Johns Manville v. Knauf Insulation - IPR Petition

8/21/2019 Johns Manville v. Knauf Insulation - IPR Petition

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

JOHNS MANVILLE CORPORATION and JOHNS MANVILLE, INC.

Petitioners

v.

KNAUF INSULATION, LLC and KNAUF INSULATION SPRL.

Patent Owners

Patent No. D631,670

Filing Date: December 31, 2008

Issue Date: February 1, 2011

Title: INSULATION MATERIAL

________________

Inter Partes Review No. Unassigned

PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. D631,670

UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.


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TABLE OF CONTENTS

I. INTRODUCTION ........................................................................................... 1

II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................... 1

III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103............ 2

IV. GROUNDS FOR STANDING ........................................................................ 2

V. IDENTIFICATION OF CHALLENGE .......................................................... 2

VI. OVERVIEW OF U.S. PATENT NO. D631,670 ............................................ 4

VII. CLAIM CONSTRUCTION ............................................................................ 4

A. Legal Standard for Claim Construction of a Design Patent .................. 4

1. Claim Construction of the ’670 Patent ....................................... 5

2. The Prosecution History of the ’670 Patent ................................ 6

3. Analysis of the Potential Claim Elements ................................ 15

VIII. THE APPLICABLE LEGAL STANDARDS ............................................... 19

A. Anticipation ......................................................................................... 19

B. Inherency ............................................................................................. 20

C. Obviousness ......................................................................................... 21

D. One of Ordinary Skill .......................................................................... 22

IX. DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITYUNDER THE BROADEST REASONABLE CONSTRUCTION ............... 23

A. Ground 1: The Claim Is Anticipated Under § 102(b) by OwensCorning PROPINK Smartperm™ Vapor Retarder (Ex. 1003) ........... 24

1. Elements 1-3 ............................................................................. 26

2. Alleged Element 4 ..................................................................... 26

3. Element 5 .................................................................................. 29

4. OC PROPINK Conclusion ........................................................ 31

B. Ground 2: The Claim Is Anticipated Under § 102(b), or Would HaveBeen Rendered Obvious Under § 103, by the Johns Manville SGSeries Spin-Glas® & Range Spin Glas Brochure (Ex. 1004) in Light

of Any of Three Other References ...................................................... 31

1. Elements 1-3 ............................................................................. 33

2. Alleged Element 4 ..................................................................... 33


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3. Element 5 .................................................................................. 37

4. JM Spin-Glas Conclusion ......................................................... 37

C. Ground 3: The Claim Is Anticipated Under § 102(b), or Would Have

Been Rendered Obvious Under § 103, by Soundproofing Your Walls,

The Family Handyman Magazine (Ex. 1007) in Light of Any of ThreeOther References ................................................................................. 38

1. Elements 1-3 ............................................................................. 40

2. Alleged Element 4 ..................................................................... 40

3. Element 5 .................................................................................. 42

4. Soundproofing Conclusion ........................................................ 42

D. Ground 4: The Claim Is Anticipated Under § 102(b), or Would Have

Been Rendered Obvious Under § 103, by Knauf: Timber Frame

External Walls: Non-Residential (Ex. 1008) In Light of Any of ThreeOther References ................................................................................. 43

1. Elements 1-3 ............................................................................. 45

2. Alleged Element 4 ..................................................................... 45

3. Element 5 .................................................................................. 46

4. Knauf: Timber Frame Walls Conclusion .................................. 46

E. Ground 5: The Claim Is Anticipated Under § 102(b), or Would HaveBeen Rendered Obvious Under § 103, by Owens Corning – 2006 at a

Glance Report (Ex. 1009) In Light of Any of Three Other References47

1. Elements 1-3 ............................................................................. 48

2. Alleged Element 4 ..................................................................... 48

3. Element 5 .................................................................................. 50

4. The OC 2006 Report Conclusion .............................................. 50

F. Ground 6: The Claim Is Anticipated Under § 102(a), or Would Have

Been Rendered Obvious Under § 103, by Owens Corning 2007

Progress Report (Ex. 1010) In Light of Any of Three Other

References ........................................................................................... 51

1. Elements 1-3 ............................................................................. 52

2. Alleged Element 4 ..................................................................... 52

3. Element 5 .................................................................................. 54

4. The OC 2007 Report Conclusion .............................................. 54


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G. Grounds 7 - 9: If “Brown and Cream” Are Deemed a Claim Element,Then the Claim Is Anticipated Under § 102(b), or Would Have Been

Rendered Obvious Under § 103, by JM Spin-Glas (Ex. 1004),Soundproofing (Ex. 1007), and Knauf: Timber Frame Walls (Ex.

1008) in Light of JM Microlite Blankets (Ex. 1005) .......................... 55

1. Brown and Cream Should Not Be Considered a Color Elementof the Claim of the ‘670 Patent ................................................. 55

2. If Brown and Cream Are Considered a Color Element of the

Claim of the ‘670 Patent, Then the Claim Is Still Anticipated orObvious. .................................................................................... 57

3.

Conclusion Regarding Grounds 7-9 ......................................... 59

X. CONCLUSION .............................................................................................. 60


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TABLE OF AUTHORITIES

Cases Page(s)

Apple, Inc. v. Samsung Elecs. Co.,

678 F.3d 1314 (Fed. Cir. 2012) .......................................................................... 21

Blisscraft of Hollywood v. United Plastic Co.,

189 F. Supp. 333 (S.D.N.Y. 1960) ..................................................................... 18

Blumcraft of Pittsburgh v. Citizens & S. Nat. Bank of S. C.,407 F.2d 557 (4th Cir. 1969) .............................................................................. 18

In re Borden,90 F.3d 1570 (Fed. Cir. 1996) ..................................................................... passim

In Re Cohn,

23 C.C.P.A. 766 (1935) ................................................................................ 15, 55

Crocs, Inc. v. Int’l Trade Comm’n,598 F.3d 1294 (Fed. Cir. 2010) .......................................................................... 20

Durling v. Spectrum Furniture Co.,

101 F.3d 100 (Fed. Cir. 1996) ..................................................................... passim

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) ........................................................................ 5, 20

Harmon Paper Co. v. Prager ,287 F. 841 (2nd Cir. 1923) ................................................................................. 18

In Re Haruna,

249 F.3d 1327 (Fed. Cir. 2001) .................................................................... 15, 55

Int’l Seaway Trading Corp. v. Walgreens Corp.,

589 F.3d 1233 (Fed. Cir. 2009) ................................................................... passim

King Pharm., Inc. v. Eon Labs, Inc.,616 F.3d 1267 (Fed. Cir. 2010) .......................................................................... 21

Knauf Insulation, LLC et al. v. Johns Manville Corporation, et al.,

1:15-cv-00111-WTL-MJD (S.D. Ind.) ................................................................. 1


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In re Lamb,286 F.2d 610 (C.C.P.A. 1961) ............................................................................ 22

In re Nalbandian,

661 F.2d 1214 (C.C.P.A. 1981) .......................................................................... 22

Pac. Coast Marine Windshields Ltd. v. Malibu Boats, LLC ,739 F.3d 694 (Fed. Cir. 2014) .............................................................................. 5

Schering Corp. v. Geneva Pharm.,339 F.3d 1373 (Fed. Cir. 2003) .................................................................... 20, 21

SmithKline Beecham Corp. v. Apotex Corp.,

403 F.3d 1331 (Fed. Cir. 2005) .......................................................................... 21

Statutes

35 U.S.C. § 102 ................................................................................................. passim

35 U.S.C. § 103 ................................................................................................. passim

35 U.S.C. § 112 ...................................................................................................... 8, 9

Other Authorities

37 C.F.R. § 1.84 ..................................................................................................... 6, 7

37 C.F.R. § 42.8 ......................................................................................................... 1

37 C.F.R. §§ 42.15(A) AND 42.103 .......................................................................... 2

37 C.F.R. § 42.100(b) ................................................................................................ 4

37 C.F.R. § 42.104 ..................................................................................................... 2

77 Fed. Reg. 48756, 48764 ........................................................................................ 4

MPEP § 1503.02.V .................................................................................................... 7

MPEP § 2144.03 .................................................................................................... 8, 9

MPEP § 1504.01(c) .................................................................................................. 18

MPEP § 2112 ........................................................................................................... 20


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I. INTRODUCTION

Johns Manville Corporation and Johns Manville, LLC, (collectively,

“Petitioners”) request inter partes review of the claim of U.S. Design Patent No.

D631,670 (“the ’670 patent”) (Ex. 1001), purportedly owned by Knauf Insulation

LLC and Knauf Insulation SPRL (collectively, “Patent Owners”). For the reasons

set forth below, the sole claim of the ’670 patent is unpatentable because it is

anticipated and/or would have been obvious.

II.

MANDATORY NOTICES UNDER 37 C.F.R. § 42.8

Real Parties-in-Interest: Johns Manville Corporation and Johns Manville,

Inc. are the real parties-in-interest.

Related Matters: The Patent Owners have sued Petitioners, alleging

infringement of the ’670 patent. Knauf Insulation, LLC et al. v. Johns Manville

Corporation, et al., 1:15-cv-00111-WTL-MJD (S.D. Ind.).

Lead and Back-Up Counsel and Service Information:

Lead Counsel Back-Up Counsel

Kristopher L. Reed

Registration No. 58694Kilpatrick Townsend & Stockton LLP

1400 Wewatta Street, Suite 600

Denver, CO [email protected]

(303) 571-4000 (telephone)(303) 571-4321 (facsimile)

David E. Sipiora

( pro hac vice to be filed)Kilpatrick Townsend & Stockton LLP

1400 Wewatta Street, Suite 600

Denver, CO [email protected]

(303) 571-4000 (telephone)(303) 571-4321 (facsimile)


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The following email address may be used for service and all

communications to both Lead and Backup Counsel:

[email protected]

III. PAYMENT OF FEES UNDER 37 C.F.R. §§ 42.15(A) AND 42.103

The required fees are submitted herewith. If any additional fees are due at

any time during this proceeding, the Office is authorized to charge such fees to

Deposit Account No. 20-1430.

IV.

GROUNDS FOR STANDING

Petitioners certify that, under 37 C.F.R. § 42.104(a), the ’670 patent is

available for inter partes review, and Petitioners are not barred or estopped from

requesting inter partes review of the ’670 patent on the grounds identified in this

Petition.

V.

IDENTIFICATION OF CHALLENGE

Pursuant to 37 C.F.R. § 42.104(b), Petitioners request inter partes review

based on the following prior art that was not cited during prosecution:

Exhibit Description Publication Date

Ex. 1003Owens Corning PROPINK Smartperm™

Vapor Retarder BrochureAugust 2004

Ex. 1004Johns Manville SG Series Spin-Glas® &

Range Spin Glas BrochureSeptember 1997

Ex. 1005Johns Manville Microlite® AA Blankets

BrochureMarch 2002


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Ex. 1006 Knauf Crown Floor Slab Brochure February 2006

Ex. 1007Soundproofing Your Walls, The Family

Handyman MagazineJune 1998

Ex. 1008Knauf: Timber Frame External Walls: Non-

Residential BrochureJuly 2005

Ex. 1009 Owens Corning – 2006 At A Glance Report October 2006

Ex. 1010 Owens Corning 2007 Progress Report June 2008

Petitioner requests inter partes review based on the following grounds:

Ground Description

1Anticipation under § 102(b) by Owens Corning PROPINK

Smartperm™ Vapor Retarder (Ex. 1003)

2

Anticipation and/or obviousness under §§ 102(b) and 103 by Johns

Manville SG Series Spin-Glas® & Range Spin Glas Brochure (Ex.1004) in combination with any one of three other references

3

Anticipation and/or obviousness under §§ 102(b) and 103 by

Soundproofing Your Walls, The Family Handyman Magazine (Ex.1007) in combination with any one of three other references

4Anticipation and/or obviousness under §§ 102(b) and 103 by Knauf:Timber Frame External Walls: Non-Residential Brochure (Ex. 1008)

in combination with any one of three other references

5

Anticipation and/or obviousness under §§ 102(b) and 103 by Owens

Corning – 2006 At A Glance Report (Ex. 1009) in combination withany one of three other references

6Anticipation and/or obviousness under §§ 102(a) and 103 by OwensCorning 2007 Progress Report (Ex. 1010) in combination with any one

of three other references

7 Anticipation and/or obviousness under §§ 102(b) and 103 by Johns

Manville SG Series Spin-Glas® & Range Spin Glas Brochure (Ex.


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1004) in view of Johns Manville Microlite® AA Blankets Brochure(Ex. 1005)

8

Anticipation and/or obviousness under §§ 102(b) and 103 by

Soundproofing Your Walls, The Family Handyman Magazine (Ex.

1007) in view of Johns Manville Microlite® AA Blankets Brochure(Ex. 1005)

9

Anticipation and/or obviousness under §§ 102(b) and 103 by Knauf:

Timber Frame External Walls: Non-Residential Brochure (Ex. 1008)in view of Johns Manville Microlite® AA Blankets Brochure (Ex.

1005)

Section VII explains how the ’670 patent’s sole claim should be construed,

and Section IX explains how each claim element is found in, or rendered obvious

by, the prior art.

VI.

OVERVIEW OF U.S. PATENT NO. D631,670

The ’670 patent, entitled “Insulation Material,” was filed on December 31,

2008, as Application No. 29/311,136 and issued on February 1, 2011. The ’670

patent consists of a single claim for the ornamental design of insulation material.

See Ex. 1001, Claim. One color photocopy figure constitutes the entire claim and

depicts ordinary insulation material. See id.

VII. CLAIM CONSTRUCTION

A. Legal Standard for Claim Construction of a Design Patent

A claim subject to inter partes review receives the “broadest reasonable

construction in light of the specification of the patent in which it appears.” 37

C.F.R. § 42.100(b); see also Office Patent Trial Practice Guide, 77 Fed. Reg.


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48756, 48764 (Aug. 14, 2012). As a design patent, the scope of the ’670 patent is

defined by the claim (i.e., the drawing, which in this case is a color photocopy), in

conjunction with its description. See, e.g., Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665, 680 (Fed. Cir. 2008) (citing 37 C.F.R. § 1.152); see also Pac. Coast

Marine Windshields Ltd. v. Malibu Boats, LLC , 739 F.3d 694, 702 (Fed. Cir. 2014)

(citations omitted). The Federal Circuit directs that, ordinarily, a design patent will

not be construed with a verbal description but that it can be “helpful to point out …

various features of the claimed design as they relate to the … prior art.” Egyptian

Goddess, 543 F.3d at 680. In construction, “when the claimed design is close to

the prior art designs, small differences between the accused design and the claimed

design are likely to be important to the eye of the hypothetical ordinary observer.”

Id . at 676.

Because claim terms may be construed according to different standards in

litigation versus PTO proceedings, Petitioners reserve the right to present different

constructions depending on the applicable standard and proceeding, should it be

necessary.

1.

Claim Construction of the ’670 Patent

It should be clear that the claim construction discussion herein is intended to

aid in this proceeding and should not be construed as waiving any arguments

concerning lack of ornamentality that may be raised in litigation. Petitioners


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believe that the claimed design is invalid for a number of reasons that cannot be

raised in the context of an inter partes review proceeding under 35 U.S.C. §§ 102

or 103. All such defenses of invalidity are expressly reserved.

The ’670 patent claims “the ornamental design for insulation material, as

shown and described.” (Ex. 1001 at 1.) The ’670 patent contains a single figure—

a color copy of a photograph depicting ordinary light-density fiberglass insulation.

2. The Prosecution History of the ’670 Patent

Original Application

The ’670 patent, titled “Insulation Material,” was filed on December 31,

2008, as Application No. 29/311,136 (the “’136 Application”) with one claim and

a specification detailing that “Fig. 1 is a front perspective view of INSULATION

MATERIAL showing a first embodiment of my new design. Only elements

present in the view shown are claimed. The boundaries of the view shown are

arbitrary, and the design continues in similar fashion beyond the field of view

shown.” ’136 Application Prosecution History, Design Patent Application

Transmittal (Dec. 31, 2008) (Ex. 1002 at 79). The application was filed with a

Petition To Accept Color Photograph, explaining that “[i]t is believed that a color

photograph is the sole practical medium by which to disclose the subject matter of

the application.” ’136 Application Prosecution History, Petition To Accept Color

Photograph Under 37 C.F.R. § 1.84(b)(2) (Dec. 31, 2008) (Ex. 1002 at 83).


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Non-Final Office Action

On August 6, 2010, the Examiner issued a Non-Final Office Action. In the

action, the Examiner objected to the petition to accept a color photograph, to the

drawing, and to the specification, and ultimately rejected the sole claim. See ’136

Application Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 28-

34). The Examiner objected to the petition to accept a color photograph because

the petition did not meet the requirements of 37 C.F.R. 1.84(a)(2), and the

Examiner stated that “[a] grantable petition under 37 CFR 1.84(a)(2) must explain

that color drawings or color photographs are necessary because color is an integral

part of the claimed design. MPEP 1503.02.V.” ( Id . at 29.) The Examiner

objected to the Applicant’s use of the title “Fig. 1” in the drawing because

“[w]here only a single view is used in an application to illustrate the claimed

design, it must not be numbered and the abbreviation ‘FIG.’ must not appear. 37

CFR 1.84(u)(1).” ( Id .) The Examiner objected to the specification, requiring that

“Fig. 1” be replaced with “[t]he sole figure” and the words “of a first embodiment”

be deleted from the figure description. ( Id . at 30.) The Examiner also objected to

the “description of the sole view as a ‘front perspective view’” because “the view

appears to be a top plan view. The view shows none of the discernible three-

dimensional qualities of a perspective view.” ( Id .) The Examiner also requested

deletion of the sentence stating that “[o]nly elements in the view shown are


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claimed” under the reasoning that “in US design patent practice the design claim is

limited to what is shown and described in the drawings and specification.” Id .

The Examiner further rejected the application’s sole claim based on 35

U.S.C. §§ 102, 103, and 112. (See id . at 30-33.) Under 35 U.S.C. § 102, the

Examiner held that the claim was “clearly anticipated by the Foltz Buildings.” ( Id .

at 30-31.) The Foltz Buildings reference (“Foltz”) contains photographs of yellow

fiberglass insulation installed in walls of a building. (See id. at 31.) The file

history contains a black and white reproduction of one image and a link to the

Foltz website where multiple images can be seen. (See id .) In the § 102 analysis,

the Examiner took “official notice that the claim appears to be for ordinary

fiberglass batt-type insulation material and has no aesthetic effect that is unique or

different from the common appearance of fiberglass batt insulation material.

MPEP 2144.03.” ( Id . at 30.) The Examiner further held that “the shape and

appearance of Foltz Buildings insulation material is identical in all material

respects to that of the claimed design.” ( Id . at 31.)

Under 35 U.S.C. § 103, the Examiner characterized the Foltz insulation as

“insulation material that includes long fibers that have an overall appearance

remarkably similar to the claimed design.” ( Id . at 32.) The Examiner went on to

outline the design characteristics that “are basically the same” between Foltz and

the claimed invention: “[t]he fibers of the insulation material have been pressed


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together to form a cloud like appearance;” and “[t]he reference has design

characteristics, which are basically the same as the claimed design.” ( Id . at 33.)

The Examiner also noted two differences between Foltz and the claimed

invention: (i) the close-up nature of the photograph of the claimed invention versus

that of Foltz, which was taken at a distance further away from the insulation; and

(ii) the difference in swirl patterns between the designs. (See id .) The Examiner

further supported the §103 rejection with the explanation that “[t]he difference in

scale plays no role in mitigating the effectiveness of the cited prior art, as scale of a

design cannot form the basis for patentability” and that “[v]ariations in swirl

pattern of the material are considered normal in batt insulation materials, as

evidenced by reviewing the prior art listed by the examiner.” ( Id .)

Under 35 U.S.C. § 112, the Examiner rejected the claim as indefinite

because of the applicant’s phrase in the specification “the design continues in

similar fashion beyond the field of view shown.” ( Id .) The Examiner highlighted

that “[s]uch characterization of the appearance of the overall design is improper, as

it is not in such full, clear, concise, and exact terms as to enable any person skilled

in the art to which it pertains…to make and use the same without resort to

conjecture.” ( Id .) The Examiner further held that the claim was not enabled

because “[t]he scope of protection sought is not accurately or adequately defined.”

( Id .)


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In summary, the application was objected to and rejected on multiple

grounds, and the Examiner identified at least the following elements in the claimed

design that were present in the prior art and that rendered the claimed design

anticipated and/or obvious: (1) insulation material; (2) with a cloud-like

appearance; and (3) variations in the swirl pattern.

Examiner Interview

On September 14, 2010, counsel for the Applicant conducted an Examiner

Interview at the USPTO. See ’136 Application Prosecution History, Interview

Summary (Sept. 14, 2010) (Ex. 1002 at 25-26). The Examiner’s summary of the

interview indicates that counsel for the Applicant and the Examiner agreed that a

Replacement Drawing would be filed “of much higher quality than the original” so

that “with a greater resolution the darker and lighter areas would have more

contrast and would permit better understanding of the claimed design’s drastic

differences in contrast.” ( Id . at 26.) There is no record that counsel for the

Applicant ever argued that the claimed design was based in any way on specific

colors, but instead urged that a color drawing was needed solely to allow

appreciation of the “differences in contrast” in the drawing, that is, the lightness

and darkness present in the image. (See id.)

The Examiner also stated “it was noted that there appeared to be a very

slight indication in some places on the sole figure that there may be a ‘waffle’


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pattern in evidence of production processes.” ( Id .) Agreement between the

Examiner and Applicant’s counsel was also noted regarding changes to the

specification, substitutions, and the deletion of some wording. ( Id .)

Response to Non-Final Office Action

On September 24, 2010, the Applicant submitted a response to the

Examiner’s Office Action. See ’136 Application Prosecution History, Resp. to

Office Action (Sept. 24, 2010) (Ex. 1002 at 15-21). In the response, the Applicant

amended the specification partially in accordance with the Examiner’s objection,

amending Fig. 1 to refer to “[t]he sole figure” and removing reference to “a first

embodiment of.” ( Id . at 19.) The Applicant failed to correct the language objected

to by the Examiner as inaccurately describing the figure as “a front perspective

view.” (See id .) The Applicant further amended the specification to remove the

language stating that “the design continues in similar fashion beyond the field of

view shown.” ( Id at 21.)

In response to the rejections of the claim under 35 U.S.C. §§ 102 and 103,

the Applicant did not address any of the three elements of the claimed design

identified by the Examiner in the Office Action, and in particular did not challenge

the Examiner’s findings that the prior art showed insulation material that

commonly had a cloud-like appearance and variations in the swirl pattern. Instead,

the Applicant focused on an element not mentioned in the prior office action or


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interview, arguing that the cited reference, Foltz, “fails to disclose or suggest an

insulation material with a variation of distinct hues throughout the insulation

material, as claimed in the design of the present invention.” ( Id at 19.) The

Applicant argued that Foltz instead “discloses an insulation material with the same

hue – yellow – throughout. To the extent there are variations in the color of Foltz,

the hue remains constant and the variations are merely the changes in the lightness

of yellow.” ( Id .) The Applicant contrasted this “same hue” in the prior art with

the claimed invention which “includes a variation of distinct hues.” ( Id . at 20.)

Although Foltz is a yellow-color insulation and Applicant’s insulation “design”

clearly is not, the Applicant did not attempt to distinguish Foltz based on its yellow

color, but instead focused exclusively on the number of “distinct hues” present.

The Applicant also did not provide any definition of the alleged “variation of

distinct hues.” Instead, the Applicant merely provided an example of what he

considered to represent “a variation of distinct hues,” specifically, a combination

“such as brown and cream.” ( Id .)

The Applicant also attempted to distinguish Foltz on the basis that it “fails to

disclose or suggest an insulation material with a waffle pattern on the surface.”

( Id .) The Applicant did not provide a definition of “waffle pattern,” and this

mention of a “waffle pattern” appears to stem from the Examiner’s brief

observation in the Interview Summary of “a very slight indication in some places


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on the sole figure that there may be a ‘waffle’ pattern in evidence of production

processes” in the drawing. ’136 Application Prosecution History, Interview

Summary (Sept. 14, 2010) (Ex. 1002 at 26).

In summary, in his Response to the Office Action, the Applicant expressly

claimed to add two distinct elements to his claim: a “waffle pattern” and a

“variation of distinct hues.”

Petition To Accept Color Photograph

In conjunction with filing the Response to the Office Action, on September

24, 2010, the Applicant filed a revised Petition For Color Photograph. See ’136

Application Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex. 1002

at 13). As mandated by the Examiner, the revised petition states that “[a] color

photograph is necessary because color is an integral part of the claimed invention.”

( Id .) The Applicant provided no further explanation as to how color is related to

the claimed invention.

Notice of Allowability

On December 10, 2010, the Examiner issued a Notice of Allowance and

accepted the claim and drawings without a statement of reasons. See ’136

Application Prosecution History, Notice of Allowance and Fee(s) Due (Dec. 10,

2010) (Ex. 1002 at 7-8).


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Final Summary of the ’670 Patent Elements Disclosed in the File History

As described above, the file history of the ’670 patent details at most five

potential elements associated with the claimed design: (1) insulation material; (2)

with a cloud-like appearance; (3) with variations in a swirl pattern; (4) with a

waffle pattern; and (5) with a variation of distinct hues. See generally ’136

Application Prosecution History (Ex. 1002).

Notably, no specific color per se is an element of the ’670 patent’s claim,

just a “variation of distinct hues.” In particular, “brown and cream” were never

claimed by the Applicant during prosecution, but instead merely cited as examples

of the “variation of distinct hues” purportedly shown in the photocopy. The

Applicant did later recite that “color is an integral part of the claimed invention”

when revising his “Petition To Accept a Color Photograph,” but only as a

perfunctory repetition of the Examiner’s citation to the MPEP standard, requiring

that the petition “must explain that color drawings or color photographs are

necessary because color is an integral part of the claimed design.” ’136

Application Prosecution History, Office Action (Aug. 6, 2010) (Ex. 1002 at 29).

In parroting the Examiner’s words, the Applicant did not identify any particular

color or colors that are “integral,” nor did the Applicant assert that color is


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“integral to the claimed invention” beyond the “variation of distinct hues”

described previously.1

3. Analysis of the Potential Claim Elements

(a) Insulation material

The ’670 patent’s title, sole claim, and file history all explain and depict that

the claimed design is for “insulation material.” (See Ex. 1001; see generally Ex.

1002.) During prosecution, the Examiner further characterized the insulation

material as containing long fibers. See ’136 Application Prosecution History,

Office Action (Aug. 6, 2010) (Ex. 1002 at 32). Therefore, “insulation material”

properly is a claim element.

1

The Federal Circuit has held that “color may play a role in the patentability of a

claimed design,” but the patentability of a design may not rest on color alone. In

Re Haruna, 249 F.3d 1327, 1334, 1336 (Fed. Cir. 2001) (citations omitted). To be

an essential feature of a design, color “must be so defined or connected with some

symbol or design.” In Re Cohn, 23 C.C.P.A. 766, 768 (1935). In this case, the

purported colors of the insulation depicted in Applicant’s drawing (e.g., “such as

brown and cream”) have never been defined or connected with any symbol or

design.


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(b) Cloud-like appearance

The ’670 patent claims insulation material with a cloud-like appearance.

During prosecution, the Examiner characterized the fibers of the insulation

material as having “been pressed together to form a cloud like appearance.” (See

id . at 33.) This characterization was not challenged by the Applicant. Therefore,

insulation having a “cloud like appearance” properly is a claim element.

(c)

Variations in a swirl pattern

The ’670 patent claims insulation material that contains variations in a swirl

pattern, a well-known characteristic of insulation material. (See id .) During

prosecution, the Examiner characterized the design as having a surface “swirl

pattern” and further explained that “[v]ariations in swirl pattern of the material are

considered normal in batt insulation materials, as evidenced by reviewing the prior

art listed by the examiner.” (See id.) Therefore, “variations in a swirl pattern”

properly is a claim element.

(d)

Waffle pattern

For the reasons stated below, and explained in greater detail in the

Declaration of Martin J. Bide (“Bide Decl.”) in conjunction with the Declaration of

Mark A. Granger (“Granger Decl.”), a “waffle pattern” is not properly considered

part of the claimed ornamental design. See Bide Decl., ¶¶ 21, 23-24 (Ex. 1012);

Granger Decl., ¶¶ 6-10 (Ex. 1014). The ’670 patent prosecution history first

mentions a waffle pattern in the Examiner’s Interview when the Examiner (not the


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Applicant) observed that “there appeared to be a very slight indication in some

places on the sole figure that there may be a ‘waffle’ pattern in evidence of

production processes.” ’136 Application Prosecution History, Interview Summary

(Sept. 14, 2010) (Ex. 1002 at 26). As explained by Professor Bide, the claim of a

“waffle pattern” is likely an allusion to what appear to be bumpy vertical lines in

the ’670 patent drawing depicting a type of geometric pattern imprinted on the

surface of the insulation material. See Bide Decl., at ¶ 23 (Ex. 1012). Mr.

Granger’s testimony confirms this interpretation of the drawing. See Granger

Decl., ¶¶ 6-8 (Ex. 1014); see also Bide Decl., ¶¶ 21, 23-24 (Ex. 1012). In

particular, such a faint waffle pattern is common on the surface of light-density

fiberglass insulation and, as the Examiner surmised, is merely evidence of

production processes. See Granger Decl. at ¶¶ 6-10 (Ex. 1014) (explaining

fiberglass production process in detail). Specifically, fiberglass insulation that is

sprayed with a binder typically comes to rest on a conveyor belt of a chain-like or

meshed nature (allowing air to contact the fiberglass from underneath) and is

passed through parallel conveyor belts for the drying/baking process. Id . at ¶¶ 5-6.

During this drying/baking process, the pattern of the chain or mesh is imprinted on

both sides of the insulation material. Id . at ¶¶ 6-8. Hence, as inferred by the

Examiner and as common sense would suggest, this “waffle pattern” is not an

ornamental feature but simply evidence of the production process.


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The law is well established that such an artifact of a production process

cannot constitute an ornamental design. See MPEP § 1504.01(c) (a valid design

patent “must be the result of a conscious act by the inventor,” representing “an

exercise of the inventive faculty”); Blumcraft of Pittsburgh v. Citizens & S. Nat.

Bank of S. C., 407 F.2d 557, 560 (4th Cir. 1969) (“The statutory grant of a design

patent is for appearance and not for a method of manufacture or assemblage,

function, or utility.”) (citations omitted); Blisscraft of Hollywood v. United Plastic

Co., 189 F. Supp. 333, 336 (S.D.N.Y. 1960) (“It must be motivated by ornamental

or decorative inventiveness because a design dictated solely by mechanical or

functional requirements is not patentable.”) (citations omitted); also Harmon

Paper Co. v. Prager , 287 F. 841, 843 (2nd Cir. 1923) (invalidating a design patent

on wallpaper created by a certain method of manufacturing the paper, and stating

that “what plaintiff really seeks is to cover with this design patent all paper

resulting from the method of manufacturing above described. This cannot be

done.”). As shown in the Granger Declaration and observed by the Examiner, the

claimed “waffle pattern” in this design is a well-known byproduct of the

commercial process used to manufacture light-density fiberglass insulation. As

such, a “waffle pattern” should not be considered an element of the sole claim of

the ’670 design patent.


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(e) Variation of distinct hues

The ’670 patent claims insulation material that contains a “variation of

distinct hues,” exemplified in the sole figure’s differences in contrast. During the

Examiner interview, the Examiner commented that a Replacement Drawing was to

be filed which “would have more contrast and would permit better understanding

of the claimed design’s drastic differences in contrast.” See ’136 Application

Prosecution History, Interview Summary (Sept. 14, 2010) (Ex. 1002 at 26).

Subsequently, in Applicant’s Remarks Made in Amendment, the Applicant stated

that “the claimed invention includes a variation of distinct hues,” and distinguished

the claimed invention from the prior art by stating that the cited prior art reference

“discloses an insulation material with the same hue.” See ’136 Application

Prosecution History, Resp. to Office Action (Sept. 24, 2010) (Ex. 1002 at 19-20).

Notably, the Applicant did not distinguish the prior art on the basis of any specific

color, but solely on the absence of a purported “variation of distinct hues.”

Further, as noted previously, Applicant provided no definition or guidance on how

to interpret the meaning of the phrase “variation of distinct hues.” Therefore, its

ordinary meaning applies.

VIII.

THE APPLICABLE LEGAL STANDARDS

A.

Anticipation

The “ordinary observer test” is used to determine anticipation of a design

patent under 35 U.S.C. § 102. See Int’l Seaway Trading Corp. v. Walgreens Corp.,


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589 F.3d 1233, 1240 (Fed. Cir. 2009) (applying Egyptian Goddess to the test for

anticipation). In the “ordinary observer test,” the design as claimed is compared

with a prior art reference and the Court determines whether an ordinary observer,

familiar with the prior art, would believe that, taken as a whole, the prior art

reference and the claimed design are the same. Egyptian Goddess, 534 F.3d 665,

675, 681 (Fed. Cir. 2008); Sensio, Inc. v. Select Brands, Inc., IPR2013-00500,

Paper 8 at 8 (PTAB Feb. 11, 2014) (confirming use of the ordinary observer test

for anticipation of a design patent). This comparison thus takes into account only

significant differences between two designs; “minor differences cannot prevent a

finding of anticipation.” Int’l Seaway, 589 F.3d at 1243; Sensio, IPR2013-00500,

Paper 8 at 14. Comparison of the overall visual effect of the designs looks to

whether, to an ordinary observer, the claimed design and prior art are substantially

the same. See Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir.

2010) (citations omitted).

B. Inherency

Under the doctrine of inherent anticipation, a claim limitation that is not

explicitly disclosed by a prior art reference may be inherently anticipated if the

limitation “is necessarily present, or inherent, in the single anticipating reference.”

Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003). Inherent

anticipation applies even if the inherent feature would not have been recognized by


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one skilled in the art at the time of the invention. Id. at 1377-78. The Federal

Circuit has recognized “[t]he patent law principle ‘that which would literally

infringe if later in time anticipates if earlier.’” Id. at 1379 (quoting Bristol-Myers

Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378 (Fed. Cir. 2001)). A

limitation claiming the “natural result” flowing from the prior art’s limitations will

be considered anticipated. King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,

1275-76 (Fed. Cir. 2010); SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d

1331, 1343-44 (Fed. Cir. 2005).

C. Obviousness

The test for determining obviousness of a design patent under 35 U.S.C. §

103 is “whether the claimed design would have been obvious to a designer of

ordinary skill who designs articles of the type involved.” Durling v. Spectrum

Furniture Co., 101 F.3d 100, 103 (Fed. Cir. 1996) (citation omitted); see also

Apple, Inc. v. Samsung Elecs. Co., 678 F.3d 1314, 1329 (Fed. Cir. 2012). This

inquiry “focuses on the visual impression of the claimed design as a whole and not

on selected individual features.” In re Borden, 90 F.3d 1570, 1574 (Fed. Cir.

1996) (citations omitted).

The first step in an obviousness inquiry is to identify a single reference,

which already exists, which has “basically the same” design characteristics as the

claimed design. Durling, 101 F.3d at 103 (citation omitted). Second, “other


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references may be used to modify [the primary reference] to create a design that

has the same overall visual appearance as the claimed design.” Id. (citation

omitted). The secondary references may be used to modify the primary reference

if the two are “so related that the appearance of certain ornamental features in one

would suggest the application of those features to the other.” In re Borden, 90

F.3d at 1575 (citations omitted).

The combination of the primary and secondary references creates a

hypothetical reference to which the claimed design is compared, using the ordinary

observer test from § 102. Int’l Seaway, 589 F.3d at 1240. As indicated above, the

touchstone to the ordinary observer test is the similarity of overall appearance;

small differences are inconsequential. See e.g. Int’l Seaway, 589 F.3d at 1243

(citation omitted); In re Lamb, 286 F.2d 610, 611 (C.C.P.A. 1961) (“[T]he mere

fact that there are differences over the prior art structures is not alone sufficient to

justify a holding that the design is patentable.”).

D. One of Ordinary Skill

In this case, one of ordinary skill would be someone with a background and

training in color and color management. See Bide Decl., at ¶ 13 (Ex. 1012); see

also In re Nalbandian, 661 F.2d 1214, 1215-16 (C.C.P.A. 1981) (“In design cases

we will consider the fictitious person identified in [section] 103 as ‘one of ordinary

skill in the art’ to be the designer of ordinary capability who designs articles of the


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type presented in the application.”). This person would be capable of

understanding color science, the communication of color, and the relevant

language of color. See Bide Decl., at ¶ 13 (Ex. 1012). This person would routinely

examine and specify color as part of their job responsibilities, and could be a

professional in one of several different industries: a graphic designer, a person

involved in the measurement of color in textiles, a color consultant, a color

measurement instrument professional, or a person involved in paint pigmentation.

Id. One of ordinary skill could have either an undergraduate degree in color

science or the equivalent training as part of his or her professional work at a color

lab or color instrument manufacturer. Id.

IX. DETAILED EXPLANATION OF GROUNDS FOR

UNPATENTABILITY UNDER THE BROADEST REASONABLE

CONSTRUCTION

The ’670 patent is anticipated under 35 U.S.C. § 102 and obvious under 35

U.S.C. § 103 on multiple grounds. The references and grounds cited are not

cumulative to each other. One of ordinary skill in the art would recognize these

references to be important and relevant in deciding whether the claim is patentable,

and this Petition demonstrates a reasonable likelihood that Petitioner will prevail

on all grounds. The arguments below follow the analysis presented in, and are

supported by, the accompanying declaration of Professor Martin J. Bide, who has

taught and worked in the field of color for more than 30 years. With respect to the


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fourth potential claim element number (the so-called “waffle pattern”), analysis

and support is found in the accompanying declaration of Mark A. Granger who has

worked in the area of insulation manufacturing for nearly 40 years.

A. Ground 1: The Claim Is Anticipated Under § 102(b) by Owens

Corning PROPINK Smartperm™ Vapor Retarder (Ex. 1003)

The Owens Corning PROPINK Smartperm™ Vapor Retarder (“OC

PROPINK”) (Ex. 1003) discloses the same overall visual appearance as the

claimed design of the ’670 patent and, as a result, the claimed design is anticipated

by the reference under 35 U.S.C. §102(b). OC PROPINK is a printed product

advertisement, published in August 2004, several years prior to the filing date of

the ’670 patent. Id . at 1; see also Declaration of Michael Fay (“Fay Decl.”) at ¶ 2

(Ex. 1017). Therefore, OC PROPINK is a prior art printed publication under §

102(b). Below are images of the ’670 patent’s claim and OC PROPINK:


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Comparing the two images, it is clear that they share common visual

features, such that they are substantially similar.


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1. Elements 1-3

Both designs are (1) insulation material with (2) a cloud like appearance, and

(3) variations in a swirl pattern.2 See Bide Decl., at ¶ 39 (Ex. 1012).

2. Alleged Element 4

(a) A Waffle Pattern Is Inherent in Light-Density

Fiberglass Insulation

As discussed previously in Section VII, a “waffle pattern” should not be

considered to be an element of the claim. Nevertheless, even if this comment from

the file wrapper could be considered a claim element, it is inherent in each of the

prior art insulation references relied upon in this Petition. This conclusion is

supported by the Declaration of Mark A. Granger, an engineer with nearly four

decades of experience in the manufacture of fiberglass insulation for Owens

Corning and Johns Manville, two global fiberglass industry leaders.

As a result of his experience, Mr. Granger has personal knowledge of the

methods and equipment used in the manufacture of fiberglass insulation. Granger

Decl., at ¶¶ 1-3 (Ex. 1014). There are only a few companies in the U.S. that

manufacture fiberglass insulation and he is generally familiar with the processes

that are used by each to make such products. Id. at ¶¶ 3-4. These manufacturing

2 As characterized by the Examiner during prosecution, variations in a swirl pattern

are considered normal in batt insulation materials. See ’136 Application

Prosecution History, Office Action at 6 (Aug. 6, 2010) (Ex. 1002 at 33).


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techniques have been in use for more than thirty years. Id at ¶ 4. The processes he

describes in his declaration have been widely used by JM and others since at least

the year 2005 when he started work at JM. Id. The same or similar methods and

equipment were in continuous use during his entire tenure at Owens Corning from

1976 - 2005. Id.

As Mr. Granger explains, in making fiberglass insulation, very small

diameter glass fibers are generated by melting sand-like materials using specialized

processes and machines. Id. at ¶ 5. When first made, the glass fibers are loose and

without structure. Id. In order to provide the product with sufficient form and

structure to be able to be installed—for example, vertically in walls—the insulation

must be adhered together using chemical binders (adhesives) that are sprayed on

the formed glass fibers, and thereafter curing the binder in a heated oven. Id.

While companies may use different binders, the process for curing binders on

newly formed glass fibers is common and involves transporting the glass fibers

between upper and lower conveyor belts into an oven or kiln where the binder

solution and the glass fibers are heated to a standard curing temperature to adhere

the fibers together to become fiberglass products. Id.at ¶ 6.

As further explained by Mr. Granger, conveyor belts that are used in the

process of fabricating fiberglass insulation share the common characteristic that

they imprint the heated glass fibers that are lying on the conveyor belt with the


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surface pattern of the belt. Id. at ¶ 8. The surface of a conveyor belt in this context

is typically a metal mesh that allows hot gases to be forced through the fibers as

the binder is cured. Id. These metal mesh “chains” or metal plates with patterns

and perforations—called “flights”— quite predictably and normally leave a waffle-

like pattern on the surface of the insulation reflecting the contact between the

conveyor belt surface and the top and bottom surfaces of the insulation bundle

during the curing stage of the production process. Id. In other words, the

conveyor belt pattern literally is baked onto the surface of the insulation as a result

of the heating process that is used to cure the binder, and thus subsequently is

visible to an observer of the cured fiberglass insulation product. Id.

In light of the Mr. Granger’s testimony, it is clear that the appearance of a

waffle or other imprinted pattern on the top or bottom surface of light-density

fiberglass insulation is necessarily part of the production process and is common to

light-density fiberglass insulation of the type depicted in the drawing of the ’670

patent. Because this type of pattern inevitably is present, this aspect of the claimed

design—even if it is a considered claim element (which it should not be)—is

inherent in the insulation disclosed in each of the prior art references cited by

Petitioners.


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(b) A Waffle Pattern Is Disclosed in OC PROPINK

Regarding any alleged waffle pattern, even if this is considered an element

of the claimed design, it is present in this reference and can be seen most

prominently in the OC PROPINK image above the letters “Perm.” See Bide Decl.,

at ¶ 39 (Ex. 1012).

3. Element 5

(a)

The Science Necessary To Evaluate the Claim

Element a “Variation of Distinct Hues”

The Applicant used the phrase “a variation of distinct hues,” but never

defined or explained any part of the phrase. In the science of color, however,

“hue” refers to an attribute of color. To scientifically assess “a variation of distinct

hues,” Petitioners retained Dr. Martin Bide of the University of Rhode Island who

addressed the issue by performing spectrophotometric analysis.

As described in his accompanying declaration, Dr. Bide used well-

established techniques to quantify hue as a numeric value. See Bide Decl., at ¶¶

31-33 (Ex. 1012). In particular, Dr. Bide used a spectrophotometer to shine light

on a small area within the subject (in this case, a copy of an image). Id . at ¶ 33.

The spectrophotometer collected the light reflected from the colored image and

analyzed its intensity compared to that of the original light at (typically) 10 nm

intervals throughout the visible spectrum. Id. Using an internationally recognized

standard called “CIE,” Dr. Bide then performed mathematical calculations on the


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reflectance data. Id. The result is numerical expressions of lightness, chroma, and

hue (L,c,h) values of the color seen by the standard observer under the given light

source. Id. For hue, this is the “hue angle” measured in degrees. Id. This exercise

effectively translates the measured wavelength reflectance values into values that

actually quantify what a person (who sees color like the standard observer does)

looking at the image would see under that light source. Id. The foregoing

technique was employed by Dr. Bide to evaluate the patented design and used in an

identical fashion to evaluate each of the asserted prior art references to determine

whether each possesses a variation in distinct hues as great or greater than the

patented design. See id. at ¶¶ 38-50.

(b) OC PROPINK Discloses a “Variation of Distinct

Hues”

With respect to claim element 5 (“variation of distinct hues”), using

spectrophotometric analysis on six distinct regions of this prior art image, it was

determined that the OC PROPINK image contains a variation of distinct hues. See

Bide Decl., ¶ 40 (Ex. 1012). Specifically, the ’670 claimed design contains a

variation of hue angles of 36.3 degrees, while the OC PROPINK image contains a

variation of hue angles of 55.7 degrees. Id . at ¶¶ 38-40. Therefore, the ’670

patent’s claim element of a “variation of distinct hues” is present in the OC

PROPINK image.


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4. OC PROPINK Conclusion

Based on the above similarities, an ordinary observer familiar with the

relevant prior art (see, e.g., Exs. 1003-1010) would believe that, taken as a whole,

OC PROPINK and the ’670 patent are substantially the same design. See Int’l

Seaway, 589 F.3d at 1239 (citation omitted) (“[T]wo designs are substantially the

same, if the resemblance is such as to deceive such an observer, inducing him to

purchase one supposing it to be the other, the first one patented is infringed by the

other.”); Sensio at 11 (finding that the claimed invention “appears sufficiently

similar to the patented design to persuade us that Sensio has demonstrated there is

a reasonable likelihood that, in the eye of an ordinary observer familiar with the

prior art, the designs would appear substantially the same”). Hence, the Board

should find that the sole claim of the ’670 patent is anticipated by the OC

PROPINK reference under § 102(b).

B. Ground 2: The Claim Is Anticipated Under § 102(b), or Would

Have Been Rendered Obvious Under § 103, by the Johns Manville

SG Series Spin-Glas® & Range Spin Glas Brochure (Ex. 1004) in

Light of Any of Three Other References

The Johns Manville Spin-Glas® & Range Spin Glas Brochure (“JM Spin-

Glas”) (Ex. 1004) discloses the same overall visual appearance as the claimed

design of the ’670 patent and, as a result, the claimed design is anticipated by the

reference under 35 U.S.C. § 102(b). Alternatively, as described below, the


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reference plus one of three other references renders the ’670 patent design obvious

under 35 U.S.C. § 103.

JM Spin-Glas is a printed technical data sheet, published in September 1997,

many years prior to the filing date of the ’670 patent. Id . at 2; see also Declaration

of Anne N. Barker., at ¶ 2 (Ex. 1016). Therefore, JM Spin-Glas is a prior-art

printed publication under § 102(b). Below are side-by-side images of the ’670

patent’s claim and an image from JM Spin-Glas:

From observation of these images, it is apparent that they share many

common visual features, such that they are substantially similar.


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1. Elements 1-3

Both designs are (1) insulation material with (2) a cloud-like appearance,

and (3) variations in a swirl pattern. See Bide Decl., at ¶ 41 (Ex. 1012).

2.

Alleged Element 4

Regarding any alleged (4) waffle pattern, even if this is considered an

element of the claimed design (which it is not, as explained above), it would have

been inherent in insulation material, as it is a standard characteristic of the

manufacturing process of fiberglass insulation. See Section VII, supra; Granger

Decl., at ¶¶ 6-10 (Ex. 1014).

Alternatively, it would have been obvious to include in this primary

reference a depiction of a waffle pattern in light of any of three secondary

references: (i) the OC PROPINK reference (Ex. 1003), (ii) the Johns Manville

Microlite® AA Blankets Brochure reference (“JM Microlite Blankets”) (Ex.

1005), or (iii) the Knauf Crown Floor Slab reference (“Knauf Crown Floor Slab”)

(Ex. 1006).

As discussed previously, OC PROPINK, is prior art under § 102(b). See

Section IX.A, supra.

JM Microlite Blankets is a printed technical data sheet, published in March

2002, many years prior to the filing date of the ’670 patent. Id . at 2; see also


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Barker Decl. at ¶ 3 (Ex. 1016). Therefore, JM Microlite Blankets is a prior art

printed publication under § 102(b).

As shown below, JM Microlite Blankets depicts yellow, brown, and green

pieces of insulation, each comprising a cloud-like appearance and variations of a

swirl pattern. The JM Microlite Blankets also depicts insulation with a “waffle

pattern.”


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Knauf Crown Floor Slab is a printed technical data sheet, published in 2006,

more than one year prior to the filing date of the ’670 patent. See Barker Decl., at

¶ 4 (Ex. 1016). Therefore, Knauf Crown Floor Slab is a prior art printed

publication under § 102(b).

As shown below, Knauf Crown Floor Slab depicts yellow pieces of

insulation, each comprising a cloud-like appearance and variations of a swirl

pattern. The Knauf Crown Floor Slab also depicts insulation with a “waffle

pattern.”

Using the framework for obviousness described above in Section VIII,

supra, the primary JM Spin-Glas reference has “basically the same” design


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characteristics as the claimed ’670 patent design. Durling, 101 F.3d at 103

(citation omitted). Further, the OC PROPINK reference (Ex. 1003) (discussed

previously in Section IX.A, supra), the JM Microlite Blankets, and the Knauf

Crown Floor Slab (shown above) all show a waffle pattern.

Thus, even if the “waffle pattern” was not an inherent characteristic of JM

Spin-Glas (which it is), viewing JM Spin-Glas in light of OC PROPINK, JM

Microlite Blankets, or Knauf Crown Floor Slab yields a design that has

substantially the same overall visual appearance as the claimed design. Further,

such combination would be obvious because all three secondary references are “so

related that the appearance of certain ornamental features in one would suggest the

application of those features to the other.” In re Borden, 90 F.3d at 1575 (citations

omitted). Specifically, the four references are highly related because they each

depict ordinary insulation products with a cloud-like appearance and a variation in

swirl pattern. In addition, these products are manufactured by companies that

directly compete in the insulation industry. See Granger Decl., at ¶ 2 (Ex. 1014).

When the JM Spin-Glas is combined with the “waffle pattern” disclosed in any one

of the closely-related secondary references – OC PROPINK, JM Microlite

Blankets, or Knauf Crown Floor Slab – to create a hypothetical reference and

compared to the ’670 patent design, the overall appearance is virtually identical.

Hence, the “waffle pattern” would have been an obvious addition to JM Spin-Glas.


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3. Element 5


spectrophotometric analysis on six distinct regions of this prior art image, it was

determined that the JM Spin-Glas image contains a variation of distinct hues. See

Bide Decl. at ¶ 42 (Ex. 1012). Specifically, the ’670 claimed design contains a

variation of hue angles of 36.3, while the JM Spin-Glas image contains an even

greater variation of hue angles of 62.1. Id . at ¶¶ 38, 42. Hence, a “variation of

distinct hues” is disclosed in JM Spin-Glas.

4. JM Spin-Glas Conclusion

Based on the above similarities, an ordinary observer who is familiar with

the relevant prior art (e.g., Exs. 1003-1010) would believe that, taken as a whole,

the JM Spin-Glas and the ’670 patent are substantially the same design. Therefore,

the ’670 patent’s claim is anticipated by JM Spin-Glas under § 102(b).

Alternatively, for the reasons stated, JM Spin-Glas in combination with the OC

PROPINK reference (Ex. 1003), the JM Microlite Blankets reference (Ex. 1005),

or the Knauf Crown Floor Slab reference (Ex. 1006) renders the ’670 patent

obvious under §103. Therefore, the Board should find the sole claim of the ’670

patent invalid.


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C. Ground 3: The Claim Is Anticipated Under § 102(b), or Would

Have Been Rendered Obvious Under § 103, by Soundproofing

Your Walls, The Family Handyman Magazine (Ex. 1007) in Light

of Any of Three Other References

The Family Handyman Article entitled Soundproofing Your Walls by Mac

Wentz (“Soundproofing”) (Ex. 1007) discloses the same overall visual appearance

as the claimed design of the ’670 patent and, as a result, the claimed design is

anticipated by the reference under 35 U.S.C. § 102(b). Alternatively, as described

below, the reference considered in combination with any of three other references

renders the ’670 patent design obvious under 35 U.S.C. § 103.

Soundproofing is a printed magazine article, published in June 1998 – many

years prior to the filing date of the ’670 patent. Id . at 7; see also Barker Decl., at ¶

5 (Ex. 1016). Therefore, Soundproofing is a prior art printed publication under §

102(b). Below are side-by-side comparisons of the ’670 patent’s claim and three

images from Soundproofing:


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From observation of these images, it is apparent that the ’670 design and the

Soundproofing images share many common visual features, such that they are

substantially similar.

1.

Elements 1-3

First, each of the designs comprise (1) insulation material with (2) a cloud-

like appearance, and (3) variations in a swirl pattern. See Bide Decl., at ¶ 43 (Ex.

1012).

2.

Alleged Element 4

Regarding any alleged (4) waffle pattern, if this is considered to be an

element of the claimed invention (which it is not), it would have been inherent in

the light-density insulation material depicted in the Soundproofing images as it is a


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standard characteristic generated by the manufacturing process of fiberglass

insulation. See Section VII, supra; Granger Decl., at ¶¶ 6-10 (Ex. 1014).

Alternatively, even if the “waffle pattern” was not an inherent characteristic

of the insulation depicted in the Soundproofing images (which it is), it would have

been obvious to include in this reference a depiction of a waffle pattern. The

Soundproofing images have “basically the same” design characteristics as the

claimed ’670 patent design. Durling, 101 F.3d at 103 (citation omitted). As

discussed previously, the OC PROPINK reference (Ex. 1003), the JM Microlite

Blankets reference (Ex. 1005), and the Knauf Crown Floor Slab reference (Ex.

1006) each disclose a waffle pattern. Using any of these references to modify the

primary reference creates a design that has the same overall visual appearance as

the claimed design. This would be proper because all four references are “so

related that the appearance of certain ornamental features in one would suggest the

application of those features to the other.” In re Borden, 90 F.3d at 1575 (citations

omitted). Specifically, the four references are highly related because they each

depict ordinary insulation products with a cloud-like appearance and a variation in

swirl pattern. In addition, these products are manufactured by companies that

directly compete in the insulation industry. See Granger Decl., at ¶ 2 (Ex. 1014).

When Soundproofing is combined with the “waffle pattern” disclosed in any of the

closely-related secondary references to create a hypothetical reference and


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Hence, the “waffle pattern” would have been an obvious addition to

Soundproofing.

3. Element 5


spectrophotometric analysis on five or six distinct regions of the prior art images in

this reference, it was determined that the Soundproofing images each contain a

variation of distinct hues. See Bide Decl., at ¶ 44 (Ex. 1012). The ’670 claimed

design contains a variation of hue angles of 36.3. The variation of hue angles in

the Soundproofing images is greater: the Soundproofing I image contains a

variation of hue angles of 49.7; the Soundproofing II image contains a variation of

hue angles of 40.9; and the Soundproofing III image contains a variation of hue

angles of 41.9. Id . at ¶¶ 38, 44. Hence, in at least three images, the Soundproofing

reference discloses the fifth claim element of the ’670 patent.

4.

Soundproofing Conclusion


relevant prior art (e.g. , Exs. 1003-1010) would believe that, taken as a whole, the

Soundproofing reference and the ’670 patent are substantially the same design.

Therefore, the ’670 patent’s claim is anticipated by Soundproofing under § 102(b).

Alternatively, for the reasons stated, Soundproofing in light of any of three


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secondary references renders the ’670 patent obvious under §103. Therefore, the

Board should find the sole claim of the ’670 patent invalid.

D. Ground 4: The Claim Is Anticipated Under § 102(b), or Would

Have Been Rendered Obvious Under § 103, by Knauf: Timber

Frame External Walls: Non-Residential (Ex. 1008) In Light of

Any of Three Other References

Knauf: Timber Frame External Walls: Non-Residential (“Knauf: Timber

Frame Walls”) (Ex. 1008 at 3) discloses the same overall visual appearance as the

claimed design of the ’670 patent and, as a result, the claimed design is anticipated

by the reference under 35 U.S.C. § 102(b). Alternatively, as described below, the

Knauf: Timber Frame Walls reference plus one of three other secondary references

would have rendered the ’670 patent design obvious under 35 U.S.C. § 103.

Knauf: Timber Frame Walls is a printed information booklet, published in

July 2005, more than one year prior to the filing date of the ’670 patent. Id . at 1;

see also Barker Decl. at ¶ 6 (Ex. 1016). Therefore, Knauf: Timber Frame Walls is

a prior art printed publication under § 102(b). Below are comparison images of the

’670 patent’s claim and an image from Knauf: Timber Frame Walls:


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Inspection of these images makes clear that the two share many common

visual features, such that they are substantially similar.


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1. Elements 1-3

Both designs are (1) insulation material with (2) a cloud-like appearance,

and (3) variations in a swirl pattern. See Bide Decl., at ¶ 45 (Ex. 1012).

2.

Alleged Element 4

Regarding any alleged (4) waffle pattern, if this is an element of the claimed

invention (which it is not), as explained above, it would have been inherent in

insulation material, as it is a standard characteristic of the manufacturing process of

fiberglass insulation. See Section VII, supra; Granger Decl., at ¶¶ 6-10 (Ex. 1014).

Alternatively, it would have been obvious to include in the Knauf: Timber

Frame Walls reference a depiction of a waffle pattern. The Knauf: Timber Frame

Walls reference has “basically the same” design characteristics as the claimed

design. Durling, 101 F.3d at 103 (citation omitted). The secondary OC PROPINK

reference (Ex. 1003), JM Microlite Blankets reference (Ex. 1005), and Knauf

Crown Floor Slab reference (Ex. 1006) each show a waffle pattern. Using any of

these references to modify the primary Knauf: Timber Frame Walls reference

creates a design that has the same overall visual appearance as the claimed design.

This would be proper because all four references are “so related that the

appearance of certain ornamental features in one would suggest the application of

those features to the other.” In re Borden, 90 F.3d at 1575 (citations omitted).

Specifically, the four references are highly related because they each depict


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ordinary insulation products with a cloud-like appearance and a variation in swirl

pattern. In addition, these products are manufactured by companies that directly

compete in the insulation industry. See Granger Decl., at ¶ 2 (Ex. 1014). When

the JM Spin-Glas is combined with the “waffle pattern” disclosed in any one of the

closely-related secondary references to create a hypothetical reference and


Hence, the “waffle pattern” would have been an obvious addition to Knauf: Timber

Frame Walls.

3. Element 5


spectrophotometric analysis on five distinct regions of this prior art image, it was

determined that the Knauf: Timber Frame Walls image contains a variation of

distinct hues. See Bide Decl., at ¶ 46 (Ex. 1012). The ’670 claimed design

contains a variation of hue angles of 36.3 and the Knauf: Timber Frame Walls

image contains a greater variation of hue angles of 37.2. Id . at ¶¶ 38, 48. Thus,

this fifth claim element of the ‘670 patent is present in Knauf: Timber Frame

Walls.

4.

Knauf: Timber Frame Walls Conclusion


relevant prior art (see e.g. Exs. 1003-1010) would believe that, taken as a whole,


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Knauf: Timber Frame Walls reference and the ’670 patent are substantially the

same design. Therefore, the ’670 patent’s claim is anticipated by Knauf: Total

Capabilities under § 102(b). In the alternative, for the reasons stated above, the

Knauf: Timber Frame Walls reference plus one of three secondary references

would have rendered obvious the design of the ’670 patent under § 103.

Therefore, the Board should find the sole claim of the ‘670 invalid on this ground

as well.

E.

Ground 5: The Claim Is Anticipated Under § 102(b), or WouldHave Been Rendered Obvious Under § 103, by Owens Corning –

2006 at a Glance Report (Ex. 1009) In Light of Any of Three

Other References

The Owens Corning – 2006 at a Glance Report (“OC 2006 Report”) (Ex.

1009 at 10) discloses the same overall visual appearance as the claimed design of

the ’670 patent and, as a result, the claimed design is anticipated by the reference

under 35 U.S.C. § 102(b). Alternatively, as described below, the OC 2006 Report

combined with one of three other secondary references would have rendered the

’670 patent design obvious under 35 U.S.C. § 103.

The OC 2006 Report is a printed business document, published in October

2006, more than one year prior to the filing date of the ’670 patent. Id . at 40; see

also Barker Decl., at ¶ 7 (Ex. 1016). Therefore, the OC 2006 Report is a prior art

printed publication under § 102(b). Below are side-by-side images of the ’670

patent’s claim and an image from the OC 2006 Report:


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From these views, it is apparent that they share many common visual


1. Elements 1-3


(3) variations in a swirl pattern. See Bide Decl., at ¶ 47 (Ex. 1012).

2.

Alleged Element 4

Regarding any alleged (4) waffle pattern, if this is considered to be an

element of the claimed invention (which it is not), it would have been inherent in

the light-density insulation material depicted in the OC 2006 Report, as it is a


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standard characteristic of the manufacturing process of fiberglass insulation. See

Section VII, supra; Granger Decl., at ¶¶ 6-10 (Ex. 1014).


of the insulation depicted in the OC 2006 Report (which it is), it would have been

obvious to include in this reference a depiction of a waffle pattern. The OC 2006

Report image has “basically the same” design characteristics as the claimed design.

Durling, 101 F.3d at 103 (citation omitted). The secondary OC PROPINK

reference (Ex. 1003), JM Microlite Blankets reference (Ex. 1005), and Knauf

Crown Floor Slab reference (Ex. 1006) each show a waffle pattern. Using any of

these references to modify the primary OC 2006 Report reference creates a design

that has the same overall visual appearance as the claimed design. This would be

proper because all four references are “so related that the appearance of certain

ornamental features in one would suggest the application of those features to the

other.” In re Borden, 90 F.3d at 1575 (citations omitted). Specifically, the four

references are highly related because they each depict ordinary insulation products

with a cloud-like appearance and a variation in swirl pattern. In addition, these

products are manufactured by companies that directly compete in the insulation

industry. See Granger Decl., at ¶ 2 (Ex. 1014). When the OC 2006 Report is

combined with the “waffle pattern” disclosed in any of the closely-related

secondary references to create a hypothetical reference and compared to the ’670


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patent design, the overall appearance is virtually identical. Hence, the “waffle

pattern” would have been an obvious addition to the OC 2006 Report.

3. Element 5


spectrophotometric analysis on five distinct regions of this prior art image, it was

determined that the OC 2006 Report image contains a variation of distinct hues.

See Bide Decl., at ¶ 48 (Ex. 1012). The ’670 claimed design contains a variation

of hue angles of 36.3 and the OC 2006 Report image contains a variation of hue

angles of 51.6. Id . at ¶¶ 38, 48. Hence, the image from the OC 2006 Report

discloses the claimed “variation of distinct hues.”

4.

The OC 2006 Report Conclusion


relevant prior art (see e.g. Exs. 1003-1010) would believe that, taken as a whole,

the OC 2006 Report and the ’670 patent are substantially the same design.

Therefore, the ’670 patent’s claim is anticipated by the OC 2006 Report under §

102(b). Int’l Seaway, 589 F.3d at 1240. Alternatively, for the reasons stated

above, the ’670 patent design would have been rendered obvious under § 103 by

the OC 2006 Report in combination with any of the secondary prior art references.

Therefore, the Board should find the sole claim of the ’670 patent invalid.


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F. Ground 6: The Claim Is Anticipated Under § 102(a), or Would

Have Been Rendered Obvious Under § 103, by Owens Corning

2007 Progress Report (Ex. 1010) In Light of Any of Three Other

References

The Owens Corning 2007 Progress Report (“OC 2007 Report”) (Ex. 1010 at

6) discloses the same overall visual appearance as the claimed design of the ’670

patent and, as a result, the claimed design is anticipated by the reference under 35

U.S.C. §102(a). Alternatively, as described below, the OC 2007 Report plus one

of three other secondary references would have rendered the ’670 patent design

obvious under 35 U.S.C. § 103.

The OC 2007 Report is a printed business document, published in June

2008, prior to the filing date of the ’670 patent. Id . at 32; see also Barker Decl., at

¶ 8 (Ex. 1016). Therefore the OC 2007 Report is a prior art printed publication

under 35 U.S.C. § 102(a). Below are side-by-side images of the ’670 patent’s

claim and an image from the OC 2007 Report:


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From these views it is apparent that they share many common visual


1. Elements 1-3


(3) variations in a swirl pattern. See Bide Decl., at ¶ 49 (Ex. 1012).

2.

Alleged Element 4

Regarding any alleged (4) waffle pattern, if this considered to be an element

of the claimed invention (which it is not), it would have been inherent in the light-

density insulation material depicted in the OC 2007 Report, as it is a standard

characteristic generated by the manufacturing process of fiberglass insulation. See

Section VII, supra; Granger Decl., at ¶ 6-10 (Ex. 1014).


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of the insulation depicted in the OC 2007 Report (which it is), it would have been

obvious to include in this reference a depiction of a waffle pattern. The OC 2007

Report has “basically the same” design characteristics as the claimed design.

Durling, 101 F.3d at 103 (citation om

Documents

Johns Manville v. Knauf Insulation - IPR Petition