Docket No. 2015-1773 (IPR2013-00578)
PROST, TARANTO, CHEN
November 8, 2016
Brief Summary: Board determination that certain claims were anticipated affirmed because “a person of ordinary skill could readily convert Craig’s area percetages to the weight percentages recited in the claims using” the prior art (based on expert testimony). Board determination of no prior invention regarding another prior art reference reversed.
Summary: REG appealed PTAB finding after IPER that US 8,231,804 relating to “compositions containing primarily even numbered paraffins” that can be used in, e.g., housing insulation (even carbon numbered paraffins provide higher thermal storage capacity than odd numbered paraffins), was anticipated by the prior art (Dindi and Craig for different claims) and its exclusion of certain of its exhibits. The Board construed several claim terms, not appealed here, finding the preamble “[a] phase change material” was not limiting as it expressed only an intended use without limiting the claim scope, and similarly found the process of production (“wherein the paraffins are produced by hydrogenation/hydrogenolysis”) non-limiting which were accepted by the FC panel. The key limitation in this appeal was “at least 75 wt% even carbon number paraffins” (or 80% for claim 2). REG argued the Craig reference only disclosed area percentages, not weight percentages, and did not provide enough information regarding conversion (“the Board used an erroneous inherency standard”). The FC panel agreed with Neste that “a person of ordinary skill could readily convert Craig’s area percetages to the weight percentages recited in the claims using [Neste’s expert’s] calculations.” And it explained that “[t]his is not an inherency issue, however, because the challenged limitation is not missing from Craig” (Cont’l Can, FC 1991) since it “expressly discloses [the] concentration in area percentage” (“Dr. Klein simply converted [it] using relative response factors from the prior art.”) The Board determination that Craig anticipates claims 1, 3, 4 and 8 of the ’804 patent was therefore affirmed. REG also argued the ‘804 inventor invented the claimed subject matter before Dindi’s filing date and the Board erroneously excluded evidence regarding the same, acknowledging the 75% (claim 1) and 80% (claim 2) limitations were taught by Dindi. The FC panel agreed with REG that it had proven conception prior to Dandi’s filing date (Coleman, FC 1985) and that one of the exhibits making this point that was “excluded for hearsay” should have been admitted. Thus, the Board decision that REG had failed to establish prior conception was reversed.