ROCKWOOL INTERNATIONAL A/S(3RD PTY REQ)

Patent Trials and Appeals BoardJul 1, 2020

2017004826 (P.T.A.B. Jul. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ROCKWOOL INTERNATIONAL A/S Requester and Appellant v. Patent of KNAUF INSULATION GMBH Patent Owner and Respondent ____________ Appeal 2017-004826 Reexamination Control 95/000,672 Patent 7,888,445 B2 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and RAE LYNN P. GUEST, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. REMAND ORDER TO THE EXAMINER Appellant, Knauf Insulation, Inc. and Knauf Insulation SPRL, appealed to the U.S. Court of Appeal for the Federal Circuit (“Federal Circuit”) the Patent Trial and Appeal Board decision affirming that the subject matters of claims 16–22 of U.S. Pat. No. 7,888,445 (PTAB Appeal No. 2017-004826) and claims 29–32 of U.S. Pat. No. 7,772,347 (PTAB Appeal No. 2017-004910) would have been obvious to one of ordinary skill Appeal 2017-004826 Reexamination Control 95/000,672 Patent 7,888,445 B2 2 in the art at the time of the invention. Knauf Insulation, Inc., Knauf Insulation SPRL v. Rockwool International A/S (2018-1810, 2018-1811, 2018-1891) (nonprecedential) (decided Oct. 15, 2019) (“Knauf Decision” or “Knauf Dec.”). There was a cross-appeal, as well, but the Federal Circuit dismissed it because the cross-appellant lacked standing. The appealed obviousness rejection is based on the Worthington,1 Wallace,2 and Helbing3 publications. Knauf Dec. 3. The Federal Circuit concluded that “a finding of a motivation to combine based on similarity of the references in this case is unsupported by substantial evidence.” Knauf Dec. 4. The court further stated that “[b]ecause the similarity of the references was the Board’s only reason for combining the references, we vacate the Board’s determination of obviousness based solely on the similarity of the cited references and remand for further proceedings.” Knauf Dec. 8. The court also concluded, with respect to claims reciting a substantial quantity of melanoidin, that the Board “did not point to substantial evidence showing that executing the reaction in Worthington would produce a binder comprising ‘substantially all . . . melanoidin products.’” Knauf Dec. 10. The court thus vacated the Board’s holding that the subject matters of claims 16–22 of the ’445 patent and claims 29–32 of ’347 patent would have been obvious and remanded for further proceedings consistent with the court’s opinion. Knauf Dec. 10–11. 1 Worthington et al., US 3,513,001, issued May 19, 1970. 2 Wallace et al., US 2,215,825, issued Sept. 24, 1940. 3 Helbing, US 2005/0202224 A1, published Sept. 15, 2005. Appeal 2017-004826 Reexamination Control 95/000,672 Patent 7,888,445 B2 3 We note that both Board decisions also included rejections based on Husemoen.4 The rejections are not impacted by the Knauf Decision. This proceeding is remanded to the Examiner for action consistent with this order and the Federal Circuit’s decision in the Knauf decision. For Patent Owner: BARNES & THORNBURG LLP (IN) 11 S. Meridian Street Indianapolis, IN 46204 For Third Party Requester: Tiffany L. Williams KILPATRICK, TOWNSEND & STOCKTON LLP 1100 Peachtree Street, Suite 2800 Atlanta, GA 30309 cdc 4 Husemoen et al., US 6,878,800 B2, issued Apr. 12, 2005.