Johns Manville v. Knauf Insulation - IPR Petition

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.
TABLE OF CONTENTS
I.
INTRODUCTION ...........................................................................................1
II.
III.
MANDATORY NOTICES UNDER 37 C.F.R. 42.8 ................................... 1

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
IX.
A.
B.
Anticipation .........................................................................................19
Inherency .............................................................................................20
C.
Obviousness.........................................................................................21
D.
One of Ordinary Skill ..........................................................................22
DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY

UNDER THE BROADEST REASONABLE CONSTRUCTION ............... 23
A.
B.
Ground 1: The Claim Is Anticipated Under 102(b) by Owens

Corning PROPINK Smartperm Vapor Retarder (Ex. 1003) ........... 24
1.
Elements 1-3 .............................................................................26
2.
Alleged Element 4.....................................................................26
3.
4.
Element 5 ..................................................................................29
OC PROPINK Conclusion........................................................31
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 ......................................................31
1.
Elements 1-3 .............................................................................33
2.
Alleged Element 4.....................................................................33

i
C.
D.
E.
F.
3.
Element 5 ..................................................................................37
4.
JM Spin-Glas Conclusion .........................................................37

Been Rendered Obvious Under 103, by Soundproofing Your Walls,
The Family Handyman Magazine (Ex. 1007) in Light of Any of Three
Other References .................................................................................38
1.
Elements 1-3 .............................................................................40
2.
Alleged Element 4.....................................................................40
3.
4.
Element 5 ..................................................................................42
Soundproofing Conclusion........................................................42

Been Rendered Obvious Under 103, by Knauf: Timber Frame
External Walls: Non-Residential (Ex. 1008) In Light of Any of Three
Other References .................................................................................43
1.
2.
Elements 1-3 .............................................................................45

Alleged Element 4.....................................................................45
3.
Element 5 ..................................................................................46
4.
Knauf: Timber Frame Walls Conclusion ..................................46

Been 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.
4.
Element 5 ..................................................................................50
The OC 2006 Report Conclusion..............................................50
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.
2.
Elements 1-3 .............................................................................52

Alleged Element 4.....................................................................52
3.
Element 5 ..................................................................................54
4.
The OC 2007 Report Conclusion..............................................54

ii
G.
X.
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 Element

of 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 or
Obvious. ....................................................................................57
3.
Conclusion Regarding Grounds 7-9 .........................................59
CONCLUSION..............................................................................................60
iii
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. Intl Trade Commn,
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
Intl 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
iv
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
v
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
Kristopher L. Reed
Registration No. 58694
Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
kreed@kilpatricktownsend.com
(303) 571-4000 (telephone)
(303) 571-4321 (facsimile)
Back-Up Counsel
David E. Sipiora
(pro hac vice to be filed)
Kilpatrick Townsend & Stockton LLP
1400 Wewatta Street, Suite 600
Denver, CO 80202
dsipiora@kilpatricktownsend.com
(303) 571-4000 (telephone)
(303) 571-4321 (facsimile)
The following email address may be used for service and all
communications to both Lead and Backup Counsel:
JMIPR@kilpatricktownsend.com
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. 1003
Owens Corning PROPINK Smartperm

Vapor Retarder Brochure
August 2004
Ex. 1004
Johns Manville SG Series Spin-Glas &

Range Spin Glas Brochure
September 1997
Ex. 1005
Johns Manville Microlite AA Blankets

Brochure
March 2002
Ex. 1006
Knauf Crown Floor Slab Brochure
February 2006
Ex. 1007
Soundproofing Your Walls, The Family

Handyman Magazine
June 1998
Ex. 1008
Knauf: Timber Frame External Walls: NonResidential Brochure
July 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
Anticipation under 102(b) by Owens Corning PROPINK

Smartperm Vapor Retarder (Ex. 1003)
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
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
Anticipation 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
Anticipation and/or obviousness under 102(b) and 103 by Owens

Corning 2006 At A Glance Report (Ex. 1009) in combination with
any one of three other references
Anticipation and/or obviousness under 102(a) and 103 by Owens

Corning 2007 Progress Report (Ex. 1010) in combination with any one
of three other references
Anticipation and/or obviousness under 102(b) and 103 by Johns

Manville SG Series Spin-Glas & Range Spin Glas Brochure (Ex.
3
1004) in view of Johns Manville Microlite AA Blankets Brochure

(Ex. 1005)
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)
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 patents 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.
4
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
5
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).
6
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 2834). 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 Applicants 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 threedimensional qualities of a perspective view. (Id.) The Examiner also requested
deletion of the sentence stating that [o]nly elements in the view shown are
7
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 applications 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
8
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 applicants 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 pertainsto 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.)
9
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 Examiners 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 designs 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
10
pattern in evidence of production processes. (Id.) Agreement between the

Examiner and Applicants 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
Examiners 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 Examiners 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 Examiners 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
11
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 Applicants 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 Examiners brief
observation in the Interview Summary of a very slight indication in some places
12
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).
13
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 patents 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 Examiners 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 Examiners words, the Applicant did not identify any particular
color or colors that are integral, nor did the Applicant assert that color is
14
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 patents 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.
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 Applicants drawing (e.g., such as
brown and cream) have never been defined or connected with any symbol or
design.
15
(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 Examiners Interview when the Examiner (not the
16
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.
Grangers 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.
17
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.
18
(e)
Variation of distinct hues
The 670 patent claims insulation material that contains a variation of

distinct hues, exemplified in the sole figures 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 designs drastic differences in contrast. See 136 Application
Prosecution History, Interview Summary (Sept. 14, 2010) (Ex. 1002 at 26).
Subsequently, in Applicants 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 Intl Seaway Trading Corp. v. Walgreens Corp.,
19
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. Intl 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. Intl Trade Commn, 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
20
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 arts 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
21
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. Intl 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. Intl 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
22
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
23
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 patents claim and OC PROPINK:
24
Comparing the two images, it is clear that they share common visual
features, such that they are substantially similar.
25
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).
26
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 installedfor example, vertically in wallsthe 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
27
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 perforationscalled flights quite predictably and normally leave a wafflelike 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. Grangers 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
designeven 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.
28
(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 wellestablished 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
29
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
patents claim element of a variation of distinct hues is present in the OC
PROPINK image.
30
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 Intl
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 SpinGlas) (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
31
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
patents 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.
32
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
33
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.
34
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
35
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.
36
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 patents 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.
37
C.

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 patents claim and three
images from Soundproofing:
38
39
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 cloudlike 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
40
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
41
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 patents claim is anticipated by Soundproofing under 102(b).
Alternatively, for the reasons stated, Soundproofing in light of any of three
42
secondary references renders the 670 patent obvious under 103. Therefore, the
Board should find the sole claim of the 670 patent invalid.
D.

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 patents claim and an image from Knauf: Timber Frame Walls:
43
Inspection of these images makes clear that the two share many common
visual features, such that they are substantially similar.
44
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
45
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,
46
Knauf: Timber Frame Walls reference and the 670 patent are substantially the
same design. Therefore, the 670 patents 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.

Have 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
patents claim and an image from the OC 2006 Report:
47
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
48
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
49
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

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

the OC 2006 Report and the 670 patent are substantially the same design.
Therefore, the 670 patents claim is anticipated by the OC 2006 Report under
102(b). Intl 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.
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
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 patents
claim and an image from the OC 2007 Report:
51
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 lightdensity 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).
52

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 omitted). The secondary OC PROPINK
reference (Ex. 1003), the JM Microlite Blankets reference (Ex. 1005), and Knauf
Crown Floor Slab (Ex. 1006) each show a waffle pattern. Using any reference to
modify the primary OC 2007 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 2007 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 patent design, the overall appearance is
virtually identical. Hence, the waffle pattern would have been an obvious
addition to the OC 2007 Report.
53
3.
Element 5

determined that the OC 2007 Report image contains a variation of distinct hues.
See Bide Decl., at 50 (Ex. 1012). The 670 claimed design contains a variation
of hue angles of 36.3. In comparison, the OC 2007 Report contains a variation of
hue angles of 41.2. Id. at 38, 50. Hence, the fifth claim element is present in
the OC 2007 Report.
4.
The OC 2007 Report Conclusion

the OC 2007 Report and the 670 patent are substantially the same design.
Therefore, the 670 patents claim is anticipated by the OC 2007 Report under
102(a). Intl 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 2007 Report in combination with any of the secondary prior art references.
Therefore, the Board should find the sole claim of the 670 patent invalid on this
ground as well.
54
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)
1.
Brown and Cream Should Not Be Considered a Color

Element of the Claim of the 670 Patent
As noted earlier, 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 Petition, Petitioner has demonstrated how the Applicant for the
670 patent never claimed a specific color or combination of colors as an element
of the 670 patents claim, nor has any particular color been connected with any
symbol or design. (See Section VII.A.1, supra.) On the contrary, the prosecution
of this patent reflects that the Applicant did not intend to claim color per se, but
rather a variation of distinct hues in his drawing. (Id.)
In his original Petition To Accept a Color Photograph, the Applicant did
not claim any particular color and stated only 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, Office Action (Aug. 6,
2010) (Ex. 1002 at 83). After the Petition was rejected and the Applicant was
55
instructed that a proper Petition To Accept a Color Photograph must explain that
color drawings or color photographs are necessary because color is an integral part
of the claimed design, the Applicant still did not claim specific colors. Instead, as
reflected in the Examiners Interview Summary, it was agreed that a replacement
drawing was to be submitted which would be of much higher quality than the
original. (Id. at 26.) This higher quality drawing was not intended to claim color,
but rather with a greater resolution the darker and lighter areas would have more
contrast and would permit better understanding of the claimed designs drastic
differences in contrast. (Id.) And when the Applicant submitted his second
Petition To Accept a Color Photograph, he merely repeated the phrase color is
an integral part of the claimed invention, but did not identify any particular color
that is integral, nor explain how color is integral to the claimed invention
beyond the variation of distinct hues described previously. (See id. at 13.)
Against this backdrop, Patent Owner should not now be permitted to claim
brown and cream as color elements of the claimed design. Nonetheless, in
anticipation that Patent Owner likely will make such an argument in response to
this Petition, Petitioner submits the present Grounds 7 through 9.
56
2.
If Brown and Cream Are Considered a Color Element of

the Claim of the 670 Patent, Then the Claim Is Still
Anticipated or Obvious.
If brown and cream are in some manner deemed color elements of the
claimed design of the 670 patent (which Petitioner believes they are not), then the
sole claim is still anticipated or rendered obvious by at least three of the primary
references described and pictured previously: JM Spin-Glas (Ex. 1004) (Ground
7), Soundproofing (Ex. 1007) (Ground 8), and Knauf: Timber Frame Walls (Ex.
1008) (Ground 9).
The 670 patent is anticipated because each of these references (i) possesses
or renders obvious all the other elements of the claim for the reasons discussed
previously (see Sections IX.B-D, supra); and (ii) also possesses a color scheme
that mirrors the brown and cream color scheme depicted in the 670 patent
drawing. Based on the above similarities, an ordinary observer familiar with the
JM Spin-Glas (Ex. 1004), Soundproofing (Ex. 1007), and Knauf: Timber Frame
Walls (Ex. 1008) each is substantially the same design as the claimed design.
Therefore, the 670 patents claim is anticipated by each of these references under
102(b). Intl Seaway, 589 F.3d at 1240.
Alternatively, each of these references in combination with JM Microlite
Blankets (Ex. 1005) would have rendered the 670 patent obvious. Specifically, to
57
the extent any of these three primary references is deemed not to include instances
of the colors brown and cream, it would have been obvious to incorporate a
brown and cream design in light of JM Microlite Blankets.
As discussed previously (and shown again below), JM Microlite Blankets
depicts a spectrum of different color patterns for the same insulation:
This reference teaches that manufacturers of prior art insulation used a large
spectrum of different color schemes for the same products, including light brown
and cream, as depicted in Ex. 1005. Each of the three primary references cited
58
here -- JM Spin-Glas (Ex. 1004), Soundproofing (Ex. 1007), and Knauf: Timber
Frame Walls (Ex. 1008) show a design of an insulation product that would have
been combined with the design of the JM Microlite Blankets to depict a design
highly similar or identical to the claimed design.
Such combinations would be proper because each of the three references is
so related that the appearance of certain ornamental features in [JM Microlite
Blankets] would suggest the application of those features to the other. In re
Borden, 90 F.3d at 1575 (citations omitted). Specifically, the references are highly
related because they each depict ordinary insulation products with a cloud-like
appearance and a variation in a swirl pattern. In addition, these products are
manufactured by companies that directly compete in the insulation industry. See
Granger Decl., at 2 (Ex. 1014). Hence, it would have been obvious to combine
JM Microlite Blankets with each of these primary references to arrive at a design
identical or highly similar to the claimed design. As such, each of these
combinations renders the asserted claim unpatentable, even if the colors brown and
cream are improperly considered as elements of the sole claim of the 670 patent.
3.
Conclusion Regarding Grounds 7-9

each of JM Spin-Glas (Ex. 1004) (Ground 7), Soundproofing (Ex. 1007) (Ground
59
8), and Knauf: Timber Frame Walls (Ex. 1008) (Ground 9), respectively, and the
670 patent design are substantially the same design. Therefore, the 670 patents
claim is anticipated by each of these references. Intl Seaway, 589 F.3d at 1240.
Alternatively, for the reasons stated above, the 670 patent design would have been
rendered obvious under 103 by each of these primary references in combination
with JM Microlite Blankets (Ex. 1005). Therefore, the Board should find the sole
claim of the 670 patent invalid on each of these grounds as well.
X.
CONCLUSION
For the reasons set forth in the grounds above, the sole claim of the 670
patent is invalid as anticipated under 102 and/or obvious under 103. As a

result, this Board should institute inter partes review and find the sole claim of the
670 patent unpatentable.
Respectfully submitted,
By: s/ Kristopher L. Reed

Kristopher L. Reed
Registration No. 58,694
Lead Counsel for Petitioners
60
Appendix - List of Exhibits

Exhibit
No.
Description
Ex. 1001
U.S. Design Patent No. D631,670 to Jackson
Ex. 1002
Prosecution History of U.S. Design Patent No. D631,670 to Jackson
Ex. 1003
Owens Corning Propink Smartperm Vapor Retarder
Ex. 1004
Johns Manville SG Series Spin-Glas & Range Spin Glas Brochure
Ex. 1005
Johns Manville Microlite AA Blankets Brochure
Ex. 1006
Knauf Crown Floor Slab Brochure
Ex. 1007
Soundproofing Your Walls, The Family Handyman Magazine
Ex. 1008
Knauf: Timber Frame External Walls: Non-Residential Brochure
Ex. 1009
Owens Corning 2006 At A Glance Report
Ex. 1010
Owens Corning 2007 Progress Report
Ex. 1011
U.S. Patent No. 4,734,996 to Kim et al.
Ex. 1012
Declaration of Dr. Martin Bide
Ex. 1013
Curriculum Vitae of Dr. Martin J. Bide
Ex. 1014
Declaration of Mark A. Granger
Ex. 1015
Declaration of Teresa K. OBrien
Ex. 1016
Declaration of Anne N. Barker
Ex. 1017
Declaration of Michael Fay
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. 42.6(e) and 42.105(a), I, Kristopher L. Reed,
certify that on June 19, 2015, a true and correct copy of the foregoing PETITION
FOR INTER PARTES REVIEW OF U.S. PATENT NO. D631,670 (and
accompanying Exhibits 1001-1017) were served upon the below-listed counsel by
Express Mail:
Daniel J. Lueders
Spiro Bereveskos
WOODARD, EMHARDT, MORIARTY,
MCNETT & HENRY LLP
111 Monument Circle, Suite 3700
Indianapolis, Indiana 46204-5137
D. Rusty Denton
BINGHAM GREENEBAUM DOLL LLP
2700 Market Tower
10 West Market Street
Indianapolis, Indiana 46204
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
607 14th Street, N.W.
SUITE 800
WASHINGTON DC 20005
Date: June 19, 2015
By: s/ Kristopher L. Reed

Kristopher L. Reed
Registration No.58,694
Lead Counsel for Petitioners
KILPATRICK TOWNSEND &
STOCKTON LLP

Johns Manville v. Knauf Insulation - IPR Petition

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Johns Manville v. Knauf Insulation - IPR Petition

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

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

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

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

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

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

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

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

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

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

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

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

DETAILED EXPLANATION OF GROUNDS FOR UNPATENTABILITY

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

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

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

Ground 2: The Claim Is Anticipated Under 102(b), or Would Have

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

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

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

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

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

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

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

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

Ground 5: The Claim Is Anticipated Under 102(b), or Would Have

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

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

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

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

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

Grounds 7 - 9: If Brown and Cream Are Deemed a Claim Element,

Brown and Cream Should Not Be Considered a Color Element

If Brown and Cream Are Considered a Color Element of the

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

MANDATORY NOTICES UNDER 37 C.F.R. 42.8

Inc. are the real parties-in-interest.

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

GROUNDS FOR STANDING

Owens Corning PROPINK Smartperm

Johns Manville SG Series Spin-Glas &

Johns Manville Microlite AA Blankets

Knauf Crown Floor Slab Brochure

Soundproofing Your Walls, The Family

Knauf: Timber Frame External Walls: NonResidential Brochure

Owens Corning 2006 At A Glance Report

Owens Corning 2007 Progress Report

Petitioner requests inter partes review based on the following grounds:

Anticipation under 102(b) by Owens Corning PROPINK

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

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

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

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

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

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

1004) in view of Johns Manville Microlite AA Blankets Brochure

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

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

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

Legal Standard for Claim Construction of a Design Patent

A claim subject to inter partes review receives the broadest reasonable

Claim Construction of the 670 Patent

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