CORNING INCORPORATED v DSM IP ASSETS B.V.

Patent Trial and Appeal Board

May 1, 2014

09163188 (P.T.A.B. May. 1, 2014)

Trials@uspto.gov Paper 77
Tel: 571-272-7822 Entered: May 1, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CORNING INCORPORATED
Petitioner
v.
DSM IP ASSETS B.V.
Patent Owner
_______________

Case IPR2013-00050
Patent 6,323,255 B1
_______________

Before FRED E. McKELVEY, GRACE KARAFFA OBERMANN,
JENNIFER S. BISK, SCOTT E. KAMHOLZ, and ZHENYU YANG,
Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a); 37 C.F.R. § 42.73

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I. INTRODUCTION
A. Background
Petitioner Corning Incorporated (“Corning”) filed a petition (Paper 2,
“Pet.”) to institute an inter partes review of claims 1-19 (“the challenged
claims”) of U.S. Patent No. 6,323,255 B1 (Ex. 1001) (“the  ’255 patent”).
The Board instituted trial for the challenged claims on the following grounds
of unpatentability asserted by Corning:
References 1 Basis Claims challenged
Bishop and Trapasso § 103 1-7, 12-17, and 19
Bishop, Trapasso, and Szum § 103 6
Bishop, Trapasso, Jackson,
and Szum
§ 103 8-11
Szum and Trapasso § 103 1-8, 12-14, and 16-19
Szum, Trapasso, and Jackson § 103 9-11
Decision to Institute 2 (Paper 11, “Dec.”).
After institution of trial, Patent Owner DSM IP Assets B.V. (“DSM”)
filed a Patent Owner Response (Paper 39, “Resp.”), and Corning filed a
Reply to the Patent Owner Response (Paper 54, “Reply”). DSM filed a
Supplemental Response (Paper 60, “Suppl. Resp.”) with leave of the Board,
and Corning filed a Supplemental Reply (Paper 61, “Suppl. Reply”). DSM
filed a Motion for Observations on Cross-Examination of Corning Reply

1 The references relied upon are: U.S. Patent No. 4,849,462 (Ex. 1002)
(“Bishop”); U.S. Patent No. 5,664,041 (Ex. 1003) (“Szum”); U.S. Patent No.
5,554,785 (Ex. 1004) (“Trapasso”); and U.S. Patent No. 4,900,126
(Ex. 1005) (“Jackson”).
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Declarants (Paper 63, “Obs.”), and Corning filed a Response to the
Observations (Paper 68, “Obs. Resp.”).
DSM also filed a Motion to Amend Claims (Paper 40), which DSM
later corrected, with leave of the Board, to make clear that the motion is
contingent on a finding that the claims sought to be replaced are
unpatentable (Paper 75, “Corr. Mot. to Amend”). In it, DSM proposed
claims 20, 21, and 22 to substitute for patented claims 1, 15, and 19,
respectively. Motion to Amend 1. Corning filed an Opposition to the
Motion to Amend Claims (Paper 53). DSM filed a Reply to the Opposition
(Paper 62, “Amend Reply”).
DSM also filed a Motion to Exclude certain of Corning’s Evidence
(Paper 64, “Mot. to Exclude”). Corning filed an Opposition, (Paper 69,
“Excl. Opp.”), and DSM filed a Reply (Paper 72, “Excl. Reply”).
Corning relies upon declarations of Dr. Michael Winningham
(Ex. 1006) and Ms. Inna Kouzmina (Ex. 1007) in support of its Petition.
DSM relies upon a declaration of Dr. Christopher Bowman (Ex. 2026) in its
Response, along with a deposition of Dr. Winningham (Exs. 2021-2025) and
portions of Ms. Kouzmina’s deposition (Exs. 2018, 2019). Corning relies
upon a responsive declaration of Dr. Winningham (Ex. 1029), along with a
deposition of Dr. Bowman (Exs. 1030-1035) and a portion of
Ms. Kouzmina’s deposition (Ex. 1036) in its Reply. DSM relies upon a
supplemental declaration of Dr. Bowman in its Supplemental Response (see
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IPR2013-00052, Ex. 2037).2 Corning relies upon depositions of
Dr. Winningham (Ex. 1038)3 and Dr. Dotsevi Sogah (Ex. 1037) in its
Supplemental Reply.
Oral argument was conducted on February 11, 2014. A transcript is
entered as Paper 76.
The Board has jurisdiction under 35 U.S.C. § 6(c). This final written
decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
Corning has proved that claims 1-19 of the ’255 patent are
unpatentable.
DSM’s Corrected Motion to Amend Claims is denied.
DSM’s Motion to Exclude Corning Evidence is denied-in-part and
dismissed-in-part.
B. The Invention
The ’255 patent is titled “Radiation-Curable Composition” and
generally relates to compositions that may be used as, e.g., optical fiber
coatings and exhibit “reduced discoloration over time and/or high

2 The Board denied DSM authorization to file Dr. Bowman’s supplemental
declaration in this proceeding. Paper 57, 4-5. DSM nevertheless cites to
this declaration in support of its Supplemental Response argument.
Suppl. Resp. passim. We exercise our discretion and address Dr. Bowman’s
supplemental declaration for the limited purpose discussed below. DSM
also cites to a declaration of Dr. Dotsevi Sogah in its Supplemental
Response. Supp. Resp. 1 (citing IPR2013-00043, Ex. 1060). We exercise
our discretion and consider Dr. Sogah’s declaration as well.
3 Ex. 1038 is a rough transcript. DSM submitted an official transcript as
Ex. 2035.
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elongation.” Ex. 1001, 1:4-7. The compositions in particular include “at
least one transesterified and/or high-purity monomer,” id. at 1:7-9, to which
is attributed the improved discoloration and elongation properties. Id. at
3:5-13. It is acknowledged in the ’255 patent that Trapasso discloses
transesterified monomers having “excellent purity,” but it is asserted that
Trapasso does not disclose the usefulness of these monomers in making
optical fiber coatings, nor that they improve the discoloration and elongation
properties. Id. at 2:20-33. Claims 1 and 17, reproduced below, are the
independent claims in the ’255 patent and illustrate the claimed subject
matter:
1. A radiation-curable composition comprising:
(i) a radiation-curable oligomer; and
(ii) at least one transesterified monomer, said
transesterified monomer having a purity level
of greater than 95% and less than 100 ppm of
an organotin catalyst;
(iii) a silane adhesion promoter;
wherein said composition upon cure has a ΔE
value of less than 20 when exposed to low
intensity fluorescent light for a period of ten
weeks.

17. A radiation-curable composition comprising:
(i) a radiation-curable oligomer; and
(ii) at least one transesterified monomer having a
purity level of greater than 95% and less than
100 ppm of an organotin catalyst, said at least
one transesterified monomer being selected
from the group consisting of isodecyl acrylate,
isobomyl acrylate, and phenoxyethylacrylate;
wherein said composition upon cure has a ΔE
value of less than 20 when exposed to low
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intensity fluorescent light for a period of ten
weeks.4

Claims 2-16 depend directly or indirectly from claim 1, and claims
18-19 depend from claim 17. Claims 2-3 further specify the oligomer.
Claims 4-11 specify use of the composition in fiber optics. Claims 12 and
13 further specify the monomer and the silane adhesion promoter,
respectively. Claim 14 further requires a photoinitiator. Claims 15, 16, 18,
and 19 specify additional material properties of the composition.

II. DISCUSSION
A. Claim Construction
In an inter partes review, claim terms in an unexpired patent are
interpreted according to their broadest reasonable construction in light of the
specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
2012). Claim terms also are given their ordinary and customary meaning, as
would be understood by one of ordinary skill in the art in the context of the
entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). Any special definition for a claim term must be set forth in the
specification with reasonable clarity, deliberateness, and precision. In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a

4 The term “isobomyl” in limitation (ii) appears to be a typographical error
that instead should have read --isobornyl. See, e.g., Ex. 2028, 116:22 (p. 2
of Amendment dated January 30, 2001).
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definition, limitations are not to be read from the specification into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
1. “A ΔE value of less than 20 when exposed to low intensity
fluorescent light for a period of ten weeks” (claims 1, 17)
Corning argues that curing, under any conditions, followed by any ΔE
test protocol satisfying the recited conditions, meets this limitation. Pet. 21.
Corning argues, nevertheless, that it followed the curing and ΔE testing
procedure as specified at column 16, lines 18-37 in the ’255 patent when
testing the prior art compounds. Pet. 28 (citing Ex. 1007 ¶¶ 18-19). DSM
argues that the limitation should be construed as encompassing this same
procedure. Resp. 14-15. The parties agree, therefore, that the scope of this
limitation at least includes ΔE measurements made by the procedure
specified in the ’255 patent. Whatever other measurement protocols this
limitation encompasses, it certainly encompasses at least the one
measurement protocol that the ’255 patent spells out for curing and
measuring ΔE. See Oatey Co. v. IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir.
2008) (“We normally do not interpret claim terms in a way that excludes
embodiments disclosed in the specification.”). The limitation requires no
further construction.
2. “Transesterified monomer” (claims 1, 17)
Corning argues that the term “transesterified monomer” should be
construed as “esterified monomer,” because the term “transesterified” refers
to the process used to make a monomer that contains an ester group, rather
than to the chemical composition of the monomer. Pet. 23-24. Corning
argues that either a transesterification or a direct esterification reaction
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scheme may be employed to make a particular esterified monomer, and that
the particular reaction scheme selected does not affect the resulting chemical
composition. Id. at 24 (citing Ex. 1006 ¶ 93). Corning also argues that
“transesterified monomer” should be construed as encompassing “molecules
that contain an ester group and an unsaturated group that is capable of
polymerization.” Id. at 26-27 (citing Ex. 1006 ¶¶ 99, 100).
DSM argues that the term should be construed to mean “a monomer
diluent prepared by transesterification.” Resp. 17. DSM does not challenge
Corning’s position that an esterified monomer made by transesterification is
indistinguishable from the same esterified monomer made by direct
esterification. Rather, DSM argues that the two reaction schemes may leave
behind different impurities in the monomer, such as leftover reactants or
undesired products, which may affect the monomer’s performance or the
properties of coating compositions made with it. Resp. 17-18 (citing
Ex. 2026 ¶¶ 52-58 (citing Ex. 2022, 359:8-360:15; 371:14-372:20)).
Corning asserts (e.g., Pet. 6), and DSM does not deny, that the ’255
patent cites Trapasso for its disclosure of transesterified monomers, and
incorporates Trapasso by reference. We agree with Corning that the ’255
patent cites Trapasso with favor for its teachings of transesterified
monomers. See Ex. 1001, 2:20-33; 7:33-35. Trapasso’s transesterified
monomers are, consequently, certainly within the scope of the claim term
“transesterified monomers” as that term is used in the ’255 patent. See
Oatey, 514 F.3d at 1276. No further construction of the term is necessary.
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3. “(Meth)acrylate” (claims 2, 3)
We construed this term as meaning “methacrylate or acrylate” in the
Decision to Institute. Dec. 5. We based this construction on testimony by
Dr. Winningham that “the parenthetical ‘meth’ means that the acrylate
functionality can be present either as a methacrylate or as an acrylate.”
Ex. 1006 ¶ 23. Neither party has commented on this interpretation. We
maintain it.
4. “Radiation-curable oligomer” (claims 1, 17)
Corning argues that “radiation-curable oligomer” should be construed
to encompass “molecules that contain a chain with an unsaturated group
capable of polymerization.” Pet. 25-26 (citing Ex. 1001, 3:30-42; Ex. 1006
¶ 98). DSM argues that the term should be given its plain meaning.
Resp. 20-21 (citing Ex. 2026 ¶ 62). We agree with DSM. All of the
references underlying the instituted challenges concern oligomers that are
curable by radiation. No further construction is necessary.
5. “Fiber optic coating composition” (claim 4)
Corning argues that this term should be given no patentable weight
because it refers solely to an intended use of the claimed compositions.
Pet. 24-25 (citing Ex. 1006 ¶¶ 94, 95). DSM does not address construction
of this term in its Response.
We disagree with Corning that the term is to be accorded no
patentable weight. It limits the scope of the claim to compositions that are
capable of being used to form fiber optic coatings. See In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997). Accordingly, we construe “a fiber optic
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coating composition,” as that term appears in claim 4, to mean “capable of
being used to form a fiber optic coating.”
6. “inner primary optical fiber coating composition” (claim 5)
Corning argues that this term should be given no patentable weight
because it refers solely to an intended use of the claimed compositions.
Pet. 24-25 (citing Ex. 1006 ¶¶ 94, 95).
DSM argues, citing testimony from Corning’s expert,
Dr. Winningham, that one of ordinary skill would understand that a
composition intended for making an inner primary coating would have a
“relatively low” modulus and glass transition temperature (Tg), because
inner primary coatings are designed to be soft and compliant, to protect the
fiber from damage during handling. Resp. 18-20 (citing Ex. 1006 ¶ 15;
Ex. 2024, 768:15-25). DSM points out that the ’255 patent specifies
particular ranges for modulus and Tg for compositions that are formulated
for use as an inner or outer primary coating. Id. at 19-20 (citing Ex. 1001,
10:58-61; see id. at 11:6-10).
The limitation imposes at least the requirement that the claimed
composition be capable of the intended use. See In re Schreiber, 128 F.3d at
1477. DSM’s arguments, however, do not persuade us that the broadest
reasonable interpretation in light of the specification should be narrower
than this. The words “relatively low” introduce imprecision into the
meaning of the claim, rather than eliminate it, because it is not clear to what
the properties are compared or how low is low enough.
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The specification passages DSM cites for numerical ranges of
modulus and Tg do not cure this problem, because they are too imprecise to
amount to special definitions. The passages are reproduced below:
[Compositions after cure] having a modulus in the
lower range, for instance, from 0.1 to 10 MPa,
preferably 0.1 to 5 MPa, and more preferably 0.5
to less than 3 MPa are typically suitable for inner
primary coatings for fiber optics. In contrast,
suitable compositions for outer primary coatings,
inks and matrix materials generally have a
modulus of above 50 MPa, with outer primary
coatings tending to have a modulus more
particularly above 100 up to 1,000 MPa and matrix
materials tending to be more particularly between
about 50 MPa to about 200 MPa.

Ex. 1001, 10:58-67.
Thermal mechanical measurements can be used to
optimize the glass transition temperature (Tg)
which may be from 10° C. down to -70° C. or
lower for compositions formulated for use as inner
primary coatings and 30° C. to 120° C. or higher,
more preferably above 40° C., for compositions
designed for use as outer primary coatings, inks
and matrix materials.

Id. at 11:6-12.
First, DSM does not explain which of the several exemplary ranges
disclosed for modulus of inner primary coatings is applicable to the claim
construction. Moreover, the specification describes those exemplary ranges
merely as being “typically suitable.” While this passage can be taken as an
indication that compositions after cure having moduli in the disclosed ranges
are within the claim scope, it does not indicate whether moduli outside the
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range are beyond the claim scope. The passage does not amount to a special
definition because it lacks reasonable precision. See In re Paulsen, 30 F.3d
at 1480.
With regard to Tg, the specification again is imprecise, because it
states that Tg “may” be in some range. The term “may” indicates that the
value can, but need not, be in the disclosed range. Moreover, the range is
not specified unambiguously, because the lower bound is given as “-70° C.
or lower.” This could mean that there is no lower bound at all. DSM has
not explained how this ambiguous disclosure amounts to a reasonably
precise definition. Id.
For these reasons, we construe “an inner primary optical fiber coating
composition,” as that term appears in claim 5, to mean “capable of being
used to form an inner primary optical fiber coating.”
7. “Outer primary optical fiber coating composition” (claim 6)
For reasons analogous to those given above, we construe “an outer
primary optical fiber coating composition,” as that term appears in claim 6,
to mean “capable of being used to form an outer primary optical fiber
coating.”
8. “An elongation at break” (claim 15)
Corning argues that curing under any conditions, followed by an
elongation at break test protocol satisfying the recited conditions, meets this
limitation. Pet. 21-22. Corning argues, nevertheless, that it followed the
curing and elongation-at-break testing procedure as specified at column 15,
line 5 to column 16, line 15 in the ’255 patent when testing the prior art
compounds for elongation at break. Pet. 34 (citing Ex. 1007 ¶¶ 21-26).
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DSM argues that the limitation should be construed as requiring that the
samples be fully cured by ultraviolet radiation, not simply under any
conditions. Resp. 15-16 (citing Ex. 2026 ¶ 50). DSM argues further that the
’255 patent describes how to determine cure speed, at column 14, line 50 to
column 15, line 3. Id. at 16 (citing Ex. 2026 ¶ 50).
Whatever other measurement protocols this limitation encompasses, it
certainly encompasses at least the one measurement protocol that the ’255
patent provides for curing and measuring elongation at break. See Oatey,
514 F.3d at 1276. DSM has not explained the relevance of the “cure speed”
disclosure to the construction of the “elongation at break” limitation. The
limitation requires no further construction.
9. “A modulus of above 50 MPa”; “a modulus in the range of
0.1 to 10 MPa” (claims 18 and 19, respectively)
The parties agree that these limitations encompass measurements at
least of tensile modulus, also known as Young’s modulus, as described in
the ’255 patent. Pet. 23; Resp. 16 (both citing Ex. 1001, 15:5-16:4).
Whatever other measurement protocols this limitation encompasses, it
certainly encompasses at least the one measurement protocol that the ’255
patent provides for curing and measuring tensile modulus. See Oatey, 514
F.3d at 1276. The limitation requires no further construction.
B. Reliability of Dr. Winningham’s testimony
DSM argues that Dr. Winningham’s opinions are unreliable because
he “fails to understand” the legal standards for obviousness. Resp. 48-50.
In particular, DSM argues that Dr. Winningham gave no consideration to the
relevant time period when making obviousness determinations. Id. DSM
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quotes the following portion of Dr. Winningham’s deposition in support of
this argument:
Q. Does the time, does the year make any
difference in terms of who that skilled
scientist would be in that relevant art?
A. I’m not making that distinction.
Q. So at any time?
A. Yes.
Id. (quoting Ex. 2023, 424:18-23).
Corning dismisses this argument as “hypertechnical” and argues that
Dr. Winningham made a thorough analysis of the evidence. Reply 11-12.
We address the admissibility of Dr. Winningham’s testimony below in
our decision on DSM’s motion to exclude evidence. To the extent that
DSM’s argument goes to the weight to be accorded Dr. Winningham’s
testimony, it is not persuasive. DSM identifies no particular instances in
which Dr. Winningham’s silence as to the relevant time period weakens his
testimony. We agree with Corning that the thoroughness of
Dr. Winningham’s testimony outweighs the relatively minor concern DSM
expresses. We also are not persuaded that Dr. Winningham made the
admission in deposition that DSM argues. DSM’s question appears to
address whether Dr. Winningham made any distinctions about the
qualifications and experience of a skilled scientist over time, not whether
Dr. Winningham based his obviousness opinions on the knowledge of that
skilled scientist at the time the invention was made. We do not find
Dr. Winningham’s supposed admission relevant to the issue of whether he
failed to consider the relevant time period in his obviousness opinions.
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C. Obviousness Based on Bishop
1. Obviousness of claims 1-7, 12-17, and 19 over Bishop and
Trapasso
Overview of Bishop
Bishop relates to optical glass fiber coatings curable by ultraviolet
light. Ex. 1002, 1:11-15. Bishop describes the incorporation of various
organofunctional silanes to improve adhesion of the coating to glass fiber in
humid environments, including gamma-mercaptopropyl trimethoxy silane.
Id. at 1:45-46.5 Bishop describes several coating compositions based on
“Desolite 950-030,” which is described as containing urethane acrylate
oligomer, N-vinyl pyrrolidone, phenoxyethyl acrylate, diethoxyaceto-
phenone, and phenothiazine. Id. at 3:9-12. The urethane acrylate oligomer
is described as being constituted by polypropylene glycol, among other
things. Id. at 3:12-20.6 The urethane acrylate oligomer is radiation-curable,
as may be inferred from Bishop’s disclosure of subjecting the Desolite 950-
030 coatings to ultraviolet radiation. Id. at 5:40-47. Among the coatings
based on Desolite 950-030 is one, identified as “Example 4.4” by Corning
(Pet. 28), which further contains mercaptopropyl trimethoxy silane.
Ex. 1002, 6:13-18. The diethoxyacetophenone in Desolite 950-030 is

5 Bishop’s disclosure of mercaptopropyl trimethoxy silane as a mercapto
functional silane adhesion promoter in optical fiber coatings is
acknowledged in the ’255 patent at col. 10, ll. 34-36.
6 The ’255 patent indicates that oligomers made from polypropylene glycol
contain polyether groups. Ex. 1001, 3:58-4:11.
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identified as a photoinitiator, id. at 4:38-39, and Bishop discloses that
photoinitiators may be used in mixtures, id. at 4:43-44.
Overview of Trapasso
Trapasso discloses the use of organotin-catalyzed transesterification
reactions for producing acrylate ester monomers, including phenoxyethyl
acrylate. Ex. 1004, 1:11-21; 16:15-34. Trapasso explains that the esters
have many commercial applications, including as UV coatings and as
reactive diluents for radiation curable oligomers. Id. at 1:22-35. Trapasso
discloses that the acrylate ester monomers, thus prepared, have purity levels
greater than about 95% (id. at 5:20-30) and contain less than 100 ppm of
organotin catalyst (id. at 11:24-27). Trapasso also discloses that the high-
purity transesterified esters have lower color and enhanced cure rates
compared to esters made by direct esterification. Id. at 3:18-21; 5:33-35.
Analysis
Corning contends that claims 1-7, 12-17, and 19 would have been
obvious over Bishop’s Example 4.4 modified by Trapasso’s disclosure of
high-purity transesterified phenoxyethyl acrylate. Pet. 32. We address the
challenged claims in turn.
a. Claim 1
Corning argues that Bishop’s Example 4.4 inherently possesses all the
material property limitations required by claim 1, as demonstrated by testing
recounted in Ms. Kouzmina’s declaration. Pet. 28-29. According to
Corning, Trapasso suggests the desirability of using high-purity
transesterified phenoxyethyl acrylate esters, which have known commercial
uses as, e.g., reactive diluents for radiation curable oligomers, due to their
lower color and improved cure rate. Pet. 30-31 (citing, inter alia, Ex. 1004,
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3:18-30). Corning concludes that one of ordinary skill in the art would have
found it obvious to use Trapasso’s high-purity esters in Bishop’s optical
coating compositions to obtain these benefits. Pet. 31.
With regard to the requirement in claim 1 that the composition when
cured have “a ΔE value of less than 20 when exposed to low intensity
fluorescent light for a period of ten weeks,” Corning acknowledges that the
references do not disclose this property, and instead, argues that the evidence
in Ms. Kouzmina’s declaration demonstrates it to be inherent in Bishop’s
Example 4.4. Pet. 28-29. Ms. Kouzmina states that Example 4.4 was
prepared “pursuant to the instructions contained in Bishop.” Ex. 1007 ¶ 5.
The phenoxyethyl acrylate used was prepared by direct esterification without
organotin catalyst, not by transesterification, and the resulting monomer had
a purity of about 90.4%. Ex. 1007 ¶ 7 n.3. Ms. Kouzmina states that color
change tests were conducted on the Example 4.4 composition “in accordance
with the procedures set forth in the ’255 patent at 16:16–38.” Ex. 1007 ¶ 18.
The procedure is summarized in paragraph 19 of the Kouzmina Declaration.
Results are presented in Table A and show that Example 4.4 had a ΔE value
of 8.3 (average of three samples). Ex. 1007 ¶ 20.
Corning acknowledges that the Example 4.4 composition as made and
tested does not satisfy the claim limitation that the monomer have a purity
level of greater than 95%. Pet. 29. Corning contends, however, that because
the resulting composition already satisfies the ΔE limitation, and because
Trapasso’s high-purity monomer has a lower color than that used in
Example 4.4, the composition that would result from modifying Example 4.4
to include Trapasso’s high-purity monomer would be expected to continue
to satisfy the ΔE limitation. Pet. 31. Corning further supports the argument
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that there would have been a reasonable expectation of success with
evidence from Dr. Winningham that “[s]killed scientists would have
recognized that the beneficial properties Trapasso sets forth with regard to
its esterified products have a clear benefit in coatings for optical fibers.”
Ex. 1006 ¶ 107.7
DSM makes several arguments in response: (1) the different
impurities that result from transesterification compared to direct
esterification may have affected Corning’s measured ΔE values, such that
Corning’s test results indicate nothing about whether the asserted
combination of Bishop and Trapasso would have possessed the claimed ΔE
value (Resp. 24-30); (2) one of ordinary skill would not have had reason to
combine Bishop and Trapasso (Resp. 30-32); and (3) one of ordinary skill
would not have had a reasonable expectation of success to achieve the
claimed compound from combining Bishop and Trapasso (Resp. 32-35).
We address these arguments in turn.

7 Dr. Winningham states that a “skilled scientist in the art of fiber optic
coatings is a person with at least a masters degree in chemistry or material
science and engineering, and 5 years of experience in the research,
development, or manufacture of optical fiber coatings.” Ex. 1006 ¶ 8.
Dr. Bowman states that a person of ordinary skill would have a B.S. degree
in chemistry, chemical engineering, materials science, or a related field, and
3-5 years’ post-graduate experience, including experience in
photopolymerization, molecular synthesis, polymer characterization,
polymer chemistry, and optical fibers. Ex. 2026 ¶ 42. We adopt
Dr. Bowman’s description of the level of one of ordinary skill, because it is
reasonable and is not challenged by Corning.
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(1) Impurities
DSM argues that Bishop’s Example 4.4 does not disclose expressly
the “transesterified monomer” and “monomer has a purity level of greater
than 95%” limitations of claim 1. Resp. 24-25. DSM argues further that
Corning’s experts did not know what impurities contaminated their
reproduction of Bishop’s Example 4.4. Id. at 25 (citing Ex. 2026 ¶ 77;
Ex. 2022, 370:13-24; Ex. 2017, 266:6-17). According to DSM,
Dr. Winningham acknowledged that there may have been color bodies and
unreactive diluents present, as a result of using a monomer prepared by
direct esterification, and that those impurities may have been different from
the impurities that would have been introduced by using a monomer
prepared by transesterification. Id. (citing Ex. 2022, 369:11–372:20;
Ex. 2026 ¶ 77 (quoting Ex. 2022, 364:3–365:7)). DSM argues that
Corning’s test data does not show that Bishop, or Bishop modified to
include Trapasso’s transesterified monomer, meets the claimed ΔE value,
because Corning did not show that its reproduction necessarily contained the
same contaminants that the claimed composition would have. Id. at 25-26
(citing Ex. 2026 ¶ 78).
DSM also argues that Corning has not established that the monomer it
used in preparing samples for testing accurately reflects the purity and
composition of the monomer as it existed at the time of invention in 1998.
Resp. 26 (citing Ex. 2026 ¶ 79).
Corning argues, in reply, that creating and testing the composition
resulting from the combination of Bishop and Trapasso would not have been
appropriate, because such a composition did not actually exist in the prior
art. Reply 2-3. Corning argues that it demonstrated that Bishop’s Example
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4.4 satisfied the ΔE value claimed and that, pursuant to Dr. Winningham’s
testimony, one of ordinary skill would reasonably expect it to continue to
satisfy the ΔE value once modified to include a monomer prepared by
transesterification. Reply 3-4. Regarding DSM’s argument that the
monomers Corning used might not have resembled those available in 1998,
Corning cites Dr. Winningham’s responsive declaration as evidence that
(a) Corning used phenoxyethyl acrylate and isobornyl acrylate monomers
supplied by Sartomer in preparing its samples, and (b) Dr. Winningham
contacted a representative of Sartomer, who confirmed that these monomers
are made the same way now (November 2013) as they were then. Reply 4-5
(citing Ex. 1029 ¶¶ 30-32). DSM dismisses this evidence as based on
inadmissible hearsay (Paper 63 ¶ 3).
DSM’s argument that impurities make Corning’s ΔE measurements
unreliable is not persuasive, because it fails to address Corning’s basic
proposition of unpatentability. Corning’s principal evidence of the
obviousness of combining Bishop and Trapasso comes from Trapasso itself:
that Trapasso recognized the use of monomers as diluents in radiation-
curable coating compositions, identified various benefits of the substitution
of transesterified monomers for direct-esterified monomers, and addressed
the same particular monomers as Bishop, including phenoxyethyl acrylate.
See Pet. 30-31 (citing, inter alia, Ex. 1004, 3:18-30). Corning uses the ΔE
testing data not for showing a rationale to combine, but rather in partial
support of its argument that one of ordinary skill would have had a
reasonable expectation of success. See Pet. 30-31. Corning also relies on
the fact that Trapasso describes an improved synthesis of the same monomer
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Bishop uses in Example 4.4—phenoxyethyl acrylate—to argue reasonable
expectation of success. See Pet. 31.
DSM’s argument does not credibly undermine Corning’s evidence
that one of ordinary skill in the art would have had a reasonable expectation
of success in substituting Trapasso’s purer version of phenoxyethyl acrylate
for that described in Bishop. DSM’s argument is also speculative.
Dr. Bowman states that direct esterification and transesterification result in
different impurities, and Dr. Bowman and Dr. Winningham agree that those
impurities may have effects on color (see, e.g., Ex. 2026 ¶ 56; Ex. 2022,
371:14-372:20). But DSM has not cited credible evidence that these
differences, even if assumed to exist, would have led one of ordinary skill to
doubt that the ΔE value would remain within the scope of claim 1 after
substituting Trapasso’s phenoxyethyl acrylate for Bishop’s.
DSM’s argument that Corning failed to show that the “modern”
monomers it used were substantially the same as those available in 1998 is
unpersuasive because it is entirely speculative. DSM cites no credible
evidence on which to base its theory that phenoxyethyl acrylate and
isobornyl acrylate are made any differently now than then.
In all, DSM’s attacks on the probative value of Corning’s replication
and testing of Bishop’s Example 4.4 do not identify a defect in Corning’s
theory of unpatentability, which, at heart, does not depend on the testing
evidence.
(2) Reason to combine
DSM argues that nothing in Trapasso would have suggested that use
of transesterified phenoxyethyl acrylate would have reduced the ΔE value
after cure and aging. Resp. 30-32 (citing Ex. 2026 ¶¶ 86, 91; Ex. 1006
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¶ 107). In particular, DSM argues that transesterification requires additional
steps for synthesis and purification compared to direct esterification. Id. at
30. DSM argues that these additional steps “may be disadvantageous from a
cost and feasibility perspective and discourage the use of transesterification
relative to direct esterification in the absence of any other benefits.” Id.
DSM concludes that these difficulties would have taught away from
employing transesterified monomers in Bishop’s Example 4.4 coating. Id. at
30-31. Dr. Bowman echoes these arguments word-for-word. Ex. 2026 ¶ 91.
DSM argues that Trapasso fails to identify any benefits of transesterified
monomers for use in fiber optic coatings or for post-cure properties such as
elongation or ΔE, a fact specifically noted in the ’255 patent. Resp. 30-31
(citing Ex. 1001, 2:20-33 (discussing Trapasso)). At most, says DSM,
Trapasso lauds transesterified monomers for their low color before cure and
improved double-bond functionality. Id. at 30 (citing Ex. 1006 ¶ 107
(discussing Ex. 1004, 3:18-30)).
Corning argues, in reply, that the benefits Trapasso identifies for using
transesterified monomers instead of directly esterified monomers are
relevant to the making of radiation-curable coating compositions and are
sufficient evidence that one of ordinary skill would have had a legitimate
technical reason to make the substitution. Reply 8-11. Corning also argues
that the reason to combine references need not be the same as the reasons
that led the inventor to the claimed subject matter. Reply 7 (citing In re
Fulton, 391 F.3d 1195, 1202 (Fed. Cir. 2004)).
We agree with Corning on this point. The disadvantages DSM
identifies are both speculative and not supported by credible evidence.
Dr. Bowman’s opinion as to the disadvantages of transesterification repeats
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DSM’s attorney argument word-for-word. Compare Resp. 30-31 with
Ex. 2026 ¶ 91. Dr. Bowman does not disclose underlying facts or data on
which his opinion is based; we give it, therefore, little weight. See 37
C.F.R. § 42.65(a).
The mere existence of disadvantages resulting from a modification,
moreover, does not refute the obviousness of the modification, especially
when the prior art indicates that the modification also offers an advantage.
Tradeoffs regarding features, costs, manufacturability, or the like, do not
necessarily prevent the combination. See Medichem, S.A. v. Rolabo, S.L.,
437 F.3d 1157, 1165 (Fed. Cir. 2006) (“[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”). The disadvantages DSM asserts, when set against
the advantages disclosed in Trapasso that Corning identifies, show at most
that the choice of transesterification may involve a trade-off of advantages
and disadvantages. This trade-off does not amount to a teaching away. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d at 1165.
We agree with Corning, as well, that the rationale put forward for
combining references need not follow the inventor’s reasoning for making
the invention. See In re Fulton, 391 F.3d at 1202. In this case, Corning has
identified credible reasons—set forth in Trapasso itself—for making the
proposed substitution. The prior art need not have appreciated properties
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that would have resulted from the combination and that the inventor touts as
particular benefits of the invention. In re Lintner, 458 F.2d 1013, 1016
(CCPA 1972). Although an appreciation in the prior art of the resulting
properties may bolster a finding of obviousness, it is not necessary. In re
Dillon, 919 F.2d 688, 697 (Fed. Cir. 1990) (en banc).8
(3) Expectation of success
DSM argues that one of ordinary skill in the art would not have had a
reasonable expectation to achieve a composition having the claimed ΔE
value after cure by modifying Bishop with Trapasso, because (a) Trapasso
does not teach that its monomers would reduce post-cure yellowing (citing
Ex. 2026 ¶ 86), (b) neither Trapasso nor Bishop says anything at all about
ΔE values; (c) Corning “has not presented any information that would
support that a properly made formulation of Bishop would have had” the
claimed ΔE value (citing Ex. 2026 ¶ 89); and (d) Corning’s ex post facto
testing of Bishop to determine a ΔE value for Bishop is impermissible,
because obviousness cannot be predicated on what was unknown at the time
of invention (citing In re Newell, 891 F.2d 899, 901 (Fed. Cir. 1989)).
Resp. 32-35.
DSM’s arguments are unpersuasive. Arguments (a) and (b)
essentially repeat argument (2) and are unpersuasive for the reasons

8 “Properties . . . are relevant to the creation of a prima facie case in the
sense of affecting the motivation of a researcher to make compounds closely
related to or suggested by a prior art compound, but it is not required . . . that
the prior art disclose or suggest the properties newly-discovered by an
applicant in order for there to be a prima facie case of obviousness.”
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discussed above. Corning’s position is not that one of ordinary skill in the
art would have thought to use Trapasso’s transesterified monomers in
Bishop’s coating composition in order to achieve a low ΔE value; rather,
Corning argues that one of ordinary skill would have thought to use
Trapasso’s monomers because of a natural preference to start with purer
reactants and to avoid the color problems that Trapasso says its monomers
avoid.
Argument (d) is an unelaborated reiteration of one of DSM’s
Preliminary Response arguments, which we found unpersuasive. As
explained in the Decision to Institute, Corning does not predicate its
obviousness challenges on the undisclosed latent property. That is, Corning
does not argue that the ΔE value itself provides the rationale for combining
prior-art references to reach the claimed subject matter. Corning instead
predicates the obviousness of combination upon express teachings in the
cited references as well as expert testimony. See Dec. 10-12.
As to argument (c), Dr. Bowman’s declaration paragraph 89 includes
the statement “Corning has not presented any information that would
support that a properly made formulation of Bishop would have [had the
ΔE] characteristic, . . . .” This statement is a word-for-word reproduction of
DSM’s argument in the Response. Compare Resp. 34 with Ex. 2026 ¶ 89.
Dr. Bowman does not disclose underlying facts or data on which his opinion
is based; we give it, therefore, little weight. See 37 C.F.R. § 42.65(a).
In its Supplemental Response, however, DSM asserts that “Corning’s
GPC [gel permeation chromatography] data does not prove that Corning
properly synthesized the prior art oligomers.” Supp. Resp. at 5. DSM
argues that the GPC data is relevant to this challenge, because Corning used
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oligomer RT-15 to replicate Bishop’s Example 4.4. Id. at 6 (citing Ex. 1034,
1005:18-19; Ex. 2029).
According to Dr. Bowman, when synthesizing an oligomer, the
presence of a significant amount of low molecular weight starting materials
would indicate an incomplete synthesis. Ex. 2037 (IPR2013-00052) ¶ 7.9
Dr. Bowman also states that unreacted starting materials can detrimentally
impact the functional properties of the resulting coating composition. Id. In
Dr. Bowman’s view, the starting materials of Corning’s sample co-eluted
with the tracer, which made it “difficult, if not impossible, to determine from
these [GPC] spectra whether the oligomer functionalization reaction is
complete in Corning’s oligomer compositions.” Id. ¶ 12. Dr. Bowman
estimates “there might be 30 or 40 percent of small molecular weight
compounds that are present in those [Corning oligomers].” Ex. 1030,
171:16-19.
Corning disagrees. Suppl. Reply 3. Dr. Sogah, an expert for Corning,
explains: “The main purpose of analyzing a GPC chromatogram that is run
on a GPC designed to assess oligomer formation is to see if oligomer peaks
appear in the high molecular-weight region of the chromatogram.” Ex. 1060
(IPR2013-00043) ¶ 56.10 Dr. Sogah states that a skilled polymer chemist
would not analyze the low molecular-weight region to confirm oligomer
formation. Id. ¶ 57. “Even if a skilled scientist were to focus on the low
molecular-weight region of the GPC chromatogram[,] . . . there is no

9 See supra note 2.
10 See supra note 2.
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information available in the Corning GPC chromatograms in this region to
indicate that the oligomer has not been properly formed.” Id. ¶ 58; see also
id. ¶¶ 59-60. In Dr. Sogah’s opinion, given the highly reactive nature of the
reagents used in the oligomer formation, together with the long reaction time
Corning used to prepare the oligomers, it would be “highly unlikely” that the
unreacted starting materials would be present in amounts of 30-40%, as
Dr. Bowman alleges. Id. ¶¶ 64-66. Dr. Sogah further points out:
Additionally, oligomers in general are fairly
viscous, to the point that this viscosity is
observable to the naked eye. Having 30-40%
unreacted HEA [the starting material], or any other
liquid, in the final product of an oligomer synthesis
would certainly affect the viscosity of the resulting
product. A skilled chemist with experience
synthesizing oligomers would immediately
recognize that such a resulting product does not
have the viscosity and other physical attributes
associated with a typical oligomer. For example,
HEA is volatile and has a very strong, pungent
odor which a skilled chemist would almost
certainly notice when handling this material. For
all the reasons stated above, I think it would be
highly unlikely that a skilled chemist with
experience in synthesizing oligomers would be
confused into thinking that the final “oligomer”
product being synthesized actually contained 30-
40% small molecular weight compounds, such as
unreacted HEA.
Id. ¶ 68.
We find Dr. Sogah’s explanation more persuasive. First, after
Corning submitted Dr. Sogah’s declaration rebutting Dr. Bowman’s opinion,
DSM cross-examined Dr. Sogah extensively, see Ex. 1037, but did not call
our attention to any of his deposition testimony in its Motion for
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Observations on Cross-examination of Corning Reply Declarants. See Paper
63.
More importantly, DSM’s scientists do not appear to have given much
consideration to the low-molecular-weight region of the GPC spectrum. See
Ex. 1030, 144:6-147:22. Indeed, when DSM’s scientist presented the
oligomer test data to Dr. Bowman, she did not include data of the low-
molecular-weight region. See id. at 146:12-15 (“So the one that I’m sure
had been done before it was the di -- the diisocyanate diacrylate. They had
run that before. She thought she knew where it should show up, but couldn’t
pull out that data.”); id. at 146:20-25 (“And I think the same thing was true
of the lauryl acrylate as was true of the diisocyanate diacrylate. She knew
from her experience where it would show up, but I again indicated I needed
more than her experience, that I wanted see that run as a sample itself . . . .”).
Dr. Bowman’s account confirms Dr. Sogah’s position, i.e., when analyzing a
GPC chromatogram to assess oligomer formation, a skilled polymer chemist
would focus on the oligomer peaks in the high-molecular-weight region, and
not the peaks of the starting materials or tracer in the low-molecular-weight
region. Ex. 1060 (IPR2013-00043) ¶¶ 56, 57.
We find that Corning has established that it properly prepared the
oligomer it used for testing. DSM has not presented enough evidence to
lead us to doubt the quality of Corning’s oligomer preparation.
Upon consideration of the arguments and evidence presented, we
determine that Corning has demonstrated the unpatentability of claim 1 for
obviousness over Bishop and Trapasso. We agree with Corning that Bishop
discloses all limitations of claim 1 except for a transesterified monomer
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having a purity level of greater than 95% and less than 100 ppm of an
organotin catalyst, and that Trapasso discloses the missing features.
We credit Dr. Winningham’s testimony that one of ordinary skill in
the art would have thought to use Trapasso’s transesterified monomer in
preparing Bishop’s radiation-curable coating composition Example 4.4,
because of the benefits Trapasso discloses, including lower color and
increased double-bond functionality. See Ex. 1006 ¶ 107 (citing Ex. 1004,
3:18-30). We also credit Dr. Winningham’s opinion that one of ordinary
skill would have had a reasonable expectation of success, because Trapasso
describes an alternative technique for producing exactly the same
monomer—phenoxyethyl acrylate—as is disclosed in Bishop’s Example 4.4
Id. ¶¶ 103-105, 108 (citing Ex. 1002, 3:6-20; 5:40-43; Ex. 1004, 16:14-34).
Dr. Bowman’s opposing testimony that Trapasso’s transesterified monomers
have disadvantages that would have discouraged their use, see Ex. 2026
¶ 91, is not credible, because it is speculative and unsupported by facts or
data. See 37 C.F.R. § 42.65(a).
In particular, we agree with Corning that the “ΔE value” limitation is
an inherent property for at least one composition that meets all other
limitations of claim 1, namely, Bishop’s Example 4.4 as modified to include
Trapasso’s transesterified phenoxyethyl acrylate. We need not rely on
Corning’s ΔE test data from the replicated Bishop’s Example 4.4. The ΔE
value would have emerged as a natural consequence of making the
combination, even though it might have remained latent and unrecognized.
The inventors of the ’255 patent did not create something unobvious merely
by recognizing a latent property in an otherwise obvious composition. See
In re Kao, 639 F.3d 1057, 1072 (Fed. Cir. 2011) (affirming holding of
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obviousness even where “the only claim element not expressly disclosed in
the prior art was the previously-unknown, yet inherent, . . . property.”).
Likewise, Corning did not have to show that the prior art recognized
the newly-appreciated property discovered by the inventors. See In re
Dillon, 919 F.2d at 693. It was enough for Corning to show that a single
composition within the scope of the claim would have been obvious; it did
not need to show that all compositions within the scope of the claim would
have been obvious. See In re Lintner, 458 F.2d at 1015 (“Claims which are
broad enough to read on obvious subject matter are unpatentable even
though they also read on nonobvious subject matter.”).
For these reasons, we determine that Corning has proved, by a
preponderance of the evidence, that claim 1 is unpatentable under 35 U.S.C.
§ 103(a) for obviousness over Bishop and Trapasso.
b. Claim 17
Claim 17 is the other independent claim in the ’255 patent and is
identical to claim 1 except that it eliminates the requirement for a silane
adhesion promoter and specifies that the transesterified monomer be selected
from a group consisting of phenoxyethyl acrylate, among others. Corning’s
arguments and evidence concerning claim 17 parallel those for claim 1: that
Bishop’s Example 4.4 possesses all limitations of claim 17 except the purity
of the phenoxyethyl acrylate, and that Trapasso’s disclosure of the benefits
of high-purity phenoxyethyl acrylate would have made the combination
obvious. Pet. 28-32. DSM does not direct any of its arguments specifically
to claim 17. Upon consideration of the arguments and evidence presented,
we determine that Corning has proved the unpatentability of claim 17 under
35 U.S.C. § 103(a) for obviousness over Bishop and Trapasso, by a
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preponderance of the evidence, for the same reasons given above with
respect to claim 1.
c. Claims 2-7, 12-16, and 19
DSM directs no arguments specifically to any of claims 2-7, 12-16,
and 19 with regard to the challenge for obviousness over Bishop and
Trapasso. We address these claims in turn.
(1) Claims 2, 3, 12, 13, and 14
These dependent claims each further specify chemical components of
the composition of claim 1. Claim 2 specifies that the oligomer is a urethane
(meth)acrylate oligomer, and claim 3 further specifies that the
(meth)acrylate oligomer of claim 2 comprises at least one polyether,
polycarbonate, hydrocarbon, or polyester group. Claim 12 specifies that the
monomer is phenoxyethyl acrylate, claim 13 specifies that the silane
adhesion promoter is a mercapto functional silane adhesion promoter, and
claim 14 specifies that the composition further includes a mixture of
photoinitiators.
Corning argues that the “urethane acrylate oligomer” in Bishop’s
Example 4.4 meets the limitations of claims 2 and 3. Pet. 32. As noted
above in II.A.3, we interpret “(meth)acrylate” to mean “methacrylate or
acrylate.” Bishop’s urethane acrylate oligomer therefore satisfies this
limitation. As to claim 3, Bishop discloses that the urethane acrylate
monomer is constituted by polypropylene glycol. Ex. 1002, 3:16.
Dr. Winningham testifies that polypropylene glycol contains a polyether
group. Ex. 1006 ¶ 110. We credit Dr. Winningham’s testimony and
determine that the polypropylene glycol in Bishop’s urethane acrylate
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monomer contains at least one polyether group and satisfies the limitation of
claim 3.
As to claim 12, Corning argues that both Bishop’s Example 4.4 and
Trapasso disclose the use of phenoxyethyl acrylate as the monomer. Pet. 33.
As to claim 13, Corning argues that Bishop’s Example 4.4 includes
mercaptopropyl trimethoxy silane, which is a mercapto functional silane.
Id.11 The limitations of both claims are met.
As to claim 14, Corning acknowledges that Bishop’s Example 4.4
contains only one photoinitiator—diethoxyacetophenone—but argues that
Bishop elsewhere discloses that “photoinitiators may be used singly or in
mixtures.” Pet. 34 (citing Ex. 1002, 4:43-45). Corning argues that it would
have been obvious to include a second photoinitiator in Example 4.4 in view
of Winningham’s declaration evidence that it is “common to use multiple
photoinitiators” having strong absorbances in different areas of the light
spectrum in order to make efficient use of the curing radiation and “increase
the cure rate or cure speed.” Pet. 34 (quotations from Ex. 1006 ¶ 26). We
credit Dr. Winningham’s testimony and determine that it would have been
obvious to modify Bishop’s Example 4.4 to include multiple photoinitiators
in order to make efficient use of the curing radiation.
(2) Claims 4-7
Claims 4-6 each depend from claim 1 and specify that the
composition of claim 1 is “a fiber optic coating composition,” “an inner
primary optical fiber coating composition,” or “an outer primary optical

11 See supra note 5.
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fiber coating composition,” respectively. Claim 7 is directed to “a coated
fiber optic” having a cured coating formed from the composition of claim 1.
Corning argues that claims 4-6 state mere intended uses of the
composition and, therefore, do not further limit claim 1. We disagree with
Corning, as discussed above at II.A.5-7, and construe each of these terms as
requiring that the composition be capable of being used to form the recited
type of coating.
Alternatively, with respect to claims 4 and 5, and also as to claim 7,
Corning argues that Bishop expressly discloses the use of Example 4.4 as an
optical fiber coating that would be recognized as an “inner primary” coating
because it directly contacts the glass fiber. Pet. 32-33 (citing Ex. 1002,
1:31-34; Ex. 1006 ¶¶ 112-113). DSM agrees that an inner primary coating
contacts the glass fiber and cites Dr. Winningham’s testimony on this point
with favor. Resp. 19 (citing Ex. 1006 ¶ 15; Ex. 2024, 768:23-25). We credit
Dr. Winningham’s testimony and determine that claims 4, 5, and 7 would
have been obvious over Bishop and Trapasso.
Corning makes no alternative argument as to claim 6. We determine,
therefore, that Corning has not demonstrated the unpatentability of this claim
for obviousness over Bishop and Trapasso by a preponderance of the
evidence.
(3) Claims 15, 16, and 19
These claims specify further material properties. Claim 15 depends
from claim 14 (which depends from claim 1) and requires that the
composition have “an elongation at break of at least 110%.” Claim 16
depends from claim 1 and requires that the monomer have “an APHA value
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of less than 40.” Claim 19 depends from claim 17 and requires that the
composition, after cure, have “a modulus in the range of 0.1 to 10 MPa.”
Regarding claims 15 and 19, Corning argues that its testing of
Bishop’s Example 4.4 reveals it to have an elongation at break of 124% and
a Young’s modulus of 2.4 MPa. Pet. 34-36; Ex. 1007 ¶¶ 26-27. Corning
argues that modifying Bishop’s Example 4.4 to have higher-purity
phenoxyethyl acrylate would not be expected to affect these measurements.
Pet. 34-36; Ex. 1006 ¶¶ 118, 119. We credit the testimony of Ms. Kouzmina
and Dr. Winningham on these points.
Regarding claim 16, Corning points out that Trapasso discloses that
its transesterified phenoxyethyl acrylate has an APHA value of 5. Pet. 35
(citing Ex. 1004, 16:14-35). We agree that the monomer of Bishop’s
Example 4.4, if substituted by phenoxyethyl acrylate as disclosed by
Trapasso, would have possessed an APHA value within the claimed limit.
For these reasons, we conclude that Corning has demonstrated the
unpatentability of claims 1-5, 7, 12-17, and 19, but not claim 6, under 35
U.S.C. § 103(a) for obviousness over Bishop and Trapasso, by a
preponderance of the evidence.
2. Obviousness of claim 6 over Bishop, Trapasso, and Szum
Claim 6 specifies that the composition of claim 1 is “an outer primary
optical fiber coating composition.” As discussed above at II.A.7, we
construe this claim as requiring that the composition is capable of being used
to form an outer primary optical fiber coating composition. Corning argues
that claim 6 would have been obvious over Bishop and Trapasso in view of
Szum’s disclosure that when optical fibers have two coatings, the coatings
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may be the same. Pet. 37 (citing Ex. 1003, 4:40-47; Ex. 1006 ¶ 123).
Corning argues that Szum teaches that an inner primary coating composition
such as Bishop’s Example 4.4 may also be used to form an outer primary
coating composition. Id.
DSM argues that Bishop is directed exclusively to inner primary
coating compositions because Bishop’s compositions include an adhesive
for sticking to the glass fiber when placed in contact with it. Resp. 35-37
(citing Ex. 2026 ¶¶ 94, 96-98). DSM argues that Bishop does not disclose
the suitability of its compositions for outer primary coating use and that one
of ordinary skill would not be motivated to use them for that purpose. Id.
DSM’s arguments are not persuasive, because they do not address
Corning’s proposition of unpatentability. Corning does not rely on Bishop
for the rationale to use Bishop’s Example 4.4 as an outer primary coating
composition; rather, it relies upon Szum for the teaching that the same
composition may be used to form both inner and outer primary coatings.
See Pet. 37. DSM acknowledges the disclosure in Szum on which Corning
relies but does not explain how Szum is mistaken or why Corning errs in
relying upon the cited passage. In particular, DSM does not cite credible
evidence to overcome the teaching by Szum that the inclusion of an
adhesion promoter in Bishop’s compositions, including Example 4.4, makes
these compositions suitable for use to form outer primary coating
compositions.
For these reasons, we determine that Corning has demonstrated the
unpatentability of claim 6 under 35 U.S.C. § 103(a) for obviousness over
Bishop, Trapasso, and Szum, by a preponderance of the evidence.
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3. Obviousness of claims 8-11 over Bishop, Trapasso, Jackson,
and Szum
Claims 8-11 relate to fiber optic ribbon assemblies in which the
composition of claim 1 serves various roles. Corning argues that these
claims recite non-limiting statements of intended use, and even if such
statements are considered limitations, the claims would have been obvious
over Bishop, Trapasso, and Szum in view of Szum’s and Jackson’s
disclosures that optical fibers may be ribbonized (citing Ex. 1003, 5:18-19,
29-33; Ex. 1005, 1:11-18), that a coating composition may include a
colorant (citing Ex. 1005, 7:21-24), that colorants are also termed “inks”
(citing Ex. 1005, 3:44-47), and that fibers can be bound in the ribbon by a
UV-curable matrix composition that resembles the primary coating of the
fibers (citing Ex. 1005, 3:3-6; 5:37-42; 8:23-34). Pet. 38-40 (also citing
Ex. 1006 ¶¶ 125-128 (citing Ex. 1006 ¶ 64)).
In response to this challenge, DSM relies upon its arguments
concerning the challenge to claim 1 over Bishop and Trapasso and the
challenge to claim 6 over Bishop, Trapasso, and Szum. Resp. 37 (citing
Ex. 2026 ¶¶ 100-101). DSM directs no arguments to claims 8-11. Upon
consideration of the parties’ arguments and evidence, we are persuaded that
it would have been obvious to incorporate the claimed coating composition
in a ribbon assembly, in view of Szum’s and Jackson’s disclosures that
optical fibers may be ribbonized. We also agree that it would have been
obvious to color the composition or to use it to form a matrix material, in
view of Jackson’s disclosure that these are typical uses for optical fiber
coatings. We credit Dr. Winningham’s testimony that a coating composition
containing a colorant constitutes an ink. See Ex. 1006 ¶ 64.
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For these reasons, we determine that Corning has demonstrated the
unpatentability of claims 8-11 under 35 U.S.C. § 103(a) for obviousness
over Bishop, Trapasso, Jackson, and Szum, by a preponderance of the
evidence.
D. Obviousness based on Szum
1. Obviousness of claims 1-8, 12-14, and 16-19 over Szum and
Trapasso
Overview of Szum
Szum discloses “improved curable coating compositions for glass
substrates and . . . glass substrates, such as optical fibers, coated with the
compositions.” Ex. 1003, 1:11-13. Szum teaches several examples of
compositions, some of which are described as inner primary fiber optic
coatings, and others of which are described as outer primary fiber optic
coatings. Id. at 10:17-13:45. Among them is “Example 1,” which includes a
radiation-curable oligomer (formed from 2-hydroxy ethyl acrylate, toluene
diisocyanate, and a polypropylene glycol diol), an esterified monomer
(phenoxyethyl acrylate), a single photoinitiator (1-hydroxycyclohexyl
phenyl ketone), and a mercapto functional silane adhesion promoter (gamma
mercaptopropyl trimethoxy silane), among other things. Id. at 10:16-33.
Szum’s Example 4 includes a radiation-curable oligomer (formed from 2-
hydroxy ethyl acrylate, toluene diisocyanate, and a polytetramethylene
glycol diol), an esterified monomer (phenoxyethyl acrylate), and two
photoinitiators (1-hydroxycyclohexyl phenyl ketone and 2,4,6-trimethyl
benzoyl diphenyl phosphine oxide), among other things. Id. at 11:11-29.
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Analysis
Corning contends that claims 1-8, 12-14, and 16-19 would have been
obvious over Szum’s example compositions modified by Trapasso’s
disclosure of high-purity transesterified phenoxyethyl acrylate. Pet. 40-50.
Specifically, Corning argues that claim 1 would have been obvious over
Szum’s Example 1 modified by Trapasso, and claim 17 would have been
obvious over any of Szum’s Examples 1, 2, or 4, modified by Trapasso. Id.
at 42. The argument is largely analogous to that based upon Bishop’s
Example 4.4 as modified by Trapasso. Ms. Kouzmina testified that the
Szum example compositions were synthesized and subjected to tests to
determine their material properties, including ΔE value (claim 1) and
modulus. We address the challenged claims in turn.
a. Claim 1
Just as it argued in the Bishop/Trapasso challenge, Corning here
argues that Szum’s Example 1 meets all chemical limitations of claim 1
except that of the monomer having a purity level of greater than 95%, and
that it meets the ΔE limitation, after cure, as evidenced by testing.
Pet. 40-45. Ms. Kouzmina describes the preparation of the Szum examples
in paragraphs 9-17 of her Declaration and the testing for ΔE in paragraphs
18-20. The results of testing are reported in paragraph 20 and indicate that
Szum’s Example 1 has a ΔE value of 5.9, which is less than 20, as required
by claim 1. Ex. 1007 ¶ 20.
Corning argues that it would have been obvious to substitute
Trapasso’s high-purity monomers for those used in Szum’s Example 1, for
reasons analogous to those given in the Bishop/Trapasso challenge.
Pet. 43-44. DSM’s arguments opposing this challenge are nearly identical in
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reasoning to those given in response to the Bishop/Trapasso challenge.
Resp. 37-48. They are equally unpersuasive here, for reasons analogous to
those discussed above at II.C.1.a. The only new argument appears on pages
41-42 of the Response, in which DSM argues that Szum does not specify
how the phenoxyethyl acrylate is to be synthesized, and that it is possible to
have made it in the presence of an organotin catalyst, such that residual
catalyst would have exceed the 100 ppm limit claimed. Resp. 41-42 (citing
Ex. 2022, 357:18-23; Ex. 1004, 1:11-14; Ex. 2026 ¶ 111). This argument is
also unpersuasive, because it is not directed to Corning’s basic proposition
of unpatentability. Corning relies on Trapasso’s specific teaching that
monomers can be prepared by transesterification such that less than 100 ppm
of organotin catalyst remains. See Pet. 42:13-15 (citing Ex. 1004, 11:24-27).
DSM also argues, in its Supplemental Response, that Corning did not
prove that it formulated oligomer RT-05 (Szum’s Examples 1 and 2) or
oligomer RT-32 (Szum’s Examples 4) correctly. Suppl. Resp. 6 (citing
Ex. 1034, 1004:24-25, 1007:8-15; Exs. 2030-2034). We are not persuaded
by this argument, for reasons given above at II.C.1.a(3).
Upon consideration of the arguments and evidence presented, we
determine that Corning has demonstrated the unpatentability of claim 1 for
obviousness over Szum and Trapasso, for essentially identical reasons as
discussed above with regard to the challenge based on Bishop and Trapasso.
We agree that the references, taken together, disclose all limitations of claim
1, and that the “ΔE value” limitation is an inherent property that would have
emerged as a natural consequence of making the combination, even though
it might have remained latent and unrecognized. See In re Kao, 639 F.3d at
1072.
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For these reasons, we determine that Corning has proved that claim 1
is unpatentable under 35 U.S.C. § 103(a) for obviousness over Szum and
Trapasso, by a preponderance of the evidence.
b. Claims 2-8, 12-14, and 16
Regarding claims 2 and 3, we agree with Corning that the oligomer in
Example 1 is an acrylate and that it includes at least one polyether group by
virtue of its containing polypropylene glycol. As to claims 4-8, we agree
with Corning that Szum discloses the use of its compositions for making
fiber optic coatings, inner primary coatings, outer primary coatings, and
ribbon assemblies. We agree with Corning that the phenoxyethyl acrylate in
Example 1 meets the recitation of claim 12 and that the gamma
mercaptopropyl trimethoxy silane meets the recitation of claim 13. We are
persuaded by Corning’s argument regarding claim 14 that it would have
been obvious to modify Example 1 to include a second photoinitiator, for
reasons given above in II.C.1.c(1). As to claim 16, we are persuaded by
Corning’s argument that Szum’s Example 1, if modified to include
Trapasso’s high-purity phenoxyethyl acrylate, would include a monomer
that has an APHA value of less than 40. See II.C.1.c(3), supra.
c. Claims 17-19
Corning’s arguments and evidence concerning claim 17 parallel those
for claim 1: that Szum’s Examples 1, 2, or 4 each possess all limitations of
claim 17 except the purity of the phenoxyethyl acrylate, and that Trapasso’s
disclosure of the benefits of high-purity phenoxyethyl acrylate would have
made the combination obvious. Pet. 40-45. DSM does not direct any of its
arguments specifically to claim 17. Upon consideration of the arguments
and evidence presented, we determine that Corning has proved the
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unpatentability of claim 17 under 35 U.S.C. § 103(a) for obviousness over
Szum and Trapasso, by a preponderance of the evidence, for the same
reasons given above with respect to claim 1.
As noted above, the testing reported in Ms. Kouzmina’s declaration
shows that Example 1 has a ΔE value of 5.9, which is within the limit recited
in claim 17. See Ex. 1007 ¶¶ 18-20. Example 1 otherwise meets the
chemical limitations of claim 17 if modified to include Trapasso’s high-
purity phenoxyethyl acrylate. Ms. Kouzmina also reports that tests of
replicated Szum’s Example 1 indicated a modulus of 4.6 MPa, which is
within the limit recited in claim 19. See Ex. 1007 ¶¶ 21-25, 27.
Ms. Kouzmina further reports that Szum’s Examples 2 and 4 were prepared
(Ex. 1007 ¶¶ 12-17) and tested for ΔE (¶¶ 18-20) and for modulus
(¶¶ 21-27). Testing shows that Example 2 has a ΔE value of 2.7, which is
within the limit recited in claim 17, and a modulus of 733 MPa, which is
within the limit of claim 18. Example 4 similarly has a ΔE value of 1.5,
which is within the limit recited in claim 17, and a modulus of 677 MPa,
which is within the range recited in claim 18.
For these reasons, we conclude that Corning has demonstrated the
unpatentability of claims 1-8, 12-14, and 16-19 under 35 U.S.C. § 103(a) for
obviousness over Szum and Trapasso, by a preponderance of the evidence.
2. Obviousness of claims 9-11 over Szum, Trapasso, and
Jackson
Corning argues that claims 9-11 are unpatentable for obviousness over
Szum, Trapasso, and Jackson for reasons similar to those given in the
challenge of these claims for obviousness over Bishop, Trapasso, Szum, and
Jackson. Pet. 50-51. DSM directs no arguments specifically to these claims.
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Resp. 48. Upon consideration of the parties’ arguments and evidence, we
are persuaded that these claims would have been obvious, for the same
reasons as given above in II.C.3.
III. MOTION TO AMEND
A. DSM’s Burden
An inter partes review is neither a patent examination proceeding nor
a patent reexamination proceeding. The proposed substitute claims, in a
motion to amend, are not entered automatically and then subjected to
examination. Rather, the substitute claims will be added directly to the
patent, without examination, if the patent owner’s motion to amend claims is
granted. The patent owner is not rebutting a rejection in an Office Action, as
though this proceeding were a patent examination or a patent reexamination.
Instead, the patent owner bears the burden of proof in demonstrating
adequate written description support and patentability of the proposed
substitute claims over the prior art, and thus entitlement to add these
proposed substitute claims to its patent.
B. Proposed Claims
DSM’s proposed claims are listed below, with additions underlined
and deletions struck-through:
Claim 20 (Proposed substitute for claim 1): A
radiation-curable composition comprising:
(i) a radiation-curable oligomer; and
(ii) at least one transesterified monomer, said
transesterified monomer having a purity level
of greater than 95% and less than 100 ppm of
an organotin catalyst;
(iii) a silane adhesion promoter;
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wherein said composition upon cure has a modulus
of 1.4 MPa or less and a ∆E value of less than
20 when exposed to low intensity fluorescent
light for a period of ten weeks.

Claim 21 (Proposed substitute for claim 15): The
composition of claim 14, wherein said
composition, after cure, has an elongation at
break of at least 110 130%.

Claim 22 (Proposed substitute for claim 19): The
composition of claim 17, wherein said
composition, after cure, has a modulus in the
range of 0.1 to 10 of 1.4 MPa or less.
Corr. Mot. to Amend 1-2.
C. Written Description
DSM states that support for the amendments may be found in the
original application (Ser. No. 09/163,188, Ex. 2028) as follows:
Proposed
claim
Limitation Citation to
Orig. Appl.
20 “modulus of 1.4 MPa or less” 33: Table 1
21 “elongation at break of at least
130%”
25:19-26:4
22 “modulus of 1.4 MPa or less” 33: Table 1
Corr. Mot. to Amend 2. DSM cites the Bowman Declaration, paragraphs
127-131, 139-142, and 149-154, as “further elaborat[ing]” on written
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description support.12 Id. Of those paragraphs, only paragraphs 130, 142,
153, and 154 directly address support for the limitations proposed to be
added.
1. “Modulus of 1.4 MPa or less”
This limitation appears in proposed claims 20 and 22. In its motion to
amend, DSM points to Table 1 as providing support for this limitation.
Corr. Mot. to Amend 2. Paragraphs 130, 153, and 154 of Dr. Bowman’s
declaration also relate to this limitation. In those paragraphs, Dr. Bowman
cites the following passage from the original application in support of the
proposed limitation:
The radiation-curable compositions of the
present invention may be formulated such that
the composition after cure has a modulus as low
as 0.1 MPa and as high as 2,000 MPa or more.
Those having a modulus in the lower range, for
instance, from 0.1 to 10 MPa, preferably 0.1 to
5 MPa, and more preferably 0.5 to less than 3
MPa are typically suitable for inner primary
coatings for fiber optics.
Ex. 2026 ¶¶ 130, 154 (citing Ex. 2028 25:10-14); Ex. 1001, 10:55-61.
In paragraphs 130 and 154, Dr. Bowman also states that the original
application provides “much additional support for and detailed discussions
relating to” the “1.4 MPa or less” limitation proposed for claims 20 and 22,
but he does not identify or explain what that support may be, beyond a

12 DSM’s relegation to a declaration of its detailed explanation of written
description amounts to an attempt to circumvent its page limit. We exercise
our discretion, nevertheless, and consider this evidence.
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Aside from bare assertions that this disclosure supports the proposed
limitation, DSM makes no credible argument for how the measurement of
this property in one example demonstrates possession of the genus of
compositions encompassed by the “modulus of 1.4 MPa or less” limitation.
See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349 (Fed. Cir.
2010) (“[T]he specification must demonstrate that the applicant has made a
generic invention that achieves the claimed result and do so by showing that
the applicant has invented species sufficient to support a claim to the
functionally-defined genus.”). DSM has not explained how a single
example is sufficient basis on which to base the proposed claim.
Other examples in the ’255 also exhibit a modulus of less than 1.4
MPa. In particular, Examples 2 and 3 in Table 2 are reported as having
moduli of 0.9 MPa and 1.1 MPa, respectively. Corr. Mot. to Amend 4;
Ex. 1001, 14:19-42. DSM argues that one of ordinary skill would recognize
the benefits of coatings having moduli in the range of 1.4 MPa to 0.9 MPa.
Corr. Mot. to Amend 5. But Examples 1, 2, and 3 do not provide sufficient
written description support for the proposed limitation, because more than
half the claimed modulus range is not exemplified. At best, Examples 1, 2,
and 3 might support a limitation of 0.9 MPa to 1.4 MPa (though we do not
make such a determination), but not the full scope of the proposed modulus
limitation set out in the substitute claims. See Ariad, 598 F.3d at 1349.
Nor do the “typically suitable” modulus ranges Dr. Bowman cites
from the ’255 patent provide adequate written description for the proposed
substitute claims. See Ex. 2026 ¶ 130, 154. The disclosed ranges are 0.1 to
2,000 MPa or more; 0.1 to 10 MPa; 0.1 to 5 MPa; and 0.5 to less than 3
MPa. Id. None of these ranges specifies the 1.4 MPa upper limit of the
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proposed substitute claim. Nor do any of the ranges indicate that the range
has no lower limit; they all instead specify a non-zero lower limit. DSM has
not explained persuasively how any of these ranges show possession of a
composition having a modulus in the proposed range. See In re Ruschig,
379 F.2d 990, 995 (CCPA 1967) (explaining need for “blaze marks” in the
specification to single out written description for claims narrowed by
amendment).
Nor has DSM explained persuasively how the generic disclosure, in
combination with the specific examples, provides adequate written
description support for the proposed subgenus modulus limitation set out in
the substitute claims. See In re Smith, 458 F.2d 1389, 1394-95 (CCPA
1972) (disclosure of genus and one species is not necessarily sufficient
description of intermediate subgenus).
DSM argues that Corning’s failure to refute Dr. Bowman’s
declaration evidence as to the proposed substitute claims is “fatal” to
Corning’s opposition. Amend Reply 1-2. We disagree. As the moving
party, DSM bears the burden of proof to establish that it is entitled to the
relief requested. See 37 C.F.R. § 42.20(c). As explained above, we have
determined that DSM’s argument and Dr. Bowman’s evidence do not
establish that the disclosure in the ’255 patent adequately supports the
proposed substitute claims. Corning’s failure to rebut DSM’s evidence does
not undercut our determination.
For these reasons, we determine the DSM has failed to show adequate
written description support for proposed substitute claims 20 and 22. We do
not reach the issue of whether DSM has shown patentability over the prior
art of proposed substitute claims 20 and 22.
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2. “Elongation at break of at least 130%”
This limitation appears in proposed substitute claim 21. In its motion
to amend, DSM points to page 25, line 19 through page 26, line 4 of the
application as filed as providing support for this limitation.
Corr. Mot. to Amend 2. Dr. Bowman also cites this portion of the
application in support of the limitation, as well as Table 2, on page 34 of the
application. Ex. 2026 ¶ 142. The passage on pages 25 and 26 discloses:
Elongation and tensile strengths of these
materials can also be optimized depending on
the design criteria for a particular use. For
cured coatings formed from radiation-curable
compositions formulated for use as an inner
primary coating on optical fibers, the
elongation is typically greater than 100 %, more
preferably the elongation is at least 110%, more
preferably 120%.
See also Ex. 1001 10:67-11:6. Table 2 lists two examples, of which only
one (Example 3) reports an elongation at break of at least 130%.
As with the modulus limitation of proposed claims 20 and 22, DSM
has failed to show that the ’255 patent provides adequate written description
for a claim that specifies an elongation at break of at least 130%. The
specification passage quoted above does not mention 130%. Neither DSM
nor Dr. Bowman explains how one of ordinary skill in the art would have
interpreted that passage as unambiguously disclosing a range of “at least
130%.” See In re Ruschig, 379 F.2d at 995. And being only one example in
a larger genus, Example 3 is insufficient, by itself, to demonstrate possession
of the full scope of the proposed substitute claim. See Ariad, 598 F.3d at
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1349. DSM’s argument that Corning failed to submit rebuttal evidence is
unpersuasive, as explained above.
For these reasons, we determine the DSM has failed to show adequate
written description support for proposed substitute claim 21. We do not
reach the issue of whether DSM has shown patentability over the prior art of
proposed substitute claim 21.
IV. MOTION TO EXCLUDE
A. Burden of the Moving Party
A party moving the exclusion of evidence bears the burden of proving
its entitlement to the relief requested. 37 C.F.R. § 42.20(c).
B. DSM’s Objections
DSM presents five objections to categories of evidence and requests
exclusion of each of those five categories. Mot. to Exclude 1-2.13 We
consider each objection in turn.
1. Testimony by Dr. Winningham Concerning ΔE
DSM seeks to exclude testimony by Dr. Winningham that the prior-art
coatings possess the claimed ΔE value. Mot. to Exclude 1. DSM identifies
the evidence to exclude as “found, for example, in paragraphs 101, 104, 120,
122, 124, 125, 128, 129, 134, 141, 154, 156, and 158 of Exhibit 1006 and
associated charts therein.” Id. n.1. DSM argues that the evidence should be

13 DSM presents a bulleted list of objections, rather than identifying them by
number. For purposes of this decision, we consider the objections as if
numbered in the order presented.
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excluded for unreliability, because Dr. Winningham failed to take into
account whether the impurities in the monomers Corning used to replicate
the prior-art coatings accurately represent the impurities in the monomers
available at the time the claimed invention was made. Id. at 3, 6-7. DSM
argues that this omission “fatally undermines” the basis of his testimony.
Id. at 7.
DSM’s challenge to this evidence suffers from several defects. First,
DSM does not identify properly the evidence it seeks to exclude. DSM lists
several paragraphs from Dr. Winningham’s Petition Declaration as
“example[s]” of evidence it seeks to exclude. See Mot. to Exclude 1. We
will not engage in guesswork, or scour the record, to determine what other
evidence falls within this category. Accordingly, we regard this category as
encompassing only those paragraphs identified by number in the motion.
Second, DSM’s motion fails to identify where in the record Corning
relies upon this evidence. See Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,767, Sec. K (Aug. 14, 2012). We require this information in
order to determine the effect that exclusion of the evidence will have on the
proponent’s case. DSM’s failure to identify where this evidence is relied
upon undermines our efforts to secure the just, speedy, and inexpensive
resolution of this proceeding. See 37 C.F.R. § 42.1(b).
Third, DSM does not make clear the nature of the unreliability it
asserts, i.e., whether the unreliability lies in the principles and methods
Dr. Winningham employed in producing the testimony, or in his application
of those principles and methods to facts of the case. See FED. R. EVID. 702.
In particular, DSM does not explain what principle Dr. Winningham
improperly employed or applied in failing to consider differences between
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the impurities of monomers made at the time of invention and of those made
now.
Fourth, DSM comes forward with no credible evidence to support its
objection. DSM relies only on the testimony of Dr. Bowman that Corning
provided no evidence that modern monomers mimic those available in 1998.
See Resp. 26 (citing Ex. 2026 ¶ 79). This testimony does not explain why
the absence of evidence on this issue undermines the reliability of
Dr. Winningham’s testimony to a degree requiring exclusion. In short, we
discern nothing in the record to indicate that DSM’s “now-versus-then”
objection is anything more than sheer speculation.
For these reasons, we overrule DSM’s first objection.
2. Testimony by Dr. Winningham Concerning Obviousness
DSM seeks to exclude testimony by Dr. Winningham concerning
obviousness of the challenged claims over various prior-art combinations.
Mot. to Exclude 1. DSM identifies the evidence to exclude as “found, for
example, in paragraphs 106-109, 110-119, 121, 123, 126-127, 129, 136-153,
155, 157, and 159 of Exhibit 1006 and associated charts therein.” Id. n.2.
DSM argues that Dr. Winningham’s testimony concerning obviousness is
unreliable because (a) Dr. Winningham does not explain the legal
framework he employed in reaching his opinions, including the level of
ordinary skill, and (b) he does not address the proper time frame for
assessing obviousness. Mot. to Exclude 5. DSM does not address issue (a)
further in its motion. As to issue (b), DSM argues that Dr. Winningham did
not attach any significance to the point in time at which obviousness is to be
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assessed, and did not appreciate that obviousness is to be assessed at the
time the invention was made. Id. (citing Ex. 2023 424:18-23).14
Corning argues that Dr. Winningham focused his analysis on
technology as it existed in November 1996, and that Dr. Winningham does
not rely on any knowledge gleaned after the September 1998 filing date of
the ’255 patent. Excl. Opp. 2 (citing Ex. 1006 ¶ 10). DSM responds that
Dr. Winningham admitted he did not take the prior time frame into account
and that in at least one instance, Dr. Winningham “appears to have relied”
on teachings in the ’255 patent in forming his opinion on obviousness.
Excl. Reply 2 (citing Ex. 2023 424:18-23; Ex. 1006 ¶¶ 38, 41-64, 108, 138).
DSM again identifies the challenged evidence by reference to
“example” paragraphs rather than with unambiguous specificity. We regard
DSM’s challenge as being limited to the particular paragraphs identified by
number and no others. DSM also does not identify where in its Petition
Corning relies on the challenged evidence.
We are not persuaded by DSM that Dr. Winningham failed to base his
obviousness testimony on a proper legal standard. Dr. Winningham
provided a detailed discussion of the state of the art prior to the filing of the
’255 patent (Ex. 1006 ¶¶ 8-31). We agree with Corning that
Dr. Winningham’s testimony was given with awareness of the filing date of
the ’255 patent (see Ex. 1006 ¶ 32) and with reference to the state of the art
prior to that time. See Ex. 1006 ¶ 10 (providing overview of relevant

14 The cited evidence is taken from the deposition of Dr. Winningham and is
reproduced in section II.B, above.
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technology as of November 1996). We are unpersuaded that
Dr. Winningham admitted to failing to take the correct time frame into
account for obviousness, as discussed above in section II.B.
We also are not persuaded by DSM’s arguments that
Dr. Winningham’s obviousness testimony is unreliable because he “appears
to have relied” on teachings from the ’255 patent to rationalize the asserted
prior-art combinations. The question of whether Dr. Winningham’s
opinions possibly were skewed by hindsight bias goes to the weight his
evidence is accorded, not its admissibility.
For these reasons, we overrule DSM’s second objection.
3. Dr. Winningham’s Responsive Declaration
DSM seeks to exclude the entirety of Dr. Winningham’s Responsive
Declaration (Ex. 1029) as exceeding the scope of reply and, with respect to
paragraphs 30-32, as hearsay and unreliable. Mot. to Exclude 1. DSM’s
argument in the motion does not, however, address any portion of
Dr. Winningham’s Responsive Declaration other than paragraphs 30-32.
We regard this challenge as being limited to those three paragraphs.
We do not rely on paragraphs 30-32 of Dr. Winningham’s Responsive
Declaration in our final written decision. Because we do not rely on that
evidence, we dismiss DSM’s third objection as moot.
4. Testimony by Dr. Winningham Concerning Preparation of
Prior-Art Coatings
DSM seeks to exclude testimony by Dr. Winningham that Corning
accurately reproduced certain prior-art examples of optical fiber coatings.
Mot. to Exclude 2. DSM identifies the evidence to exclude as “found, for
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example, in paragraphs 66 and 68-71 of Exhibit 1006” and “the testimony
(see above) relying on those samples.” Id. & n.2. DSM argues that this
testimony is unreliable because Dr. Winningham did not state that he
reviewed any underlying data in giving his opinions as to the fidelity of
Corning’s reproduction of the prior-art coatings. Mot. to Exclude 10. DSM
also argues that Corning did not disclose the underlying data in its petition,
contrary to 37 C.F.R. § 42.65(a), such that all testimony relating to the
reproduced compounds is without basis and should be excluded. Id. at 11.
DSM again identifies the challenged evidence by reference to
“example” paragraphs rather than with unambiguous specificity. DSM’s
reference to “see above” for additional challenged testimony is also
ambiguous, because the challenged testimony is not identified. We regard
DSM’s challenge as being limited to the particular paragraphs identified by
number and no others. DSM also does not identify where in its Petition
Corning relies on the challenged evidence.
DSM does not persuade us that Dr. Winningham’s silence as to
whether he considered underlying data is a sound basis on which to exclude
expert testimony. The degree to which an expert discloses the facts or data
on which an opinion is based affects the weight accorded the expert’s
testimony, not to its admissibility. 37 C.F.R. § 42.65(a).
For these reasons, we overrule DSM’s fourth objection.
5. Corning’s Supplemental Reply
DSM seeks to exclude Corning’s Supplemental Reply (Paper 61) and
the evidence filed with it (Exs. 1037-1038) on the basis that both exceed the
scope of DSM’s Supplemental Response. Mot. to Exclude 2. DSM does not
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identify any portion of the Supplemental Reply that exceeds the scope of
reply; rather, DSM argues that Corning’s submission of transcripts of
depositions of Dr. Winningham (Ex. 1038) and Dr. Sogah (Ex. 1037) were
not authorized. Mot. to Exclude 13. We regard DSM’s challenge as limited
to these two exhibits, because they are the only material that DSM identifies
with particularity.
DSM’s objection to these exhibits is moot. As to Exhibit 1038, the
objection is moot because DSM resubmitted the transcript of
Dr. Winningham’s deposition as Exhibit 2035. As to Exhibit 1037, the
objection is moot because we do not rely on any evidence contained in it in
the final written decision.
For these reasons, we dismiss DSM’s fifth objection as moot.
DSM has not shown that it is entitled to exclusion of any of the
challenged evidence. DSM’s motion to exclude will be denied as to the
overruled objections and dismissed as moot as to the other objections.
V. CONCLUSION
Corning has proved, by a preponderance of the evidence, that claims
1-19 of U.S. Patent No. 6,323,255 B1 are unpatentable. In particular,
Corning has shown that:
1. Claims 1-5, 7, 12-17, and 19 are unpatentable under 35 U.S.C.
§ 103(a) for obviousness over Bishop and Trapasso;
2. Claim 6 is unpatentable under 35 U.S.C. § 103(a) for obviousness
over Bishop, Trapasso, and Szum;
3. Claims 8-11 are unpatentable under 35 U.S.C. § 103(a) for
obviousness over Bishop, Trapasso, Jackson, and Szum;
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4. Claims 1-8, 12-14, and 16-19 are unpatentable under 35 U.S.C.
§ 103(a) for obviousness over Szum and Trapasso; and
5. Claims 9-11 are unpatentable under 35 U.S.C. § 103(a) for
obviousness over Szum, Trapasso, and Jackson.
DSM has not shown that it is entitled to claim the subject matter of
proposed substitute claims 20-22.
DSM has not shown that it is entitled to exclusion of any challenged
Corning evidence.
VI. ORDER
For the reasons given, it is
ORDERED that claims 1-19 of U.S. Patent No. 6,323,255 B1 are
determined to be UNPATENTABLE;
FURTHER ORDERED that DSM’s Corrected Motion to Amend is
DENIED;
FURTHER ORDERED that DSM’s Motion to Exclude Corning
Evidence is DENIED-IN-PART and DISMISSED-IN-PART;
FURTHER ORDERED that because this is a final decision, parties to
the proceeding seeking judicial review of the decision must comply with the
notice and service requirements of 37 C.F.R. § 90.2.

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For PETITIONER:

Michael L. Goldman
Jeffrey N. Townes
Edwin V. Merkel
LeClairRyan, A Professional Corporation
Michael.Goldman@leclairryan.com
Jeffrey.Townes@leclairryan.com
Edwin.Merkel@leclairryan.com

For PATENT OWNER:

Sharon A. Israel
Joseph A. Mahoney
Mayer Brown LLP
SIsrael@mayerbrown.com
JMahoney@mayerbrown.com