Ex Parte 7,874,101 B2 et al

Patent Trial and Appeal Board

Aug 1, 2017

95001964 (P.T.A.B. Aug. 1, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,964 04/11/2012 7,874,101 B2 56996-837532 3483
7590 08/02/2017
PHILIP M. WEISS
WEISS & WEISS
410 JERICHO TURNPIKE
SUITE 105
JERICHO, NY 11753
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/02/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

OLDCASTLE LAWN & GARDEN, INC.,
Requester1

v.

ENCAP, LLC,
Patent Owner and Appellant
____________

Appeal 2017-005588
Reexamination Control 95/001,964
Patent 7,874,101 B22
Technology Center 3900
____________

Before JEFFREY B. ROBERTSON, RAE LYNN P. GUEST, and
BRETT C. MARTIN, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 Oldcastle Lawn & Garden, Inc. (“Requester”) did not participate in this
appeal. See Right of Appeal Notice mailed November 13, 2015 (“RAN”) 5
(indicating that Requester withdrew participation from the reexamination
proceeding in a paper filed July 11, 2014).
2 U.S. Patent 7,874,101 B2 issued January 25, 2011 to Michael Dennis
Krysiak et al. (“’101 patent”).
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Patent Owner Encap, LLC (“Patent Owner”) appeals from the
Examiner’s decision to reject claim 423 under 35 U.S.C. § 102(e) as
anticipated by Lee.4 The Board’s jurisdiction for this appeal is under 35
U.S.C. §§ 6(b), 134, and 315. We reverse.
I. BACKGROUND
Requester filed a request for inter partes reexamination under 35
U.S.C. §§ 311–318 and 37 C.F.R. §§ 1.902–1.997 for the ’101 patent on
April 11, 2012. The ’101 patent is directed to a method and system for
applying a water-soluble soil stabilizer, such as polyacrylamide (“PAM”), to
soil via a solid carrier. ’101 patent, col. 1, ll. 14–20. According to the ’101
patent, the solid carrier acts as a delivery system for the PAM by “leaching
PAM out of the solid carrier into the soil.” Id., col. 9, ll. 4–7.
Claim 42 is the sole claim on appeal and reads as follows:
42. A delivery system used to apply water-soluble soil
stabilizer to soil comprising;
a solid carrier and water-soluble soil stabilizer;
wherein said solid carrier is made by an agglomeration
process, including agitation, pressure, liquid and thermal;
wherein application rates of said solid carrier to said soil
is related to desired amount of said water-soluble soil stabilizer
to be metered to said soil;
wherein said water-soluble soil stabilizer binds to said
soil.

3 Patent Owner cancels all remaining claims in the ’101 patent except claim
42. See Appeal Brief 4, filed February 12, 2016 (“App. Br.”).
4 U.S. Patent 6,829,860 B1, issued December 14, 2004 to Edward Lee et al.
(“Lee”).
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Patent Owner relies on the following Declaration evidence in support
of its appeal:
Declaration of Michael Krysiak under 37 C.F.R. § 1.132, submitted
August 13, 2012,
Second Declaration of Michael Krysiak under 37 C.F.R. § 1.132,
submitted February 1, 2013,
Third Declaration of Michael Krysiak under 37 C.F.R. § 1.132,
submitted January 7, 2015,
Fourth Declaration of Michael Krysiak under 37 C.F.R. § 1.132,
submitted September 2, 2015,
First Declaration of Stanley Baker under 37 C.F.R. § 1.132 submitted
September 2, 2015, and
First Declaration of Dr. Arcadia Roa under 37 C.F.R. § 1.132
submitted September 2, 2015.
The ’101 patent is related to U.S. Patent 7,503,143 B2, issued March
17, 2009 (“’143 patent”), which is the subject of Inter Partes Reexamination
95/001,693. The ’101 patent is a continuation of U.S. Patent 7,730,662,
which is a continuation-in-part of the ’143 patent (see “Related U.S.
Application data” listed in the ’101 patent). All the claims of the ’662 patent
were cancelled during Inter Partes Reexamination 95/001,965. See Inter
Partes Reexamination Certification U.S. 7,730,662 C1, issued July 20, 2016.
Regarding the ’143 patent, the Examiner’s decision to reject claims 1, 12,
14, and 22 under 35 U.S.C. § 102(e) as anticipated by Lee and claim 17
under 35 U.S.C. § 103(a) as unpatentable over Lee was reversed in a
Decision mailed June 15, 2016.
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The ’143 and ’101 patents were also the subject of a civil action filed
in the Eastern District of Wisconsin, styled Encap, LLC, v. Oldcastle Retail
Inc., Civil Action No. 11-C-808, on August 25, 2011.

II. DISCUSSION
Independent claim 42 is directed to a system comprising a solid
carrier and a water-soluble soil stabilizer that is metered to the soil.
The Examiner found that the “desired amount” recited in the
“wherein” clause requires that the “desired amount” of water-soluble soil
stabilizer (“WSSS”) “metered,” or delivered, to the soil is “an amount to
effect ‘binding said WSSS to said soil’”. RAN 21 (quoting the claim
language), 24 (“in an amount effective to bind to soil”); see Examiner’s
Answer 4, 5–6, mailed June 15, 2016 (“Ans.”) (determining that a “desired
amount” of water-soluble soil stabilizer is “related” to the “application rates”
of the solid carrier). The Examiner further finds that none of the use or
functional limitations recited in the various “wherein” clauses of the claim
“define a patentable difference in that structural comparison.” Ans. 6.
A preponderance of the evidence indicates that the Examiner erred in
finding no patentable difference based on the wherein clauses. Namely, the
evidence of record supports a finding that a patentable difference lies
between the amount of soil stabilizer added in Lee and the amount effective
to bind to soil, as recited in the claims.
Lee includes only one example of an amount of PAM added to a solid
carrier sufficient to function as a tackifier, i.e., to “chemically bind mulch
onto the surface on which they are spread” (Lee, col. 6, ll. 12–15), of
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“0.0015%±1%” by weight. Lee, col. 7, ll. 29–32. The Examiner and the
Patent Owner agree that the only reasonable interpretation of this amount is
a range of 0.001485% and 0.001515% by weight. See RAN 29-30, Baker
Decl. ¶¶ 31–39. Lee is silent as to how much of such a product would be
administered to the soil per acre. See generally Lee. However, Patent
Owner asserts that Lee’s type of cover product would be applied at about
4,000 lbs/acre, resulting in about 0.065 lbs of PAM applied per acre. See
Third Krysiak Decl. ¶ 18.
The Examiner finds that, in adding water to the PAM impregnated
solid carrier described in Lee, “it inherently follows that the amount of
WSSS delivered to the soil would be desired.” RAN 29. In particular, the
Examiner relies on the statement in Lee that PAM impregnated mulch
“chemically bind mulch onto the surface on which they are spread.” Lee,
col. 6, ll. 12–13; see RAN 13, 31. Further, PAM was already used in the art
“to strengthen soil cohesion, thus reducing soil loss . . . .” Lee, col. 6, ll. 29–
30, see RAN 13, 31.
Patent Owner contends that this expressly recited amount of PAM in
Lee is an insufficient amount added to a solid carrier to constitute a “desired
amount” that is “effective to bind to soil” within the meaning of claim 42.
Reb. Br. 8.
The ’101 patent does not provide a range of the amount of PAM that
would be effective to bind to soil within the meaning of claim 42. The ’101
patent provides two examples with measured amounts of PAM. See ’101
patent, col. 14, l. 34 to col. 15, l. 45 and col. 15, ll. 49-58. Neither Patent
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Owner nor the Examiner provide calculations by which to compare the
amounts of the Examples of the ’101 patent and the amounts recited in Lee.5
Example 1 describes a process that includes adding wet paper at a rate
of 200–300 lbs, PAM at a rate of 6 lbs/hr, water at a rate of 36 lbs/hr, and
nitrogen phosphorus potassium (NPK) at a rate of 28 lbs/hr. Id., col. 14, l.
66 to col. 15, l. 3. Example 1 explains that a three hour run produced 300
lbs of material dried to 2.5%. Id., col. 15, ll. 32–41. Thus, a three hour run
would have included 18 lbs of dry PAM in 300 lbs of material, or 6 % PAM
by weight. Example 1 describes applying the resulting product at a rate of

5 Patent Owner references a comparison “jar test” or beaker test that was
described to the Examiner during an Examiner Interview on October 29,
2014. See App. Br. 9, 11; Interview Summary filed by Patent Owner on
November 26, 2014; Interview Summary mailed by Examiner on November
6, 2014. It appears that this test added PAM to a beaker containing 400 ml
of water and 2 g of soil. See Interview Summary mailed by Examiner on
November 6, 2014 and materials provided to the Examiner during the
Examiner Interview, which were made of record by the Examiner on
November 5, 2014, Exhibit K. To the beaker labelled “Lee Patent,” it
appears that .0006 g of water-soluble PAM was added. Id. To the beaker
labelled “Encap Patent,” it appears that 0.04 g of water-soluble PAM was
added. Id. The Roa Declaration discusses this test (see Roa Declaration ¶¶
30–33), but does not explain who conducted this experiment or how these
amounts were chosen to represent the “Lee Patent” and the “Encap Patent,”
respectively. We note that neither beaker is described as including a solid
carrier as recited in the claims. Id. Thus, the experiment is not particularly
probative of the effects thereof on soil to which the solid carrier is applied as
recited in the claims. Further, although the Baker and Roa Declaration
contend that the test complies with “the ASTM standard, which allows room
for discretion” (Roa Decl. ¶ 33; Fourth Krysiak Decl. ¶ 7), we do not know
which ASTM standard to which this test complies or what such standardized
test is intended to show. Again, we do not find this experiment particularly
probative of the differences in the prior art and the claimed product.
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50 lbs/1,000 sq. feet, which would be applying 3 lbs of PAM/1,000 sq. feet
at 6% PAM, or 130.7 lbs of PAM/acre.
Example 2 describes impregnating DAP with PAM at a rate of 43 to
1. Id., col. 15, ll. 49–50. Thus, Example 2 describes 1 part PAM to 44 parts
total product, or 2.27% PAM by weight. Patent Owner asserts that such a
product would be applied at a rate of 218 pounds/acre, which would result in
applying about 5 lbs of PAM/acre. App. Br. 39; see Second Krysiak
Declaration ¶ 4.
Patent Owner asserts that the skilled artisan would have understood
these as non-limiting examples and that the “desired amounts” of material
necessary to bind the soil, according to claim 42, would be understood to be
a variable amount depending upon “a variety of soil and erosion conditions.”
App. Br. 38–39 (citing Third Krysiak Declaration ¶ 25).
Accordingly, the dispositive issue on appeal is: whether Lee
inherently teaches a product having PAM impregnated into a solid carrier
such that a desired amount, or an amount sufficient to bind to the soil, is
metered to the soil in relation to the application rates of the solid carrier to
the soil?
“[A] prior art reference without express reference to a claim limitation
may nonetheless anticipate by inherency.” In re Omeprazole Patent
Litigation, 483 F.3d 1364, 1373 (Fed. Cir. 2007). “Under the principles of
inherency, if a structure in the prior art necessarily functions in accordance
with the limitations of a process or method claim of an application, the claim
is anticipated.” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986).
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In a case such as this where patentability rests upon a property of the
claimed material not disclosed within the art, the PTO has no reasonable
method of determining whether there is, in fact, a patentable difference
between the prior art materials and the claimed material. Therefore, where
the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily
possess the characteristics of his claimed product. In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
However, before applicant can be put to this task, “the [E]xaminer
must provide a basis in fact and/or technical reasoning to reasonably support
the determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” (emphasis omitted). Ex parte
Levy, 17 USPQ2d 1461, 1464–65 (BPAI 1990); Ex parte Skinner, 2
USPQ2d 1788, 1789 (BPAI 1986).
Here, the system described in Lee and the system recited in the claims
of the ’101 patent appear to be identical. Both describe impregnating PAM
in a solid carrier and binding PAM to at least the surface of the soil to which
it is applied. Lee is silent as to how much, if any, of the PAM from the solid
carrier reaches the soil and whether the amount is sufficient to for the PAM
to bind to the soil, as opposed to the PAM only binding the mulch to the
surface of the soil.
The lack of teaching in the ’101 patent of any minimum amounts of
PAM necessary to bind to the soil, the teaching in Lee of binding at least to
the surface of the soil, and the Examiner’s reasoning that because the PAM
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is water soluble, at least some of the PAM will leach upon application of
water, is sufficient for the burden to shift to Patent Owner to show evidence
of a patentable difference between the systems of Lee and that of the ’101
patent, in that the systems are in fact different and/or achieve a different
result.
Through undisputed declaration evidence, we find that Patent Owner
has met its burden.
We find that the amount of PAM expressly recited in Lee, namely a
range of 0.001485% and 0.001515% by weight, is substantially different
than the amounts in the product of Examples 1 and 2, namely 6% by weight
and 2.27% by weight. Further, the testimony evidence of Patent Owner is
not disputed on this record and we have no contradictory evidence of the
Declarants’ statements or any reason not to take as true the amounts of PAM
that would be applied in Lee, namely 0.065 lbs/acre, and in Examples 1 and
2 of the ’101 patent, namely 130.7 lbs/acre and 5 lbs/acre, respectively. We
find these amounts differ substantially. Similarly, we take as true the
testimony evidence that the difference in amounts of PAM is material, such
that the amounts of PAM applied in Lee, under no specific soil
circumstances, would be sufficient to bind PAM to the soil, as required by
the Examiner’s interpretation of the claimed invention. See Roa Declaration
¶ 20; Baker Declaration ¶¶ 23–24, 43; Third Krysiak Decl.6 ¶¶ 8–9, 17–19;
Second Krysiak Decl. ¶ 10.

6 Mr. Krysiak is a named inventor of the ’101 patent, and thus cannot be
considered an objective and uninterested declarant in this proceeding. Thus,
Mr. Krysiak’s testimony carries less weight than that of Dr. Baker and Dr.
Roa. However, since Mr. Krysiak’s testimony is not disputed or
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While neither claim 42 nor the ’101 patent indicates any limits as to
the amount of PAM necessary to meet the “desired amount” limitation, the
specific PAM amounts recited in Lee are insufficient, based on this record,
and there is no evidence of record to suggest any other amounts are
expressly or inherently taught in Lee. Accordingly, claim 42 is not
anticipated by the teachings of Lee under 35 U.S.C. § 102(e).

III. DECISION
In sum, we reverse the Examiner’s decision to reject claim 42 under
35 U.S.C. § 102(e) as anticipated by Lee.

IV. TIME PERIOD FOR RESPONSE
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.

contradicted by other evidence of record, we accept his testimony as true and
accurate.
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An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

REVERSED

PATENT OWNER:
Philip M. Weiss
WEISS & WEISS
410 Jericho Turnpike
Suite 105
Jericho, NY 11753

THIRD-PARTY REQUESTER:
John S. Pratt
KILPATRICK TOWNSEND & STOCKTON LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4530