R2 Saves the Day: You Gotta Release and Remove

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 material 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 material 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 material 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. 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 material 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.