggestion to ignore an express claim limitation was not
supported.

The Board also found unavailing Petitioner’s arguments about
the unpatentability of claim 6: there was no adequate reasoning
“why the proposed combinations of prior art references would
have led an ordinarily skilled artisan to a dilution value ‘in
an overlapping range or’ one ‘that is close to the claimed
range of 1:1 to 6:1.'” Id. at *33. And the Board
found no showing that the dilution range in claim 6 would have been
recognized as a result-effective variable or that the
experimentation necessary to ascertain an optimum range would have
been within the level of ordinary skill in the art.
Id.

The Board then analyzed and rejected another ground raised by
Petitioner, again noting that it expressed concern in the
Institution Decision about the adequacy of Petitioner’s
argument on this ground:

In our decision instituting this
review, we expressed our concerns about whether an ordinarily
skilled artisan would have been “motivated to use the
concentrations and components suggested in McCormick with the
corrosion inhibitor in Mancillas to ensure that the complex
substituted ketoamine component in Mancillas is diluted as required
for the HCl concentration used in Netherton.” We also
expressed our concerns about whether an ordinarily skilled artisan
“would also secure the concentrations for the remaining
components forming the complex substituted keto-amine-based
corrosion inhibitor.” Even with this understanding of our
concerns, Petitioner has not adequately pointed to any objective
proof within the asserted prior art to overcome those concerns.

Id. at *37 (citations omitted).

Takeaways:

Always be prepared if your proposed claim construction is not
adopted. Have arguments and positions based on your opponent’s
proposed claim construction or an alternative construction.

Prior art disclosure of ranges may not be enough to render
specific amounts obvious. This is like showing a species patentable
over a genus.

Be prepared to show that a skilled artisan would make changes or
combine references to achieve the claimed invention. In this case,
the fact that a skilled artisan “could” do so was not
enough.

For the patentee, consider using means-plus-function claims as a
way to claim a function and obtain claim scope covering disclosed
structures and statutory equivalents thereof. For more information
on means-plus-function claiming, see https://www.finnegan.com/en/insights/blogs/prosecution-first/got-pharmaceutical-means-plus-function-claims.html.

For example, perhaps claim 1 could have been written, with an
appropriate linking table, as:

1. (MPF) A method comprising:

providing a means for releasing a
cementitious material from a surface;

applying said means to a
surface to release a cementitious material
therefrom;
and

removing said means and
said released cementitious materia
l from
the surface
.

Or consider using “consisting of” in claims as a way
to eliminate or minimize ingredients and obtain valid and
enforceable patents that cover greened-down products or that avoid
unpatentability and invalidity attacks.

For example, perhaps claim 1 could have been written as:

  1. A method for cleaning a surface of a cementitious material
    consisting of :

providing a composition consisting
of HCl, urea, complex substituted keto-amine-hydrochloride, an
alcohol, an ethoxylate, and a ketone;

applying the composition
to a surface to release a cementitious material

therefrom; and

removing the composition
and released cementitious materia
l from
the surface
.

This type of claim might be novel and nonobvious over a prior
art composition having the same purpose but disclosing a
combination of HCl, urea, complex substituted
keto-amine-hydrochloride, an alcohol, an ethoxylated phenol, a
ketone, and an aldehyde. For more information on the use of
“consisting of” in claims, see https://www.finnegan.com/en/insights/blogs/prosecution-first/consisting-of-claim-language-in-the-fight-against-climate-change.html.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.



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